Nichia Corporation v Argos Ltd

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLord Justice Jacob,Lord Justice Rix,Lord Justice Pill
Judgment Date19 Jul 2007
Neutral Citation[2007] EWCA Civ 741
Docket NumberCase No: A3/2007/0572

[2007] EWCA Civ 741






Royal Courts of Justice

Strand, London, WC2A 2LL


The Rt Hon Lord Justice Pill

The Rt Hon Lord Justice Rix and

The Rt Hon Lord Justice Jacob

Case No: A3/2007/0572

HC 06 C03955

Nichia Corporation
Argos Limited

Adrian Speck and James Whyte (instructed by Messrs Powell Gilbert LLP) for the Claimant/Respondent

Daniel Alexander QC and James St Ville (instructed by Messrs DLA Piper UK LLP) for the Defendant/Appellant

Hearing date: 24 May 2007


Lord Justice Jacob

Lord Justice Jacob


Patent litigation has always been notoriously expensive in this jurisdiction. As long ago as 1892 Lord Esher MR said:

A man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law: it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief, Ungar v Sugg (1899) 9 RPC at 117.


What causes cost is time: time spent by lawyers, experts and the parties themselves. Lawyers' and experts' time is normally measured and costed. Because they are highly skilled, lawyers' and experts' time is expensive. Time spent by the parties themselves is generally irrecoverable.


It follows as night follows day that every issue or topic in a patent action which causes significant expenditure of time will contribute to the overall cost. That is why the main point at issue on this appeal is so significant.


The background is simple enough. Nichia, a Japanese company is the owner of two patents EP (UK) 0 622 858 and EP (UK) 0 952 617. They are for and relate to white light emitting diodes. Argos, the defendant, is a well-known retailer. In 2005/6 it offered for sale and sold chains of Christmas lights consisting of 120 white LEDs. Nichia claim that they infringe the two patents. Argos asserts that the patents are both invalid. The particular ground of attack is obviousness in the light of common general knowledge and certain cited prior publications. The matter is proceeding to trial later in the year.


At a case management conference before Pumfrey J there was a dispute about what disclosure should be ordered. Nichia proposed that they should not have to give any. Argos said Nichia should, and in particular it should disclose documents about the making of the invention and about certain experiments which it had conducted to prove infringement. Argos, of course, being only a retailer, has no technical documents, and so, whatever view one takes about disclosure of documents concerning obviousness, it has nothing to disclose touching that subject. By his judgment of 23 rd February 2007, [2007] EWHC 545 (Pat) Pumfrey J refused both kinds of disclosure.

The Relevant Rules


The rules no longer provide for an automatic duty of disclosure. A duty only arises if and when the court makes an order for it. Save in fast-track cases or where the parties agree otherwise, however, the normal practice is for the court to make an order for “standard” disclosure. The relevant general provisions about disclosure of the CPR about this read as follows:

Disclosure limited to standard disclosure

31.5 (1) An order to give disclosure is an order to give standard disclosure unless the court directs otherwise.

(2) The court may dispense with or limit standard disclosure.

Standard disclosure – what documents are to be disclosed

31.6 Standard disclosure requires a party to disclose only –

(a) The documents on which he relies; and

(b) The documents which –

(i) adversely affect his own case;

(ii) adversely effect another party's case; or

(iii) support another party's case; and

(c) the documents which he is required to disclose by a relevant practice direction.


For patent actions what is meant by “standard disclosure” is modified by the Practice Direction to Part 63:

PD 5.1

Standard disclosure does not require the disclosure of documents where the documents relate to —

(2) any ground on which the validity of a patent is put in issue, except documents which came into existence within the period –

a. beginning two years before the earliest claimed priority date; and

b. ending two years after that date; and

(3) the issue of commercial success.”

Disclosure of inventor's records in cases of alleged obviousness


Obviousness is the objection to validity in this case. How far, if at all, is what the inventor actually did to make the invention relevant to this issue? If what he did is relevant, then disclosure of the related documents may follow. But if not, not. The question calls for a fundamental examination of the objection of obviousness and how it is to be determined.


A patent must involve “an inventive step” (s.1(1)(a) of the Patents Act 1977, enacting Art.52 of the European Patents Convention). “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.” (Art. 56, enacted by s.3). “The state of the art shall be held to comprise everything made available to the public …..” (Art. 54, s.2(2) – I omit unnecessary detail).


It follows that the statutory question is whether the invention is obvious to a notional “person skilled in the art.” I set out the attributes of this notional individual in Rockwater v Technip [2004] RPC 919:

[7] It is settled that this man, if real, would be very boring – a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355

“… the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a “mosaic” out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.”

[8] The no-mosaic rule makes him also very forgetful. He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one.

[9] He does, on the other hand, have a very good background technical knowledge – the so-called common general knowledge. Our courts have long set a standard for this which is set out in the oft-quoted passage from General Tire v Firestone Tire & Rubber [1972] RPC 457 at 482 which in turn approves what was said by Luxmoore J in British Acoustic Films 53 RPC 221 at 250. For brevity I do not quote this in full – Luxmoore J's happy phrase “common stock of knowledge” conveys the flavour of what this notional man knows. Other countries within the European Patent Convention apply, so far as I understand matters, essentially the same standard.

[10] The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned.


Laddie J, in Pfizer's Patent [2001] FSR 201 at [62] also described the attributes of the skilled man in a passage so characteristically vivid that it is worth reciting:

The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art. This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics.


The structured approach to considering obviousness is well-settled (see per Oliver LJ in Windsurfing v Tabur Marine [1985] RPC 59 at 73). I recently restated it in Pozzoli [2007] EWCA Civ 588 at [23]:

(1) (a) Identify the notional “person skilled in the art”

(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?


For present purposes what matters is that this basic formulation does not involve expressly what the inventor actually did or thought. Nor for that matter what his opponent did or thought. The inventor may have thought that what he did was little short of, or actually, a work of genius—that he was a latter day Edison. He may be able to show that he struggled manfully for many...

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  • Ignorance Isn't Bliss: Recent Trends In Disclosure: No Change?
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