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Thursday, 29 July 2010

Schlumberger v EMGS: A Non-Obvious Marriage of Skills

Who (or what) is the "person skilled in the art"? This was the main question posed in the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, the judgment of which was issued yesterday by the Court of Appeal.  This resulted from an appeal from the judgment of Mr Justice Mann at the High Court (commented on at the time by the IPKat here), who had found EMGS's patents, relating to geological surveying, to be invalid for being obvious.

While Article 56 EPC asks whether a claimed invention would be obvious to the person skilled in the art, Article 83 asks the different question of whether the patent application discloses the invention in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art.  In many, if not most, cases the person would be one and the same, not least because the person who would not find the claimed invention obvious must be sufficiently taught by the patent specification how to implement the invention.

There are some cases where an invention comes from combining knowledge from more than one field of technology.  Once this knowledge is combined, how to carry out the invention becomes straightforward, and the person skilled in the art according to Article 83 becomes a team of people with knowledge from each field.  If the same team of people was used to determine the question in Article 56, however, the effect would be to make the invention immediately obvious.  This is clearly a problem for some inventions that would otherwise be patentable.

In this case, the invention related to a method of finding out whether an underwater geological formation contained oil or water.  Seismic surveying could be used to find promising areas to look into further, but could not go as far as telling what a formation contained.  This was a problem for oil exploration companies, who would generally have to spend about $25M each time in order to drill a test well to find out.  With a hit rate of about 1 in 10, striking water instead of oil 9 times out of 10 made doing this a quite expensive way of finding oil.  This was effectively the situation prior to the application date of the patent in question. 

What the patent, EP1256019, taught was that a technique known as controlled source electromagnetics (CSEM) could be used in a very specific way to tell the difference between oil and water in a geological formation.  Before the patent application, nobody had thought to marry the known techniques of deep water surveying for oil with CSEM in such a way, although both were well known separately.  What the patent proprietor was arguing for was that the invention was a "non-obvious marriage of skills".  In other words, the invention resulted from the recognition that CSEM could be used in a particular way to tell the difference between oil and water in formations that had already been identified.

Lord Justice Jacob, taking the lead role in the judgment, considered that it was clear that the person skilled in the art for obviousness was not necessarily the same person skilled in the art for performing the invention once it was made.  In a key part of the judgment's reasoning (at least in the IPKat's opinion), Jacob LJ stated:

"I think the flaw in [assuming that the skilled person is the same in each case] is to assume that “the art” is necessarily the same both before and after the invention is made.   The assumption may be correct in most cases, but some inventions are themselves art changingIf a patentee says “marry the skills of two different arts to solve a problem,” marrying may be obvious or it may not.  If it is not, and doing so results in a real technical advance then the patentee deserves and ought to have, a patent.  His vision is out of the ordinary

This is not because a different construction is being given to the phrase “person skilled in the art” in the different Articles.  It is because the phrase is being applied to different situations.  Where the issue is claim construction or sufficiency one is considering a post-patent situation where the person skilled in the art has the patent in hand to tell him how to perform the invention and what the monopoly claimed is.   But ex-hypothesi the person skilled in the art does not have the patent when considering obviousness and “the art” may be different if the invention of the patent itself is art changing.

In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?”  That leads one in turn to consider the art in which the problem in fact lay.  It is the notional team in that art which is the relevant team making up the person skilled in the art.   If it would be obvious to that team to bring in different expertise, then the invention will nonetheless be obvious.  Likewise if the possessor of the “extra expertise” would himself know of the other team’s problem.   But if it would not be obvious to either of the notional persons or teams alone and not obvious to either sort of team to bring in the other, then the invention cannot fairly be said to be obvious.    As it was put in argument before us the possessors of the different skills need to be in the same room and the team with the problem must have some reason for telling the team who could solve it what the problem is." (paragraphs 63-65, emphasis added).

Jacob LJ then went on to consider what the correct approach would be in this case:

"It follows that the correct approach in this case is to start with the real problem faced by exploration geophysicists.  Did they appreciate they had a solvable problem?   How could they determine whether a thin layer of porous rock identified by seismics as potentially hydrocarbon bearing in fact does so or is just a false positive bearing only brine or water?   One then asks whether the notional exploration geophysicist who read the cited prior art would see that the answer was to use CSEM, or if not that, at least that CSEM had a sufficient prospect of being useful that it was worth asking a CSEM expert.  

