For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Thursday, 5 November 2009

Haulm Sweet Haulm for the Grimme Reaper?

Some good folk would say that quite enough has already been said about Tuesday's Patents Court for England and Wales ruling of Mr Justice Floyd in Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott (trading as Scotts Potato Machinery [2009] EWHC 2691 (Pat), an earthy tussle over rights in machines for separating potatoes from weeds, earth, clods, stones and haulm. Grimme alleged patent and design infringement.


Right: nothing to do with potatoes, this is actually a machine for recovering costs ...

Scott denied infringement and counterclaimed for (i) invalidity and (ii) ungrounded threats to sue for patent and design infringement. Both sides emerged as both winners and losers (see PatLit here for a brief explanation and some idle speculation as to what the costs order might look like), and Class 99 waxed lyrical on the analogy between the design issues in this action and those in the 'pig fenders' case ( C & H Engineering v Klucznik [1992] FSR 421: as David Musker notes, "for pig read potato").

So is there anything left for the IPKat? Yes, there is. The question is again raised as to whether the commercial success of a patent is an indication of inventive step. Says Floyd J:
"Commercial success

127. Grimme also rely on commercial success of machines made in accordance with the invention. Commercial success can, in some fairly rare and clear cases, amount to a secondary indication of inventive step. The reasoning behind why this is so was explained in characteristically lucid terms by Laddie J in Haberman v Jackel [1999] FSR 683 at 699 to 701.

128. Grimme have provided a table of the sales which it relies on to show commercial success. It relies on the Grimme MultiSep spiral segment separator sales from 2000 when it was launched. It contrasts these with sales of other separators, including the MultiSep with paddle star wheels. Grimme contend that the MultiSep spiral segment is made in accordance with the Patent but that the MultiSep paddle star is not.

129. I have not found the evidence of commercial success helpful on any issue of obviousness in this case. The basis on which I have found claim 1 to be obvious is that a Rollastar machine with rubber clod rollers is sufficiently adjustable that it falls within the claim. That being so, no amount of commercial success of either MultiSep machine can have a bearing on the issue. The same applies to claim 24.

130. So far as claim 17 is concerned, I have been able to find that claim to be inventive by a sufficient margin not to require secondary indicia of the kind provided by commercial success. But given the level of sales enjoyed by the paddle star, which did not have this feature, I do not think that it is established that commercial success is due to the features of claim 17.

131. I think it would be unwise to attribute the success of the MultiSep to anything disclosed in the Patent. The lips or projections taught by the Patent are nothing like those used in the MultiSep. The evidence showed that those used in the Patent would fill with mud and be difficult to clean. I believe that the commercial success of the machines relied on is likely to be due to a combination of factors including Grimme's market position and the decline of the Pearson business. It is impossible to distill from that evidence any indication that the features of claim 17 played a significant role".
The IPKat doesn't like to see himself as an extremist or an iconoclast; still less does he like to take issue with the late Sir Hugh Laddie -- but he fervently wishes that the 'commercial success' criterion were consigned to the scrapyard of legal history along with frankalmoign and enfeoffments. If you look at Article 56 of the European Patent Convention, there's a bit in it that read:
"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".
The Kat knows this sounds somewhat trivial, but this looks to him as though inventive step is measured by looking at the invention itself, rather than the receipts and invoices. He understands that, in the days when judges knew plenty of Latin and Greek but whose knowledge of science was confined to apples falling from trees, it was cruel and unfair to blind them with science, so lovely little rules of thumb like 'long-felt-want' and 'commercial success' were devised. Surely there's no room for them now, with specialist patent courts and even some judges with a science background to staff them. In any event, as one member of the Court of Appeal once pointed out (and there's a pint of beer for whoever first posts his name below together with the case he said it in), the absence of commercial success is as much an indicator as the existence of commercial success (i.e. if something's sufficiently non-obvious, people won't see how you can make it pay: think of Frank Whittle's invention of the jet engine).

