From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Sunday, 28 June 2015

Round, round: how to round? How do we round?

Please do not read this post if you have already read Jeremy’s beautifully succinct summary of the recent appeal hearing between Smith & Nephew and ConvaTec, and have absolutely no inclination to get further bogged down in numerical semantics. However, if you’re a glutton for punishment or have a (somewhat unhealthy) predilection for rounding conventions (as, strangely, this Kat does), then off we go.

ConvaTec Technologies and Smith & Nephew have added another court appearance to their long list of confrontations. On 24 June, the Court of Appeal handed down its decision in Smith & Nephew Plc v Convatec Technologies Inc & Ors [2015] EWCA Civ 607, an appeal of Birss J’s 2013 High Court judgment (reported by the IPKat amid New Year frivolities here), which can be read on BAILII.

The patent in suit was EP (UK) 1 343 510 in the name of ConvaTec, a patent for a light-stabilized silverisation of gel forming fibres in the context of an antimicrobial component of a wound dressing.

Mr Justice Birss’ Decision

The first hearing was instigated by Smith & Nephew as they sought a declaration of non-infringement for their product Durafiber Ag. Convatec counterclaimed that Smith & Nephew’s Durafiber product would infringe the patent. There were in fact two Smith & Nephew products to be considered: an earlier incarnation of the Smith & Nephew product ("the Original product") and an updated version (“the Modified product”); this Kat only concerns himself here with the events surrounding the Modified product, which is where the main issue of construction of numerical limitations in claims occurs.

Whilst the patent itself has an undeniably chemical flavour, the case turned on mathematical semantics. Claim 1 of the patent in suit (as amended in earlier proceedings) reads:
A method of preparing a light stabilized antimicrobial material, characterised in that the method comprises the steps of:
(a) preparing a solution comprising an
organic solvent and a source of silver in a quantity sufficient to provide a desired silver concentration in said material;
(b) subjecting a material which includes gel-forming fibres containing one or more hydrophilic, amphoteric or anionic polymers to said solution for a time sufficient to incorporate said desired silver concentration into said polymer, wherein said polymer comprises a polysaccharide or modified polysaccharide, a polyvinylpyrrolidone, a polyvinyl alcohol, a polyvinyl ether, a polyurethane, a polyacrylate, a polyacrylamide, collagen, or gelatin or mixtures thereof; and
(c) subjecting said polymer, during or after step (b) to one or more agents selected from the group consisting of ammonium salts, thiosulphates, chlorides and peroxides which facilitate the binding of said silver on said polymer, the agent being present in a concentration between 1% and 25% of the total volume of treatment, which material is substantially photostable upon drying, but which will dissociate to release said silver upon rehydration of said material.
The contentious issue of claim construction rested on the interpretation of step (c), and deciding what the skilled person would understand “between 1% and 25%” (as shown in bold above) to mean: are 1% and 25% the absolute limits of the range, or are they imprecise numbers which could be the result of ‘rounding’ conventions?

How to round up cats
ConvaTec argued that “between 1% and 25%” did not define precise values, but would be seen as whole numbers which could be the result of the basic whole number rounding convention; that is, 1% encompasses values ≥ 0.5% and < 1.5%, and 25% encompasses values ≥ 24.5% and < 25.5%. Therefore, the claimed range includes all concentrations of binding agent equal to or greater than 0.5% and less than 25.5%. According to this approach, Smith & Nephew’s product (which contains 0.77% binding agent) would fall within the scope of the claim.

Smith & Nephew, on the other hand, argued that the limits of the claimed range were precisely as they were stated (i.e. a concentration of 0.999% would not fall within the scope of the claim). This seems to go too far, and this Kat considers that such an argument was always doomed to failure.

However, their fall back argument was that the skilled person would understand the values to be correct to the number of significant figures displayed. That is, the number 1 is correct to one significant figure, and so encompasses all values ≥ 0.95 and < 1.5 (as a result of the “mathematical quirk” discussed below). The number 25 is correct to two significant figures, and so encompasses all values ≥ 24.5 and < 25.5. Therefore, the scope of the range claimed would be ≥ 0.95% and < 25.5%. This would mean that Smith & Nephew’s Durafiber Ag product, prepared using only 0.77% binding agent, would not infringe.