The problem must also be approached the other way round, from the point of view of the CSEM expert.  Would he or she know of the exploration geophysicists’ problem and, if so, would he or she appreciate that CSEM had a real prospect of being useful to solve the problem?  

In short: was the marriage obvious to either notional partner?" (paragraphs 71-73).

By this point, it was quite clear what the end result would be, which was that the invention was not obvious because the marriage of CSEM with known geophysics in identifying hydrocarbon layers was not obvious to either notional partner before the priority date of the patent.  The appeal was allowed, resulting in the judgment of Mann J on finding the patent to be invalid being overturned.

In support of the reasoning, various other cases were mentioned where similar arguments would apply, such as Mandy Haberman's 'Anywayup Cup', which married the known features of a slit valve with a trainer cup, and James Dyson's cyclone vacuum cleaners, which married domestic vacuum cleaners with industrial scale cyclone technology.  Jacob LJ also noted with approval some of the leading cases from the EPO on where the problem-solution approach could be used in such situations.  All this led the IPKat to think, perhaps rather egotistically, that his (and some of his readers') words on how the Court of Appeal might have got it wrong in Actavis v Novartis could have had some effect.  Regardless of whether he has had an influence, however, the IPKat is very pleased to see that the EPO problem-solution approach is increasingly being married with the UK-style Windsurfing/Pozzolli approach to produce quite a pleasingly robust test for inventive step that would not necessarily have been obvious to persons skilled in either approaches before. 

11 comments:

Anonymous said...

David

I think that the correct patent number of the decision is EP(GB)1,256,019.

Regards,

Ronald Pols

David said...

Well spotted. Correction now made.

Anonymous said...

"(...) not least because the person who would not find the claimed invention obvious must be sufficiently taught by the patent specification how to implement the invention."

Not really. To find the claimed invention obvious, the skilled person must only be able to arrive at a single embodiment of the invention. To implement the invention in the sense of Art. 83 EPC, the skilled person must be able to implement substantially all embodiments of the invention.

Example claim:
A computer programmed to solve diophantine equations.

This claim is obvious and in fact now new. For example, it is trivial to solve the class of linear diophantine equations.

However, the claim also covers a computer programmed to solve all diophantine equations. This is Hilbert's 10th problem. It was proven by Matiysevich in 1970 that no such computer program can be constructed.

Anonymous said...

Btw, I don't see any flaw in the assumption that the skilled persons for Art. 56 and Art. 83 EPC are the same. They certainly have the same set of skills and the same common general knowledge.

However, for the purpose of Article 56 EPC the skilled person has access to the full state of the art, and not to the application documents. For the purpose of Article 83 EPC, the skilled person has access to the application documents, and not to the full state of the art but only to the common general knowledge.

This is another reason why a claim can be obvious or even not new, while still being insufficiently disclosed. If document D1 does not represent common general knowledge, but does provide an enabling disclosure of claim 1, then claim 1 is not new, even if the application documents do not sufficiently disclose it.

MaxDrei said...

Steady now. Steady. We are at risk of coming to the view that patent law is easy: just a matter of plain "common sense".

And this is what the Supreme Court of the USA always says (KSR, Bilski), isn't it?

But what about that other good old maxim: note what the Americans do, and then take care not to copy them.

And, at first instance, Mann J. didn't find it at all easy, did he?

BTW: I thought the patents judges in London come to it after a 20 year stint as a patent litigator. May I ask, did Mann J. go through such an apprenticeship?

Anonymous said...

I think that the EPO's approach in a case like this would go like:

Technological field: submarine oil prospection;

Skilled person's team: a team of exploratory geophisicists;

Problem: to improve the characterization of oil reservoirs;

Solution: use CSEM to determine the content of the reservoir.

If there was no prior art suggesting that CSEM could be used for this purpose, then the solution was not obvious. However, if there existed even a theoretical paper of a CSEM specialist in which the use of this technique was suggested for determining the content of a submarine reservoir, then it could be argued that prompted by such publication a exploratory geophisicist would have consulted a CSEM geophyicist to see if such approach was feasible, with the conclusion that the method was obvious.

