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Wednesday, 23 April 2008

Bühler v Spomax: a lion in the path, or just a yapping terrier?

The Honourable Mr Justice Mann recently delivered his judgment in the case of Bühler AG v FP Spomax SA [2008] EWHC 823 (Ch). The case involved a fight over whether Bühler could rightfully lay claim to a method of milling wheat flour.

Bühler were the proprietors of EP(UK) patent 0336939 claiming a method of grinding wheat using a variant on a known "high grinding" system (using counter-rotating rollers: see picture right), where the wheat is taken through double roller grinding stages, screening to remove bran only after each double grinding stage. What was commonly done previously was to screen the partially-ground flour after each grinding stage. Bühler's advance was essentially in the removal of a screening stage, which they claimed had certain advantages in being able to obtain a good quality product suitable for obtaining starch, while avoiding the material being over-ground. Mann J put the situation thus:

"[T]his is said to be one of those cases in which a prejudice, thought to provide a 'lion in the path' (to use the metaphor of the cases – see Pozzoli Spa v BDMO SA [2007] FSR 372 [IPKat commentary here]) is said to be demonstrated to be wrong" (paragraph 15).

Mann J then followed the Windsurfer-esque Pozzoli approach. Much of the argument centred around what the skilled man (pictured left) would know, and in particular to what extent common general knowledge could be used to determine the extent of prejudice he would have against grinding twice without intermediate sieving. Bühler argued it was necessary to turn to historical material in order to see whether it dispelled the prejudice, and that it was also necessary to turn to the actual experience of starch flour millers and consider whether that affected the prejudice too. Mann J disagreed, saying:
"I do not consider that this is the correct approach to ascertaining prejudice. One does not look at the evidence which, by itself, is said to establish it, and then look for evidence dispelling it. The enquiry is an overall one – does the prejudice exist, weighing all the evidence together and not starting with one piece and then testing the rebutting quality of others. It is therefore necessary to consider the remainder of the evidence before coming to a conclusion as to whether the prejudice relied on by Bühler was part of the common general knowledge of the skilled person" (paragraph 36).

In finding that the prejudice did exist, but that it was not uniform and there was no technical reason for it being widespread, Mann J concluded against the claimant:
"The prejudice of the bread miller merely provides one element in the overall picture. There is no lion in the particular path down which the skilled man travels in this case (or at least not the particular lion alleged). There is at most an interesting small terrier which yaps a little to attract attention. It does not provide much distraction, let alone deterrence" (paragraph 45).

This was, effectively, enough to dispose of the matter, although Mann J went on to consider the various cited prior art documents (some dating back to the earlier part of the last century), and eventually found that the core concept of the patent was not inventive. The patent was consequently ordered to be revoked.

Another point, not in the end relevant to the outcome, was that Buhler had applied to the EPO for their patent to be limited, under the new procedure allowed after EPC2000 came into force last year. Their application under Article 105a, made on 17 December 2007, involved the deletion of several claims and limitations to the wording of claim 1. As Mann J put it:
"In a fax dated 31st January 2008 an examiner in the EPO confirmed a prior telephone conversation and confirmed in writing that the examination division dealing with the amendment application intended to 'limit' the patent in accordance with the amendments shown above, but 'for internal procedural reasons it is at present not possible to issue the decision on the limitation of the Patent before April 2008'. While that seems an extremely surprising state of affairs in a modern organisation, that is apparently the position. It is hard to conceive that the position will change pending the final issue, and in those circumstances I treated the patent as amended (all parties were prepared to argue the case on that basis) and did not hear any part of the English amendment application."

The IPKat is not as surprised as Mann J was about the time taken by the EPO to deal with the request. However, over 4 months to deal with a simple request for limitation does seem like quite a long time. Have any of the IPKat's readers had similar problems getting applications for limitation dealt with?

[NB: Contrary to appearances, this was in fact posted by the IPKat's amenuensis David, and not Jeremy as stated. Apologies for any confusion caused as a result!]


Anonymous said...

Paragraph 37b seems interesting to me. Mann wrote:

"Mr McGee's evidence, which I accept, was that starch flour mills carried on a form of double grinding without intermediate sifting in several plants in Australia, again known to European engineers."

I can't really see the relevance of the 'again known to European engineers'. Since when did the skilled person have to be a European?

In fact, this has long troubled me about the 'person skilled in the art' and the heavy reliance on hearsay, sorry expert evidence, in the English patents court.