Birss J rejected the argument that the claimed range represented absolute limits as primarily argued by Smith & Nephew, but ConvaTec’s ‘whole number rounding’ argument did not convince him either; instead, he held that the numbers were accurate according to the number of significant figures displayed. Smith & Nephew’s Durafiber Ag product was therefore found not to infringe.

Court of Appeal Decision

Following the first hearing, both parties appealed against Birss J’s construction of the numerical range – although Smith & Nephew may appear to have achieved what they required in the first trial, their appeal was principally in relation to issues relating to the Original product.

ConvaTec once again argued that the claimed range represented whole numbers which could be the result of the basic rounding convention, and Smith & Nephew maintained that the limits of the claimed range were precisely as they were stated (this Kat is surprised that Smith & Nephew attempted this line of argument again). However, their fall-back position was that Mr Justice Birss was indeed correct - this Kat further wonders whether Smith & Nephew perhaps would have had more luck at the appeal if they had fully endorsed this aspect of Birss J’s decision.

The Court of Appeal considered a number of UK and EPO cases. Much of the UK case law indicated that the numerical values of claimed ranges should be interpreted to represent values correct to the number of significant figures displayed. On the face of it, this agrees with Judge Birss’ construction.

EPO case law featured a greater disparity of claim construction in similar cases, but the court highlighted EPO decision T1186/05 Multilayer films/Cryovac as a somewhat harmonising decision. Here, the EPO Board stated that, when comparing a patent which claimed a range of 0.89 - 0.92 to a piece of prior art which disclosed an amount of 0.885, the 0.885 value should be rounded to 0.89, as “an appropriate comparison [can] only be made with the prior art if its disclosure [is] rounded to the same degree of accuracy”.

Lord Justice Kitchen summarised some ground rules for numerical range construction in paragraph 38 of the decision:
“First, the scope of any such claim must be exactly the same whether one is considering infringement or validity.
Secondly, there can be no justification for using rounding or any other kind of approximation to change the disclosure of the prior art or to modify the alleged infringement.
Thirdly, the meaning and scope of a numerical range in a patent claim must be ascertained in light of the common general knowledge and in the context of the specification as a whole.
Fourthly, it may be the case that, in light of the common general knowledge and the teaching of the specification, the skilled person would understand that the patentee has chosen to express the numerals in the claim to a particular but limited degree of precision and so intends the claim to include all values which fall within the claimed range when stated with the same degree of precision.
Fifthly, whether that is so or not will depend upon all the circumstances including the number of decimal places or significant figures to which the numerals in the claim appear to have been expressed.”
Kitchin LJ firstly dismissed the argument that the limits should be taken as exact values. This decision was reached by considering that the patentee had in mind the possibility of expressing numerical values to a very high precision – the concentration of binding agent can be measured to a high degree of accuracy, and sections of the specification described concentrations accurate to two decimal places (i.e. 0.01%). It was also considered that the reader is taught that the invention can be performed with a binding agent concentration between 0.01 and 50%; the Court believed that this taught the skilled person that there is no technical reason to read the claim as requiring the use of a binding agent which falls between the exact numerical values of 1% and 25%.  [This Kat wonders what has happened to the doctrine that "what is not claimed is disclaimed" - there is surely an argument that if it is taught that the invention can be performed with a binding agent concentration between 0.01 and 50%, but what is claimed is narrower, then this narrower range should be given a strict interpretation.  Yet Kitchin LJ took the opposite view - "Once again this is a factor which undermines Smith & Nephew's favoured interpretation of the claim."]

Merpel is often prone to a little rounding
The Court then considered precisely how imprecise the patentee intended the limits to be understood.

As mentioned above, in comparable situations much of the UK caselaw directs a construction based on accuracy to significant figures, rather than a “whole numbers” approach. However, there is something of a “mathematical quirk” with this particular range claimed. As explained at the first trial, the range 1% to 25% using the significant figures approach encompasses numbers within the range ≥ 0.95% and < 25.5%. It is only the whole number 1 and powers of the number 10 to which such an asymmetrical range applies though; if the bottom of the claimed range had been 2% rather than 1%, even when applying the significant figures approach, the claim would have included all values ≥ 1.5 and < 25.5, a more broadly symmetrical distribution.