I believe that this fits fine in the current problem-solution approach without ressorting to the long reasoning of the present decision.

MaxDrei said...

Do you think we need in our discussion carefully to distinguish between the following two situations:

A. Hypothetical skilled person is X. That same person is deemed to have one body of knowledge for purposes of Art 56. For purposes of Art 83, that same person has, self-evidently, a different body of knowledge.

B Hypothetical skilled person (or team) X for Art 56. A different skilled person altogether (or different team) Y for Art 83.

Anonymous said...

There are also parallel opposition procedings running before the EPO. The division decided to revoke the patent essentially for lack of an inventive step. Usually it is the national courts who are harsher on patents than the EPO, this time I'm quite curious to see what will happen in the opposite situation; this kitten seems to be suspended in a half-live half-dead Schrödinger-like state. The proprietor appealed the decision the very day this topic was posted by David. As the song goes, the cat came back the very next day...

I really wonder whether this patent is worth anything at all.

First of all, any infringing activity potentially infringing claim 1 is most likely to occur outside of any 12 mile territorial limit (where national laws clearly apply), either in the Exclusive Economic Zone (where the question of jurisdiction is murkier), or even in international waters. (Are the sensors an integral part of a vessel registered in a given state? Can you sue someone in his home state for an activity performed abroad?)

(I sometimes wonder when reading some claims how they could ever be infringed when their method couldn't be possibly performed in a single country, even when considering Art. 64(2) EPC, but that's another issue).

I tried looking up this question up on the internet, and the best I could come up with was this South African decision concerning an undersea pipeline. The issue appeared to revolve around Art. 5 of the Paris convention and the definition of a "vessel".

I have a graver problem with the claims themselves, where the characterising feature is the distance between the sensors in relationship to the wavelength. The application and the NPL filed by parties show that the preferred frequency of operation is in fraction or single digit Hertz range. The free space wavelength of such waves is of the order of hundreds of thousands of kilometers, and in water about one tenth of that (the real part of the low-frequency permittivity of (sea)water is about 80). Yet the example provided in the application refers to distance of merely a few kilometers. I thought for a moment that the wavelength referred to was an acoustic one, but it doesn't make sense to me. So how in practice could one infringe that claim?

Furthermore, at the distances and frequencies considered, Maxwell's equations crumble down to Ohm's law, and the problem is nearly a static one. Speaking of "wave refraction" seems to be misleading. One is basically measuring the resistivity of the ocean as influenced by its floor.

I'm possibly missing something here. I suppose that the opponents may have come to similar conclusions, but considered that the cost of instituting proceedings against the patent to be small change in view of the amounts involved, and therefore a good insurance.

As for the definition of the skilled person:

When examining nonsense applications of the like of perpetual motion devices, homeopathy, etc., I was always careful to try not to argue at the same time insufficient disclosure and inventive step, as there can't really be a "skilled person" in an imaginary science. (i.e.: is there really a person "skilled" in quackery?) So in a sense, the skilled person(s) should rather be the same for the purposes of disclosure and inventive step, even though his (their) task is slightly different, like other readers noted.

I see that there is also another procedure pending involving essentially the same suspects.

MaxDrei said...

That last from Anonymous really great. Thanks. I see that NL is cracking on with it too. Three (rhetorical) questions:

1) Was the OD perhaps in thrall to Mr Justice Mann (because its reasoning on Chave D37 does seem a bit thin);

2) What will NL and the TBA now make of Robin Jacob's trenchant findings on appeal, I wonder; and

3) Consider a dog team pulling a sledge. The lead dog has a reasonable view, looking forward. But all the other dogs? What do they look into? So, in this particular European sledge, which jurisdiction has the privilege of being "lead dog"?

Anonymous said...

I also wonder why the court did not ask the EPO for accelerated prosecution of these cases. It was not long ago that this approach was greatly applauded in a biotech case.

MaxDrei said...

Looking at the Decision of the OD in EP 1256019 we see (para 1.12) that it was the Hague District Court which wrote to Ms Brimelow and Mr Messerli, asking them to nudge their people. Would it have made the EPO go any faster, if England had written too?

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