Pozzoli v BDMO

JurisdictionEngland & Wales
JudgeLord Justice Jacob,Lord Justice Keene,Lord Justice Mummery
Judgment Date22 June 2007
Neutral Citation[2007] EWCA Civ 588
Docket NumberCase No: A3/2006/1609
CourtCourt of Appeal (Civil Division)
Date22 June 2007
Pozzoli SPA (a Company Incorporated Under the Laws of Italy)
(1) BDMO SA (a Company Incorporated Under the Laws of Belgium)
(2) Moulage Industriel De Perseigne SA

[2007] EWCA Civ 588


The Rt Hon Lord Justice Mummery

The Rt Hon Lord Justice Keene and

The Rt Hon Lord Justice Jacob

Case No: A3/2006/1609





The Hon Mr Justice Lewison

HC05 C01824

Royal Courts of Justice

Strand, London, WC2A 2LL

James Mellor QC and Thomas Mitcheson (instructed by Messrs Bristows) for the Appellant

Henry Carr QC and Michael Hicks (instructed by Redd LLP Solicitors) for the Respondents

Lord Justice Jacob

Lord Justice Jacob


The patentee, Pozzoli, seeks permission to appeal from the decision of Lewison J, [2006] EWHC 11398 (Ch) that its patent, EP (UK) 0 676 763, is invalid. In the event that permission is granted and the patent held valid, Pozzoli appeals (with the leave of this court) Lewison J's decision that the defendants' “Double Push Tray” does not fall within the scope of the patent.


Since the patent was held invalid, it was logical first to consider whether permission to appeal this finding should be granted.

The TRIPS point


Mr Mellor QC for Pozzoli, initially raised a point about the TRIPS Agreement, (Annex 1(C)) to the Treaty establishing the World Trade Organisation made at the Uruguay Round of the GATT talks in April 1994. He submitted that the effect of TRIPS is that we must give permission – even if there is no real prospect of success (the criteria for permission provided by CPR 52.3(6)(a)). It was a startling proposition, one which called for no reply and with which I can deal briefly.


The argument ran like this:

i) Art. 32 of TRIPS provides:

“An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available”.

ii) This means that a full judicial hearing on the merits is called for. A preliminary screening system for weeding out cases with no real prospect of success as now provided by the Rules will not suffice for this purpose.

iii) Although TRIPS is an international Treaty and so does not itself form part of UK law, wherever it is possible for our courts to act so that the UK is not in breach of an international Treaty, they should do so. [I add that TRIPS is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972 (by virtue of SI 1995 No. 265) and so falls to be construed as it would be construed by the ECJ. That involves a purposive and teleological rather than literalist approach].

iv) Thus the other possible ground for granting permission to appeal, namely “some other compelling reason” ( CPR 52.3(6)(b)) is brought into play. The compelling reason is that if permission is not given, the UK will be in breach of its Treaty obligations.


A major flaw in the argument is simple: a decision by a Court of Appeal judge or judges (whether made on the papers or following an oral argument or both) as to whether or not to grant permission to appeal from an order for revocation is a judicial decision. It is a “judicial review” as called for by Art. 32. Nothing in TRIPS requires a member state to provide that its courts of appeal should hear cases which have been judicially determined to have no real prospect of success.


It may well be there is another flaw which may bring in the ECJ approach to construction to get a sensible result. Consider a case where a national Supreme Court, contrary to all decisions below, for the first time holds a patent invalid. Does Art.32 really require that there be a means of judicial review of this? Mr Mellor was forced to so submit. He postulated that the way round this would be for the Supreme Court having reached the decision that the patent is invalid to remit the case to the lower court so that it would be that court which actually revoked the patent so that there could be an appeal to the Supreme Court all over, thus complying with the Art. 32 requirement of a judicial review. Keene LJ aptly described this as a “dog's breakfast” solution.


The problem would not arise if one read Art. 32 as applying only to administrative or political decisions. Mr Mellor sought to rebut such a reading by reference to other provisions of the Treaty. These were Art.62.3 (requiring that certain “final administrative decisions [which include revocation of a patent] shall be subject to review by a judicial or quasi-judicial authority.”) and Art. 41(4) (providing that “parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions, and … of at least the legal aspects of initial judicial decisions on the merits of the case”). Mr Mellor submitted that Art. 32, in referring to “any decision to revoke” must include judicial decisions to revoke, not merely administrative or other decisions because these other Articles recognise the distinction between administrative and judicial decisions.


If right, his submission means the Treaty requires the “dog's breakfast” solution or something similar. I doubt that, but it is not necessary to go into this further. The major flaw I have spelt out is quite enough to dispose of the TRIPS point here. It would be daft to require the grant of permission to appeal in a case where a court of appeal had judicially determined that the appeal had no real prospects of success.

Should Permission be given?


Following the failure of his TRIPS point (the result of which we announced during the hearing) Mr Mellor went on to argue the case for permission to appeal. This, with our consent, took the form of a full argument on validity, involving where necessary arguments on construction. The argument was sufficient, in our opinion, to justify the grant of permission on the conventional basis that the appeal had a real prospect of success. For that reason we also heard full argument on validity from Mr Henry Carr QC for the respondents, including argument on the respondents' notice. Accordingly I would formally grant permission to appeal.


I would add this about permission to appeal in patent cases generally. Unless the case is very clear and can be understood sufficiently readily in an hour or so, the better course is normally for permission to be granted by the trial judge. For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge. Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if later it discerns that the case is indeed clear.

Basic Uncontested Principles


So far as the scope of the patent monopoly is concerned it was agreed that the Judge had approached the question correctly at [6]. An argument which he rejected (and which we were told was not actually advanced), to the effect that having construed the claim, the court should go on to ask whether a product outwith it, nonetheless infringed because of some immaterial variant, was rightly not pursued. As the Judge said:

[19] Thus the question of variants (immaterial or otherwise) is a step on the way to construing the claim. It is not a reason for extending the scope of the claim once it has been construed.


It was also agreed that any finding of primary fact cannot be challenged unless it is plainly wrong. In particular such a finding cannot be challenged on appeal if there was credible material to support it. The finding must be shown to be wrong before the Court of Appeal will interfere with it.


Finally it was agreed that in relation to appeals about obviousness, the principle stated by Lord Hoffmann in Biogen v Medeva [1997] RPC 1 at p.45 applies:

Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation.

Assessing obviousness


The place of “inventive concept” in relation to obviousness also calls for some discussion. It will be recalled that it forms the first step of the well-known Windsurfing test of Oliver LJ [1985] FSR 59 at 73. The test provides a structured approach to the problem and is often useful. I set it out adding my own numbering:

(1) The first step is to identify the inventive concept embodied in the patent in suit.

(2) Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question.

(3) The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention.

(4) Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.


I think the test requires some restatement and elaboration. First one must actually conduct the first two operations in the opposite order – mantle first, then concept. For it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept.


Next, that first step...

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