Counsel for ConvaTec explained further mathematical quirks with apparent aplomb (“helpful diagrams” were employed: Merpel can only hope that counsel managed to find a suitably feline number line). The patent description features a number of appropriate numerical ranges. One paragraph features the range from 1% to 10%, and another from 10% to 25%. Applying the significant figures approach to the first range would encompass all values ≥ 0.95 and < 10.5, but the second range would encompass ≥ 9.95 and < 25.5 (assuming that 10 is regarded to be accurate to two significant figures). As noted by Kitchen LJ, the error margin around 10% is an order of magnitude greater in one case than it is in the other.

The Court of Appeal felt that there was no reason to suppose that the accuracy conveyed by the patentee would depend on whether the bottom of the range is 1%, 2% or 5%, or whether 10% is at the top or bottom of the range. The Court of Appeal felt that Birss J had over-estimated the importance of the relative margins of error at the top and bottom of the claimed range, and under-estimated the importance of the anomalous figures which arise from the application of the significant figures approach (something of a judgmental rounding error).


The Court of Appeal therefore found that the claimed 1% - 25% range encompasses values of the range ≥ 0.5% and < 25.5% according to the “whole number” rounding convention. Hence Smith & Nephew’s Durafiber Ag product (and the method by which they create it) infringes ConvaTec’s patent.

This Kat was completely convinced by Birss J’s erudite reasoning and finds himself surprised that the Court of Appeal felt unable to endorse it.  He is troubled by a reasoning that considers that 1 as a lower limit of a range in a claim can actually mean 0.5.  From the comments on Jeremy's post, it seems that some readers are likewise uncomfortable with the Court of Appeal decision.  He was particularly taken with the point that both judgments (but the appeal decision more than the first instance) can be seen to focus on the mathematical conventions, rather than what a chemist would think about the claimed range. (This view is expanded in a piece on the PatLit blog, which also criticises the Court of Appeal decision in Actavis v Lilly.) What view do the rest of our readers take?


Andrew Robinson said...

How many members of the legal profession would be prepared to back me if, when presented by an estate agent with a bill for their agreed fee of 1% of the sale price of my house, I paid 0.77% and used this ruling to claim it was sufficient payment?

Also, why didn't the original drafter of the patent just say 'some' binding agent, surely they must bear most of the blame for this debacle?

MaxDrei said...

I feel I must respond to the direct question, what do readers think.

There is a recent case which revealed that the notional reader has some appreciation of what claims are for and why they are written the way they are. So, for such a reader, a claimed range of 1 to 25 would mean, Down as far as 1 and up as far as 25. Patent attorneys define the ends of claimed ranges to capture everything of interest and are not imagining rounding beyond the range ends. I think the rounding convention is a red herring.

Contrast that with alloy compositions, as recited in Working Examples in an alloy patent. When an aluminium alloy is said to have up to 0.05 wt% of any one impurity and max 1.15 wt% impurities, as well as 1-2 wt % Mn and 2-3 wt % Mg then the mathematical rounding convention is right in there, 100% relevant. You are instructed to keep the impurities below a prescribed top limit, and to aim your Mn and Mg contents to be within the range specified, at the specified range of accuracy.

Helen hurried to the bank. Now then readers, was she hurrying to the bank of the river to rescue a drowning child, or to the bank in the town centre, to draw some urgently-needed cash. Seriously, context is everything.

ex-examiner said...

There are many different ways of defining how rounding errors are dealt with: see

Was it clearly and unambiguously established that the rounding error method argued for was the one used in the art?

Raoul said...

The present comment was published with the previous blog on the matter, but since the discussion continues, it might worth bringing it again.

May I suggest another way of looking at the matter?

The choice of the value 0.77 by S&N was anything but innocent. Its aim was manifestly to circumvent the claimed range.

What was disclosed in the patent was not only the range 1-2.5, but as well 0-1.

What S&N did was thus to make a selection within the range 0-1.

When applying the novelty criterion of selection inventions as found in the Guidelines under G-VI. 8(ii) one can decide upon the novelty of the selection. To decide positively, three criteria ought to be satisfied:

a) the selected sub-range is narrow compared to the known range; 0.77 is certainly narrow compared to the range.

(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; this point is debatable. For the sake of argument, let’s say that it is fulfilled.

(c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention. Here the notion of purposive selection (good morning Catnic), or of a new technical teaching through the selection play a role.

The last criterion is manifestly not fulfilled, and a hypothetical patent of S&N would lack novelty with respect of the available prior art. Hence infringement could be ascertained.

