Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeThe Hon. Mr Justice Birss,Mr Justice Birss
Judgment Date04 September 2013
Neutral Citation[2013] EWHC 2673 (Pat)
Docket NumberCase No: CH/2013/0131
Date04 September 2013

[2013] EWHC 2673 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Rolls Building

7 Rolls Buildings

Fetter Lane

London EC4A 1NL

Before:

Mr Justice Birss

Case No: CH/2013/0131

In the matter of the Patents Act 1977

And In the matter of UK Patent Application GB 1014714.8 in the name of Lantana Ltd

And In the matter of an appeal from the Decision of the Comptroller General of Patents, Designs and Trade Marks dated 4th February 2013

Between:
Lantana Ltd
Appellant
and
The Comptroller-General of Patents, Designs and Trade Marks
Respondent

Keith Beresford of Beresford & Co.) for the Appellant

Thomas Mitcheson (instructed by The Treasury Solicitor) for the Respondent

Hearing dates: 27th June 2013

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

The Hon. Mr Justice Birss Mr Justice Birss
1

This is an appeal from the Comptroller in relation to patent application GB1014714.8 applied for by Lantana Ltd. The decision under appeal is decision BL O/056/13 dated 4 th February 2013 of Dr Stephen Brown, a Deputy Director acting for the Comptroller. The Hearing Officer refused the application because he found that it was excluded under s1(2) of the Patents Act 1977 as relating to a computer program as such.

2

The appellant is the applicant and is represented by Mr Keith Beresford. The Comptroller is represented by Mr Thomas Mitcheson.

The nature of the appeal

3

This appeal is a review and not a rehearing (although as I said in Halliburton Energy Services [2011] EWHC 2508, in many cases of this kind there may be little difference between the two.) As Mr Mitcheson submitted, the Court should have in mind the observations of Lord Hoffmann in Designers Guild [2001] FSR 11 at paragraph 29 and the observations of Robert Walker LJ in Reef [2003] RPC 5 at paragraphs 17 to 30 and in particular 26 to 28. I will set out those latter paragraphs:

"26. How reluctant should an appellate court be to interfere with the trial judge's evaluation of, and conclusion on, the primary facts? As Hoffmann LJ made clear in Grayan there is no single standard which is appropriate to every case. The most important variables include the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence.

27. It is worth noting that Biogen was a case very close to the top end of the scale. It involved very complex biotechnology which was the subject of a lot of expert evidence given at a lengthy trial before a very experienced judge of the Patents Court. In the circumstances Lord Hoffmann's memorable reference to Renan was not (if I may respectfully say so) out of place. There are far fewer nuances to be picked up from a bundle of statutory declarations which contain a good deal of irrelevant or tendentious material and on which there is no cross-examination.

28. In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow [1956] AC 14, 38–9, about the general commissioners, a tribunal with a specialised function but often little specialised training.) On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle."

4

This is the approach which I will follow.

The subject matter of the application

5

The application is entitled "Methods, Systems, and Computer program products for retrieving a file or machine readable data". The priority date is 22 nd February 2008. The application explains that a particular concern is a situation in which a user at a "local station" (i.e. a computer) wishes to access a file stored in a "remote data storage device", i.e. another computer. The application refers to various known services which facilitate this process. The application does not elaborate but it is common ground that an example of these sorts of services is a system in which one can establish a connection over the internet between two computers such that the user can see part of the desktop on the remote computer on the screen of the local computer. The user can access the desktop of the remote computer and for example by moving his or her local mouse, move the cursor on the remote desktop and ultimately access files on that remote computer. The application states that these services are characterised by the need to establish a continuous connection, often for a relatively long period of time between the local computer and the remote computer. The application points out that this connection can be difficult to maintain, often can be costly and run the risk that intruders can access the file at the local or remote computer during the time of the connection. The application states that there is a need for a method for accessing files on the remote computer in which the connection is established for a relatively short period of time and that can automatically restore the connection if an interruption occurs.

6

The invention is set out in claim 1, which I will set out below. The application also includes other claims and refers to more things than are claimed in claim 1. In the Decision, as well as finding that claim 1 did not satisfy section 1(2) the Hearing Officer also held that having read the specification he could see nothing that could be reasonably expected to form the basis of a valid claim (paragraph 31). On appeal the appellant submitted that even if the conclusion about claim 1 was upheld, this decision was wrong and the appeal should be allowed on that ground. The appellant's grounds of appeal and skeleton did not clearly identify what other matters beyond claim 1 might form the basis for a valid claim if claim 1 was refused. Mr Beresford indicated in reply that he was relying on a diagram which had been filed on appeal and had been used in the course of argument. If this point was to be successful a new claim would have to be crafted and the application re-examined. The diagram, with Mr Beresford's explanation, was a useful aid to understanding the claimed invention and did contain some matter which was beyond claim 1 but I am not satisfied that if claim 1 is unpatentable any further matter in that diagram could give rise to a valid claim. Further it is not the court's task, particularly on appeal, to work out what else might be patentable in this way. If the appellant had wished to put something specific forward, it could and should have done so and the point could have been considered. Accordingly I will confine the rest of this judgment to claim 1.

7

Claim 1 is:

An electronic data retrieval system comprising a local station, a remote station, a packet switched network to provide a transmission path between the local station and the remote station, and a machine-readable data storage device storing retrievable data files including machine-readable data representing at least one of a visual product and an audio product,

wherein said local station includes:

a data store storing a plurality of machine-readable data retrieval criteria identifying data files among said retrievable data files stored at said machine-readable data storage device to be retrieved;

a packet switched network interface connected to said packet switched network;

a user interface co-operable with said data store and interactable with a user, to enable selection by the user of one or more machine-readable data retrieval criteria; and

an electronic processor configured to produce, in response to the selection by the user of the one or more machine-readable data retrieval criteria, a first e-mail message including the selected one or more machine-readable data retrieval criteria together with a machine-readable instruction for retrieving data files, among said retrievable data files stored at said machine-readable data storage device, using the selected machine-readable data retrieval criteria, and to send the first email message to the remote station via said packet switched network interface and said packet switched network;

wherein said remote station includes:

a packet switched network interface connected to said packet switched network to receive the first e-mail message from the packet switched network;

a filter adapted to parse the first e-mail message to determine whether the first e-mail message includes any machine-readable instruction and any data retrieval criteria; and

an electronic processor to execute the first machine-readable instruction, and upon execution of the machine-readable instruction and in accordance with the selected machine-readable data retrieval criterion, retrieve the one or more required data files among said retrievable data files stored at said machine-readable data storage device from the machine-readable data storage device, produce one or more second e-mail messages, the one or more second e-mail messages including the retrieved one or more data files as one or more attachments, and send to said local station, via the packet switched network interface of the remote station, and the packet switched network, the one or more e-mail...

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