Re Halliburton Energy Services Inc.'s Patent Applications
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC |
| Judgment Date | 05 October 2011 |
| Neutral Citation | [2011] EWHC 2508 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 05 October 2011 |
| Docket Number | Appeal Nos: CH/2011/0154 |
[2011] EWHC 2508 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
St. Dunstan's House
133–137 Fetter Lane
London EC4A 1HD
His Honour Judge Birss QC (Sitting as a Judge of the High Court)
Appeal Nos: CH/2011/0154
CH/2011/0316
IN THE MATTER OF THE PATENTS ACT 1977
Richard Davis (instructed by Hoffmann Eitle) for the Appellant, Halliburton Energy Services Inc.
Thomas Mitcheson (instructed by the Treasury Solicitor) for the Respondent, the Comptroller-General
Hearing dates: 28th July 2011
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 is an appeal from the Comptroller-General of Patents relating to the patentability of computer implemented inventions.
The appellant (Halliburton Energy Services Inc.) made four patent applications before the UK IPO. They were all rejected on essentially the same grounds, that the inventions were excluded from patentability as schemes, rules or methods for performing a mental act and as computer programs. The first three applications were dealt with together at a hearing on 29th November 2010 before Mr Thorpe, Deputy Director acting for the Comptroller. He gave his decision in writing on 25th February 2011 (O/080/11). The fourth application (GB 0802302.0) was dealt with afterwards by Mr Thorpe on the basis of the papers already filed because the patentability question was the same as that considered in the 25th February decision. Mr Thorpe's written decision rejecting that latter case was given on 19th May 2011 (O/170/11).
Halliburton appealed to the Patents Court and the matter came before me on 28th July 2011. Mr Richard Davis appears for Halliburton instructed by the patent attorneys Hoffmann Eitle. Mr Thomas Mitcheson appears for the Comptroller instructed by the Treasury Solicitor.
Mr Davis submitted that Mr Thorpe's decision was wrong in law following the existing approach to patentability questions as set out by the Court of Appeal in Aerotel v Telco / Macrossan's Application [2007] RPC 7 and Symbian v Comptroller [2009] RPC 1. In this respect he submitted that Mr Thorpe had construed the mental act exclusion too widely. He also submitted that the approach to patentability taken in the UK at present was in conflict with the approach taken in the European Patent Office. In the EPO at least one of his client's applications had been examined without much of a murmur and this, he submitted, highlighted the difference between the UK and the EPO in this area of patent law. Mr Davis invited me not to follow Aerotel on the footing that it was not in accordance with the approach of the EPO. He contended that although when the matter came before the Court of Appeal in Symbian in 2008 there had not been a decision of the EPO Enlarged Board of Appeal on the point, in May 2010 the EPO Enlarged Board of Appeal handed down their opinion G3/08, concluding in effect that the EPO's approach was indeed a settled one. He submitted I was not bound by Aerotel in any event because since Aerotel the Patents Act 2004 had amended the Patents Act 1977 to bring it into line with the amended European Patent Convention known as EPC 2000. EPC 2000, submitted Mr Davis, amended the law of patentability in a material way as compared to the relevant provisions considered in Aerotel.
Mr Mitcheson supported the decision of Mr Thorpe. He contended that the applications were not patentable. He submitted that I should follow Aerotel and that the changes in the legislation do not justify the course proposed by Mr Davis. He submitted that Mr Thorpe's construction of the mental act exclusion in s1(2) was the right one as a matter of law.
Thus this case raises head on the question of the correct scope of the mental act exclusion in the 1977 Act. It is a point which has arisen in a number of cases before and on which there is conflicting authority. In order to deal with it in context, it will be necessary to deal with the way in which the patentability of computer implemented inventions is addressed in the UK more generally.
However before dealing with the substance of the case at all I need to deal briefly with a submission by Mr Davis about the nature of this appeal.