The experts called on are almost always based in Britain, even if the technology is not widely researched in this country. In such cases, how can the cgk of the skilled person properly be established by a uk 'expert'?

Indeed, one can imagine situations in which the cgk of the skilled person varies considerably depending on whether he/she is taken to be in research in the field in the UK or Taiwan or the US etc.

On a similar note, the weight placed on expert evidence always surprises me in cases where the priority date is long, long ago. One wonders how a pair of experts can really remember what the person having ordinary skill in the art would have known at a precise date 21 years ago.

Given the recent(ish) cases in which expert evidence in other fields (e.g. medical) has been shown on occasion to be badly unreliable, one can't help but question whether or not the english patents court is mistaken in the weight it continues to place on such evidence.

In other jurisdications, including the EPO and the US, much less weight is placed on such hearsay, sorry evidence.

As for Mann's criticism of the EPO, isn't that de rigeour these days for an english judge? They probably have an annual assessment in which points are awarded for euro-bashing.

Gobhicks said...

Lions, wee yappy dogs… where are the cats? Skulking in the bushes at the side of the path no doubt.

Anon raises an interesting point. I have recently dealt with a case where CGK was central to arguments about obviousness and which had elements of “local” knowledge. If a UK patent relates to technology in which industry standards are involved, and obviousness is tied up with those standards being part of the CGK, and if those standards are, to some extent at least, local to the UK, how does that sit with the notion of a “global” skilled person? Is it necessary to establish a “global mean” level of CGK? I think it’s reasonable for a “national” patent to be judged on the basis of “national” CGK, which solves the problem in the case I was dealing with (although the point was never fully tested). Another wrinkle in that case was the interpretation of certain passages of a US patent, which could be argued to have a certain meaning, or at least implication, for a UK addressee with UK CGK, given particular differences in practice between the UK and USA in the relevant technical field. Again, the point was not fully tested.

The issue in the present case is different. When does knowledge of local practice in one part of the world become CGK either globally or in another locality? In this case there is an immediate question as to whether a method practised “in several plants in Australia” belongs to the “CGK” at all, or whether it should only be treated as “prior art”. Even if there is no dispute about it having been done, that doesn’t make it CGK in Australia or anywhere else, although that point is perhaps academic if the skilled person is assumed to know about it anyway. But, if something done on one side of the world can be said, as a matter of fact, to be well known to interested parties on the other side of the world, then that’s a pretty strong argument that it belongs to the CGK, whether viewed locally (i.e. here on the other side of the world) or globally.

In any case, in the absence of “experts” providing evidence on which to base decisions in disputes about obviousness, how else is it to be done?

Anonymous said...

In response to Gobhicks above, who wrote:

"Is it necessary to establish a “global mean” level of CGK? I think it’s reasonable for a “national” patent to be judged on the basis of “national” CGK, which solves the problem in the case I was dealing with (although the point was never fully tested)."

Personally (this is the first poster again) I can't agree. Imagine a small country such as Monaco. In certain technical fields, almost everything that is novel would be inventive, because the level of cgk of the native skilled in the field (or nearest field) would be so low.

For me, if the level of common general knowledge of a technical field is high in one country, then that must nevertheless be the level of cgk of the skilled person, even if the patent is litigated overseas.

So, for example, if a patent were litigated in the UK and it was established that the cgk of the skilled person in the UK at the p.d. was L1, and that the cgk of the skilled person in Japan at the p.d. was L2 (where L2>L1), then obviousness should be judged against cgk L2.

To do otherwise would be strangely discriminatory, along the lines of 'your overseas knowledge isn't good enough, so there.'

Further, Art 56 requires that obviousness be judged against the state of the art, and the state of the art is most definitely global.

Re your final question: I am not against the use of 'experts', I merely think that the english courts have become too reliant on them, and sometimes give too much weight to statements that amount to little more than hearsay. As to how else it should be done, I would like to see more documentary evidence from the relevant time used to back up the assertions of the experts. In this case, to be fair, it seems that a reasonable amount of such 'hard evidence' was produced.

twr57 said...

What counts as prior art is defined in the Act (and the EPC). 'Obviousness' is judged against that. But 'common general knowledge' isn't statutorily defined. It's what one of ordinary skill in the art would know (isn't it?). This might well vary from place to place (let alone country to country). You might argue that if it's confined to one country, it's neither common nor general. I suggest that the person of ordinary skill in the art (when a UK patent is being considered) is a Briton, and knows only what is CGK in the UK (I'm tempted to say England, on St George's Day).

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