Positec Power Tools (Europe) Ltd and Others v Husqvarna AB
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 10 May 2016 |
| Neutral Citation | [2016] EWHC 1061 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 10 May 2016 |
| Docket Number | Case No: HP 2015 000 061 |
[2016] EWHC 1061 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon. Mr Justice Birss
Case No: HP 2015 000 061
James St Ville (instructed by Dentons UKMEA) for the Claimants
Mark Chacksfield (instructed by Bird & Bird) for the Defendant
Hearing dates: 4th May 2016
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.
This case is about robotic lawn mowers. Patent EP 1 512 053 entitled "Electronic demarcating system" claims a method of operating an automatic device (such as a robotic lawnmower) under the guidance of an electronic "directing" system. The directing system marks out the edges of the lawn using a cable under the ground. The robotic lawnmower stays on the lawn and avoids mowing the flower beds by sensing the magnetic field created by the electric current in the cable. The current is pulsed and the characterising feature of claim 1 requires the sensing system in the robot to synchronise the time intervals within which it detects magnetic fields based on the properties of the current pulse.
The claimants (Positec) wish to sell robotic lawnmowers in the UK. They contend that the patent is invalid and/or that particular models of their robotic lawnmower products (models WG749E, WG795E and WG795E.1) do not infringe the patent. This action is in the form of a claim for revocation of the patent and for declarations of non-infringement. There is an issue about the scope of the declaratory part of the action but that is not material. The defendant, Husqvarna, is the patentee.
The invalidity plea is that the invention claimed lacks novelty or is obvious over a prior international patent application published as WO 99/59042 ("Peless"). There is also a reference to common general knowledge but at the hearing counsel explained that Positec had not yet decided whether it was advancing an allegation that the patent was obvious over common general knowledge alone or whether the reference to common general knowledge in the Grounds of Invalidity was simply on the basis that the invention was said to be obvious over Peless in the light of common general knowledge. That will be clarified by a Statement of Case in due course. At this stage therefore there is no articulated case of obviousness over common general knowledge alone.
Some directions at an early stage in the proceedings were given by consent in March which led to the trial being fixed for November 2016. This is the CMC. Various case management issues were discussed and resolved at the hearing. One point is that as regards disclosure relating to infringement, directions on that topic are agreed. Positec will prepare a Product and Process Description in accordance with CPR PD 63 paragraph 6.1. This judgment relates to disclosure on validity. Some outstanding points on the costs budgets will be dealt with separately.
In the exchanges before the CMC Husqvarna's Disclosure Report was prepared on the footing that disclosure on validity would be produced in accordance with CPR PD 63 paragraph 6.1, in other words based on the four year window. However in the course of the negotiations about directions running up to the hearing Husqvarna changed tack and contended that no validity disclosure should be ordered. Clearly Husqvarna's Disclosure Statement is significant but Positec (rightly) did not argue that it was not open to Husqvarna to submit that no such disclosure should be ordered even though it had previously agreed to do it.
At the hearing I reserved judgment on the issue of validity disclosure. The arguments raised an important point on the correct approach to disclosure in the light of CPR r31.5 and how that approach applies to the question of whether to order disclosure of documents arising from the making of the invention in an obviousness case.
Disclosure from the patentee in obviousness cases has been a notorious point for many years. The four key developments prior to the modern form of CPR r31.5 are: SKM v Wagner Spraytech [1982] RPC 497; the introduction of the four year validity disclosure window in 1995 in the RSC, now CPR PD 63 para 6.1; Nichia v Argos [2007] EWCA Civ 741; and the reform of the Patents County Court (now Intellectual Property Enterprise Court) in 2010.
The background to the problem was fully described by Jacob LJ in Nichia v Argos. I will not repeat everything he said there. Very briefly, the issue of obviousness is an objective one. The person skilled in the art is a normative legal construct and, while that notional person must have characteristics grounded in reality (see Teva v Leo [2015] EWCA Civ 779), no real person is the same as the notional person skilled in the art. They know more but foresee less than real skilled people. They know all common general knowledge but nothing else and always read with interest even the most obscure (but public) documents. They only foresee what is obvious because, unlike real technical people, they take no inventive steps. Therefore evidence of what the inventor actually did can often be of little value and since, by definition they did make the invention, there is always a risk of hindsight. To establish that such evidence is probative can descend into a satellite dispute about how similar the inventor was the person skilled in the art. This sort of evidence is a species of the genus described as secondary evidence in Mölnlycke v Procter & Gamble [1994] RPC 49. It is secondary evidence as distinct from the primary evidence, which is from suitably qualified expert witnesses, consisting of their opinions and the technical reasons for them. Mölnlycke stands for the proposition that this evidence must be kept firmly in its place. But the problem is that there are cases in which secondary evidence can be crucial, see Schlumberger v EMGS [2010] EWCA Civ 819. For example experienced patent litigators have known for years that in an appropriate case "telling the invention story" by calling the inventor to explain how he or she laboured in the dark and endured the discouragement of a sceptical world can be a winning strategy to prove non-obviousness.
The reality is that in most patent cases secondary evidence, including disclosure from the patentee about what the inventor did is a costly distraction but in a minority it can be important. This reality has been true for decades. After the 1977 Patents Act came into force a serious attempt was made to limit disclosure on obviousness in SKM v Wagner Spraytech. Mr Gratwick QC, at that time the doyen of the Patent Bar, tried and failed to persuade the Court of Appeal to overturn an order for that sort of disclosure. Before me counsel for Husqvarna submitted that that case was not of significant assistance as it was old and based on the Peruvian Guano approach which no longer applies. I do not go that far. In his judgment Oliver LJ (as he then was) explains a number of reasons why disclosure of what can be called compendiously the inventor's notes should be given when obviousness was in issue. Although the procedural context in which the problem arises today is different, parts of the judgment still have a bearing on the issue today.
In the early 1990s the Patents Court took another look at disclosure. The concern was the familiar one that disclosure could be costly and often the material appeared to have little utility. Some suggested disclosure should be abolished altogether. However the obligation to disclose documents which may be adverse to a party's case was seen as a critical aspect of a fair trial at common law and so a balance had to be struck. A special set of rules was introduced in the RSC in 1995 (now CPR PD 63 r 6.1) which limited the parties' initial disclosure obligations in various ways. On validity a four year time window (two years either side of the priority date) was introduced. On infringement the defendant could produce a sworn description of the product or process (a PPD) instead of giving disclosure initially and on commercial success schedules of relevant information were required up front. In all these cases further focussed disclosure could be ordered later if needed. The concern was that this would lead to sharp practice. It did not happen. The volume of material dropped considerably but the key material was still provided and disputes became much less common.
By the mid 2000s the approach in patents was well established. However even though validity disclosure is not as voluminous (and therefore costly) as it used to be, it is still costly and in most obviousness cases of no utility. In 2007 Pumfrey J refused to order disclosure on obviousness in Nichia v Argos and the matter went to the Court of Appeal. Jacob LJ held that "the time had come to hold that proportionality requires that normally such disclosure should not be ordered" (para 54). Jacob LJ decided that he would therefore refuse the appeal. However Rix and Pill LJJ did not agree and with "great diffidence and reluctance" refused to follow him. In a now famous passage Rix LJ emphasised that:
"Above all, it would be against the interests of justice if documents known to exist, or easily revealed, which would harm a party's own case or assist another party's case need not be disclosed because of a blanket prima facie rule against any standard disclosure. Once such a principle of disclosure were known to hold sway, dishonest or cavalier litigants would reap an unmerited advantage, contrary to the interests...
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