Nature of this appeal
CPR Part 52 r52.11 provides as follows:
52.11 Hearing of appeals
(1) Every appeal will be limited to a review of the decision of the lower court unless—
(a) a practice direction makes different provision for a particular category of appeal; or
(b) the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing.
By r52.11(1) every appeal will be limited to a review unless either condition (a) or (b) is satisfied. It has been clear hitherto that in general appeals from the Comptroller of this kind are reviews rather than re-hearings (see Reef Trade Mark [2003] RPC 5 (CA), Blacklight Power Inc v Comptroller [2009] RPC 6 (Floyd J), and Patent Office Practice Notice 1/2003 paragraph 10 [2003] RPC 46). However Mr Davis submitted this appeal was by way of a rehearing and not a review because of the combined effect of the reference in r52.11(1)(a) to a practice direction making a different provision and then the terms of paragraph 9 of the Practice Direction 52—Appeals. That paragraph states:
Re-hearings
9.1 The hearing of an appeal will be a re-hearing (as opposed to a review of the decision of the lower court) if the appeal is from the decision of a minister, person or other body and the minister, person or other body—
(1) did not hold a hearing to come to that decision; or
(2) held a hearing to come to that decision, but the procedure adopted did not provide for the consideration of evidence.
He submitted that paragraph 9.1(1) applied to the appeal from the second decision because no hearing took place. He also submitted that paragraph 9.1(2) applied to both appeals because the procedure did not provide for the consideration of evidence. In my judgment Mr Davis is wrong on both counts.
As regards 9.1(1), it would be absurd if that provision were to be interpreted in such a way as to cover the appeal from the second decision in this case. The second decision is one in relation to which Halliburton had the unfettered right to a hearing before the decision was made. Halliburton sensibly chose not to exercise their right to a hearing because there was no point in the circumstances. That pragmatic choice cannot be said to have given rise to such a fundamental change in the nature of the proceedings as would justify a re-hearing on appeal.
As regards 9.1(2), the point is simply wrong. An applicant is entitled to put evidence before the Comptroller if they wish. The fact that it is rarely done and that Halliburton did not do it on this occasion is not the point.
Thus neither limb of paragraph 9 of Practice Direction 52 applies in this case and so r52.11(1)(a) does not apply either. This appeal is a review. I should add that in a case of this kind I cannot see how the distinction between a review and a re-hearing makes any difference.
The case
The case proceeded before me on the basis that all four applications stand or fall together. In my judgment that is right as regards the issues which fall to be dealt with on this occasion. It is therefore only necessary to consider one of them and, like Mr Thorpe, I will consider application GB 0523735.9 (referred to as '735).
The '735 application was filed on 22 November 2005 and published as GB 2420433 A on 24 May 2006. The invention is concerned with improving the design of roller cone drill bits for drilling oil wells (and the like). The point is to increase their drilling efficiency and their operational life. The invention uses a computer simulation of the interaction of the drill bit with the material being drilled to optimise various design features of the drill bits. The use of computer simulation reduces or eliminates extensive field testing. A fairly detailed description of the invention is set out in paragraphs 5 to 12 of Mr Thorpe's decision. Neither side criticised those paragraphs. I will not repeat them. For the purpose of this appeal it is only necessary to consider claim 1.
Claim 1 in the form to be considered on this appeal is set out below (I have added numerals for ease of reference):
i) A method to design a roller cone drill bit with optimum drill design parameters to form a wellbore in an earth formation, comprising:
ii) initially designing the drill bit using a respective cone profile for each roller cone and at least one drill bit design parameter selected from the group consisting of type of cutting element, size, configuration and number of cutting elements, respective offset of each roller cone, number of roller cones, number of rows of cutting elements in each roller cone, number of cutting elements in each row, location of each cutting element and orientation of each cutting element;
iii) simulating drilling portions of the earth formation with the initial drill bit design including the respective cone profile for each roller cone and at least one drilling parameter selected from the group consisting of weight on bit, rate of penetration, rate of drill bit rotation, depth of borehole, bottom hole temperature,...
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