Halliburton Energy Services Inc. v Smith International (North Sea) Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 15 December 2006 |
| Neutral Citation | [2006] EWCA Civ 1715 |
| Docket Number | Case No: A3/2005/2193 and 2193(Y) |
| Court | Court of Appeal (Civil Division) |
| Date | 15 December 2006 |
[2006] EWCA Civ 1715
The Rt Hon Lord Justice Chadwick
The Rt Hon Lord Justice Rix and
The Rt Hon Lord Justice Jacob
Case No: A3/2005/2193 and 2193(Y)
HC 04 C00114, HC 04 C00689, HC 04 C00690
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Pumfrey
Royal Courts of Justice
Strand, London, WC2A 2LL
Guy Burkill QC (instructed by Messrs Bristows) for the Appellant
Michael Tappin (instructed by the Treasury Solicitor) for the Comptroller of Patents
The Respondents were not present and were not represented
Lord Justice Jacob (giving the Judgment of the Court):
This is an appeal from part of a judgment of Pumfrey J, [2005] EWHC 1623 (Pat); [2006] RPC 25. Halliburton, the patentees of two patents for rotary cone drill bits, sued Smith for infringement. Smith counterclaimed for revocation. Smith won, Pumfrey J holding that although some of Smith's bits fell within the scope of the claims of the patents, both patents were invalid for lack of sufficiency.
Pumfrey J gave both sides permission to appeal but limited to principles of law. Permission to appeal any issue of primary fact was refused. Shortly thereafter the parties settled. Halliburton nonetheless decided to pursue their appeal in respect of one of the revoked patents, No. EP 1,112,433, known as the "Force Balancing Patent". They do not challenge the finding that the other patent, the "Orientation Patent", No. EP 1,117,894 is invalid.
The position of the Comptroller
Pursuant to an interlocutory judgment in this case, [2006] EWCA Civ 185, it was held that this court will not restore a revoked patent by consent or by a purely administrative order. The patentee must satisfy the Court of Appeal that the decision below was wrong. Also pursuant to that decision, the Comptroller General of Patents was invited to consider whether he should play a part in the appeal, in effect representing the respondent, though exercising his own judgment as to which points it was proper to argue. Mr Tappin summarised the Comptroller's position thus:
"What we see ourselves as here to do is to help the court—to put the other side of the argument to the extent we think it should be put and to make such criticisms of Halliburton's submissions as we believe appropriate."
This procedure has worked well. We found Mr Tappin's assistance to have been of great value. We hope that the Comptroller will play a similar part in any future appeal where the respondent has settled and has no (or perhaps even a positive) interest in the appeal's success.
The Scientific Adviser
It was common ground that the subject matter of the case was highly technical and that the Court of Appeal would be assisted by a scientific adviser. As is recounted in the judgment of this court, [2006] EWCA Civ 1599, handed down immediately before the substantive appeal started, Professor David Limebeer, Head of the Department of Electrical and Electronic Engineering and Professor of Control Engineering at Imperial College London, was appointed. We sat with Professor Limebeer and also retired with him in order to gain his assistance. Prior to the hearing, on his own initiative, he provided the court with some initial views in an e-mail set out as an appendix to that judgment. Halliburton took the view that Professor Limebeer had strayed too far from merely acting as an adviser and asked the court for an adjournment so that a new and different scientific adviser could be appointed. For the reasons given in that judgment the application was refused.
Professor Limebeer provided us with a great deal of valuable background scientific understanding. Following the hearing he set forth in a second note, (set out as an appendix to this judgment) the nature of the advice and instruction that we were given. Mr Burkill QC, on behalf of Halliburton, did not during the course of his argument refer directly to the earlier note. He did provide a written submission on the later note, observing at the outset "Halliburton welcomes the assistance which Professor Limebeer has provided to the Court of Appeal [in the note] and has no significant criticism of it." We record that we have decided this appeal solely on the basis of the evidence given to the court below and the submissions made to us. Professor Limebeer has played no part in the decision we have reached.
We envisage that in the future, where a scientific adviser is appointed, a similar record of the part he or she has played will normally be provided to the parties with, of course, also an opportunity being given to them to comment on it.
Peripheral findings of invalidity
In addition to finding the patent invalid for insufficiency, Pumfrey J also found a violation of Art.52 of the European Patent Convention (EPC) implemented by s.1(2) of the 1977 Act. Mr Burkill said that this problem with validity could be overcome by a suitable amendment and so there was no point in pursuing an appeal on this point. Halliburton have pending applications to amend, applications which only could become live if the main appeal on sufficiency succeeds.
It was common ground however, that no amendment could cure the finding of insufficiency. So Halliburton must succeed on that issue if the patent is to be saved in any form.
It should also be noted that Halliburton no longer pursue an appeal concerning the construction of some of the claims. They accept Pumfrey J's construction, to the details of which we shall come.
The law as to sufficiency
Art.83 of the EPC provides that a patent application "must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art". This is implemented by s.72(1) (c) of the 1977 Act which makes failure to comply with that requirement a ground of revocation.
This precise language is new. However, the basic requirement, that a patent should teach the practice of the invention sufficiently well for the notional addressee to perform the invention is fundamental to the patent system: the teaching is the price the patentee pays for his time-limited monopoly. No one suggests that the EPC changed anything in relation to this topic. Older English cases which contain useful discussions about the subject remain relevant in understanding the concept more fully.
Pumfrey J summarised the law [131–133]:
"[131] It is a basic principle of patent law that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC transposed into section 14 of the 1977 Act). This requirement has long been fundamental. The sufficiency of a specification is a question of fact and necessarily depends upon the nature of the invention and the attributes of the skilled person. There is no general rule, and although statements like 'you may not set a man a problem and call it a specification' or 'the skilled person must be enabled to perform the invention without prolonged research, enquiry and experiment' give a flavour of the problem they do not really help (see Mentor v Hollister [1993] RPC 7 at 10–14).
[132] In the Mentor case, the Court of Appeal was attracted by the word 'routine', used by Aldous J at first instance. This word has the advantage that it enables a comparatively straightforward test along the lines of 'does this specification require the addressee of the specification to carry out tests, or developments, that go beyond the routine?' As Lloyd LJ said in that case, a phrase like 'routine trials' introduces a positive concept, easily understood and applied. Aldous J put it like this ( [1991] FSR 557 at 561) :
'The subsection is concerned with the disclosure of the invention in the specification. Thus it is necessary to read the specification through the eyes of the skilled addressee to ascertain what is the invention that is disclosed. Even where patents relate to articles, the inventions disclosed in different specifications can be different in kind. For example, the invention disclosed may relate to an article which will perform a particular function or an article which is cheaper to make than similar articles. In the latter case, it is the very essence of the invention disclosed in the specification that the article can be made more cheaply and therefore to perform the invention the person skilled in the art must be able to make the article cheaply as described in the specification. In the former case, the person skilled in the art must be able to produce the article which will perform the function, as that is the invention disclosed.
The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled man must spend seeking to perform the invention before it is insufficient. Clearly there must be a limit. The subsection, by using the words "clearly enough and completely enough," contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular...
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