This way of looking into the matter is certainly daring, but is it not worth thinking of it?

This way of looking at the matter is also not at odds with T 1186/07 as in this decision there was a lack of novelty for the value 0.89 vs. 0.885 found in the prior art, whereas the value 0.90 claimed in the AR was considered inventive as well as there was an unexpected effect and surprising advantage which was demonstrated by the proprietor.

Darren Smyth said...

Hi Raoul thanks for your comment. I am afraid that I don't think that this way of looking into the matter is worth thinking of. The two tests have nothing to do with each other. The issue of whether the infringement might be novel over the disclosure of the patent is simply irrelevant to the matter of infringement, for which the questions is whether it falls within the scope of the claims of the patent (as correctly construed). I think it is completely unhelpful to suggest that the two issues might somehow inform each other.

Best wishes


MaxDrei said...

I read Raoul and thought it a reasonable argument, then read Darren's tart reply and was surprised.

Would both of you like to comments on the "What comes before and deprives of novelty, if coming after will infringe" axiom, and the Gillette Defence.

It seems to me that one can (at least on the island) invoke novelty when contemplating what infringes. But what do you two say?

Darren Smyth said...

Dear Maxdrei

Thank you for your comment. The point that you raise is in principle correct (although there are exceptions to the post-infringement test, for example if the prior art is not enabled). But it is not relevant here. In your quoted passage, the "before" and "after" is critical; in the present case, there is only the "after" possible infringement. The alleged infringement being novel over the disclosure of the patent is not relevant to whether it infringes. There is no prior disclosure of 0.77%.

Does that clarify?

Best wishes


Chemical patent attorney said...

When I was trained, I was taught to use the wording "from x to y" when defining a range because the wording "between x and y" as literally interpreted does not include the values "x" and "y" in the range. (Just as if someone said that something were happening between London and Edinburgh, you would not expect it to be taking place in either of those two cities but somewhere in between).

Using the significant figures approach and on the basis that the limits of the range are not included within the range, I would have thought that the disputed claim wording should mean 1.5% to 19.4%.

Anonymous said...

It means that e.g. 1 is not the same as 1,0 is not the same as 1,00. Which is an issue that may come up when claims are changed,u der Art. 123(2) EPC.

Anonymous said...

If this decision is correct, will we see people drafting: “The composition amount is greater than 1%, preferably greater than 1.0%, more preferably greater than 1.00% and most preferably greater than 1.000%”?

When that becomes normal I will despair.

Try telling a person of ordinary skill in the art that 1% is different to 1.0% and see what answer you get......

THE US anon said...

As us in America like to joke, "It depends on what the meaning of 'is,' is."

Anonymous said...

Since the EPO will not grant a claim which recites "about 1%", I personally see no problem with the logic of this decision (based on the comments here, not having read the decision yet). A claim which recites 1.0% has a different meaning to one which recites 1% and everything else being equal, the boundaries of the scope of protection need to be considered accordingly.

Anonymous said...

This decision does nothing to help the fact that the EPO does not accept the unclear term "about". All it does is establish a special code whereby one has to translate what one really means into patentese to get the desired scope.

For example, let's say I'm drafting a case and I know of some prior art at 0.47% and want to claim everything above 0.5%. Instead of just doing that straightforwardly in the claim, I have to transform my number according to the special code given in this decision and claim everything above 1%. So if I want above 0.5%, I have to claim above 1% (or perhaps alternatively I could just say above 0.500%).

So all this decision does is move the goalposts, but in a hitherto unpredictable way, invalidating several thousand otherwise perfectly good patents in the process.

THE US anon said...

On the other hand, I despair when people think that a person of ordinary skill in the art is an actual person that you can have a conversation with...


THE US anon said...

Anonymous @ 16:00,

A couple of points to clarify:
- the treatment of numbers in so far as "1" has a different meaning than "1.0" is NOT a new thing.
- that difference is very straightforward
- The decision "may" move goalposts - but in the opposite direction of which you speak and saves - not destroys - existing patents.

Raoul said...

I am fully aware that my comment would not be to the liking of Darren, and that the issues should not be confused. On the other hand, apparently arbitrarily going from 1 to 0.77 should not be encouraged. The mere fact that it is possible to circumvent the patent by simply stating that the arbitrary value of 0.77 is not infringing makes me cringe. I am thinking here of Art 69 and the Protocol on interpretation. What is however disturbing is that apparently both courts referred to it, but came to diametrically opposite conclusions.