At this juncture, three things occur to the IPKat. First, we are all supposed to be good Europeans now. So can anyone tell him how far 'commercial success' is used as a criterion of inventive step elsewhere in Europe?

Secondly, if we are all supposed to be looking for ways to streamline and accelerate patent litigation, can the judges make it a point of case management to say something like: "don't go bothering me with evidence of commercial success in support of a patent's validity unless I say so"?

Thirdly, it may only be a matter of impression, but 'commercial success' generally looks to the IPKat as though it's thrown in when the case in favour of a patent's validity is pretty weak. So, other than to make the client happy by letting him hear his patent praised and running the risk that he might be faced with disclosure of some of his more delicate financial and management records if he does so, does 'commercial success' really achieve anything?

Grimme reapers here
The Grim Reaper here and here
Cat potato here

3 comments:

Armand Grinstajn said...

I've had a look at the French case law but I did not find much on commercial success.

The Guidelines for examination in the EPO state that "commercial success alone is not to be regarded as indicative of inventive step, but evidence of immediate commercial success when coupled with evidence of a long-felt want is of relevance provided the examiner is satisfied that the success derives from the technical features of the invention and not from other influences (e.g. selling techniques or advertising)". (C-IV 11.9.4)

And there are quite some decisions of the Boards of appeal of the EPO. Some examples:

T 80/86 : Commercial success, e.g. demonstrated by copying by competitors, can only be taken into account if it can be demonstrated that the success was due essentially to the invention rather than, for example, to advertising etc. [10.5]

T 335/86 : While the argument of commercial success cannot in general be on its own an indication of inventive step, it may strengthen a positive result of the examination. [5.6]

T 336/07 : The claimed invention’s commercial success may play a role as secondary indicia in cases of doubt where novel subject-matter rests squarely in the technical domain, as for example in T 1212/01. However, it is unsuitable for demonstrating inventive step where the contested finding of lack of inventive step is based solely on the exclusion under A 52(2) of subject-matter that may otherwise represent a genuine mental achievement. Thus, for example, a paperback novel is no more inventive in the sense of A 56 for being a bestseller. [4.3.6]

Three cases where this criterion was found to be fulfilled:

T 106/84 : As the appellant’s company is rather small and cannot afford to indulge in major sales campaigns and sophisticated marketing techniques, the Board is prepared to accept in this case that the commercial success stems from the technical advantages related to the features claimed. [8.5]

T 677/91 : It would be wrong to ignore the practical impact that the invention has made in its own field since the priority date when in a textbook reference is made to invention bringing in a new era in mass spectrometry. It is difficult to reconcile such statements with the idea that the claimed invention was in fact a matter of mere routine development for a skilled person at the priority date. [3.3, 4th §]

T 626/96 : The “Triflow tap” has enjoyed considerable commercial success in several countries. This is apparent from the sales values given for the years 1990 to 1994 : there was a sale amount of £ 480,000 in 1990 and four years later the sale amount went up to more than twelve times as much (£ 6,000,000). It is significant that this commercial success was achieved in a very short space of time after the appellant’s invention. It appears therefore that there was a pressing commercial need for such a simple solution. The applicant’s company was created in late 1990 for the purpose of trading the invented tap. It seems therefore clear that this quite new company was not in a position to finance a marketing campaign in Europe, the USA and elsewhere. [6]

Anonymous said...

I believe that commercial success does not influence the finding on inventive step. The above cited decisions seem to go in that direction, since once found that the technical features involved an inventive step, it was acknowledged that commercial succes could derive from them. However, I never heard of any decision stating that commercial success could reverse the finding of obviousness.

Alas, I believe that we will still hear the comercial success argument for some time, as any party facing a nearly lost case will use whatever argument they can think of.

Simon said...

Re the non-commercial success point, was it Aldous LJ, echoed by Ardon LJ, in Dyson vs Hoover?

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