However, having had a look at the European file a totally different picture emerges.

In the patent as granted, there was no range at all. In the description the range was set between preferably 0.01-50%. Further ranges were disclosed as 0.01-25, 0,1-10, 0,1-5, 1-5, 1-25, 1-10, 1-25, 1-10, 1-5, 5-25 and 10-25.

The range 1-25% was introduced in the MR by the proprietor in reply to an opposition filed by S&N. S&N argued that claim 1 as granted was lacking novelty in view of E1 in which example 25m quoted the value of 0.088 and examples 25a-d a value 0.17%. In order to show that the range was not novel, S&N used exactly the same reasoning as I did when it came to novelty and IS.

The opposition division accepted the amendment and considered that the range 1-25% was new and inventive.

Upon appeal by S&N, the patent was revoked in decision T 449/13, the selection of 1-25% was considered as being arbitrary as no specific effect had been shown in the patent for the claimed range 1-25%.

The Board remitted in order to discuss the remaining AR. As none of those requests were allowable under Art 123(2 or 3) or Art 56, the patent was eventually revoked. Experimental data meant to show that the selected range was showing an effect was submitted by the proprietor but not admitted in the procedure by the OPD as being too late.

The proprietor has now submitted a second appeal, whereby he contests the non- admissibility of the experimental data by the OD.
It is not known when a decision will be reached.

With due respect to the English courts, we might be all flogging a dead horse.

It shows once more that the length of procedures in national proceedings and before the EPO can bring us in such unpleasant situations.

Although a decision in one legal system is not binding for another one, it is somehow disturbing when one carefully ignores the other as done in T 449/13, whereby at least the Court of Appeal had looked into European case law.

What will happen once we have diverging case law between the UPC and the Boards of Appeal? Examining and opposition divisions are bound by case law of the Boards of Appeal, not by that of any other court. No mechanism has been foreseen in case of divergent case law between the two courts.

Anonymous said...

Raoul, MaxDrei

I'm afraid I'm with Darren on this one, though I wouldn't have used quite his wording.

I don't think that 0.77 infringes a claim of 1-25, though clearly I disagree with the court on this one. Looked at from a novelty point of view, I don't think an earlier disclosure of 0.77 will invalidate a later claim to 1-25. That's what is meant by "What comes before and deprives of novelty, if coming after will infringe".

Raoul sems to have explained in detail why an earlier disclosure of 0-1 will not anticipate a claim to 0.77. This is the other way round, so is not a helpful test.

Anonymous said...

What an interesting contribution from Raoul yesterday, on the content of the EPO file. I specially liked the bit about the belatedly filed experimental evidence, that 1-25% solves an objective problem that is not solved by the range 0.01-50%. Surprise surprise. Who in the world could have guessed that?

The OD declined to admit the new evidence, giving as a reason that it was being proffered too late. I doubt that was their only reason.

How many cases are there, where the A publication declares in effect "They all work" but then, under attack from an opponent, the owner then asserts that only a selected one "works" (which is to say, in effect, that, after all, all of the remainder of the range, hitherto trumpeted as a solution, is suddenly the problem, and not any longer the solution).

In this context, one recalls the Conor case on the TAXOL-coated stent. At first any angiotensor(?) "worked". But then it turned out that only one (out of hundreds) worked. On the obviousness issue, that one went all the way to the House of Lords.

Darren Smyth said...

Thank you all for further and interesting comments. I feel moved to respond to a few. I am posting this on both threads relating to this Court of Appeal decision as there is some overlap with the comments.

To the US Anon:

I agree that “the treatment of numbers in so far as "1" has a different meaning than "1.0" is NOT a new thing”. However, as this case shows, it is not the case “that difference is very straightforward” – as explained in the post there is no settled caselaw (and in fact no case that I am aware of) that grapples with this question of whether the number should be interpreted according to number of significant figures or number of decimal places, which gives a different answer (in this case with infringement being found in the latter case but not the former).

Moreover, it is not the only consideration. There have been cases where courts have additionally or instead looked at the accuracy to which the measurement can be made, and those commenters who have referred to this aspect also raise an important and valid point.

I don’t see how you think that the decision saves rather than destroys existing patents – by expanding the range there runs the risk of it embracing prior art and therefore rendering them invalid. (To the Anon who says in this regard that "claimed subject matter" and the "scope of protection" are not one and the same – I do not believe that you are correct under UK jurisprudence. Once the claim has been construed, that construction applies to validity and infringement. So under the Court of Appeal construction, disclosure of 0.9% would be novelty destroying).

To Raoul in respect of your second comment:

You say that “The mere fact that it is possible to circumvent the patent by simply stating that the arbitrary value of 0.77 is not infringing makes me cringe.” The value of 0.77 is not arbitrary – it was selected to be outside the scope of the claim. You refer to “Art 69 and the Protocol on interpretation” – what about the part of that which refers to “reasonable degree of legal certainty for third parties”? Do you not think that third parties are entitled to work outside the terms of the claim so that they don’t infringe? I also don’t think it is fair to say that the courts came to diametrically opposite conclusions – they agreed on many things – that the claim did not mean precisely “1”, that rounding should be taken into consideration. They disagreed on the relatively minor issue of what rounding convention should be employed; it just so happens that this made the difference between infringement and non-infringement.

The prosecution history is interesting, but I don’t think it takes us much beyond what we conclude by looking at the claims – the 1-25% range has to be given a limiting effect. The question is only how much. Lord Justice Floyd has just reiterated that prosecution history should not be considered when construing claims (see

Raoul said...

Dear Darren,

I agree with you that the value of 0,77% was not chosen arbitrarily but exactly to go outside the claimed range.
I just wanted to bring in some different view, and I am still of the opinion if there exists a range of 1-25, then choosing a value of 0,77 will not be new, especially since there is no specific effect obtained with this value.
I also agree with you that file history should not play a role, but in view of the discussion, I had to have a look at the file.
We might be flogging a dead horse.
Overall, I think the decision is strange as clearly 0,77 cannot be said equal to 1, whatever way you round the value up or not.
This decision should actually stay as a one off.
But on the other hand I have some sympathy with the decision. It seems to me more to have to do with justice than with a strict application of the law. I get the feeling that at the end, S&N should not be left off the hook just like this.

Darren Smyth said...

Dear Raoul

Thank you for your further comment.

Clearly, this is a case that could have gone either way, as evidenced by the fact that it went both ways, one at first instance and one at appeal. Some may consider, as you do, that “S&N should not be left off the hook just like this”; others may equally feel that S&N are entitled to practise outside the claimed invention scope. In support of the second view is the idea that the claims are there to inform third parties what they may or may not do, and it is perfectly legitimate to design around the claimed invention.

But just because both outcomes have merit does not mean that any route to get there is permissible, and I still have problems with your use of the novelty concept “I am still of the opinion if there exists a range of 1-25, then choosing a value of 0,77 will not be new”. I want to say again that novelty has nothing to do with infringement.

Maybe a different chemical example will help illustrate. If I have a patent to compound X, then someone else may perfectly legitimately obtain subsequent patents, provided in each case the claimed subject matter is novel and inventive, as it can be in appropriate circumstances, to:

-A composition containing compound X (eg a sustained release composition)
-A combination containing compound X and a further new compound
-Compound X for use in treating a new disease

All of these might be “new”, but they all infringe the original patent. Being new does not prevent infringement; likewise not being new does not imply infringement.

There is the further conceptual issue that infringement is defined with reference to the claims (subject to Art 69 etc), whereas novelty is defined in relation to the whole disclosure. That is another reason why the two cannot be conflated.

Concerning the description of the patent in this case, I have had a further thought that I think merits a further post on the topic. So please watch out for further developments.

Best wishes


THE US anon said...

Quick comment on the "Clearly, this is a case that could have gone either way, as evidenced by the fact that it went both ways, one at first instance and one at appeal":

Please stop the fallacious spin. Having a decision reversed on appeal does NOT mean that it COULD go either way. There is only one "way" in the end. If you open up to "could" all wrong decisions (as later corrected), you enter into a meaningless state that all directions could be taken at any time (since wrong directions "count" under your logic).

Darren Smyth said...

Dear US Anon

I think the fallacies are coming from you. Your reasoning seems to require the following propositions to be true:

1) Any given case can only go one way and has only one correct outcome
2) If a first instance decision is reversed on appeal then the first instance court is wrong and the appellate court is right

In fact, neither is true. Plenty of cases are finely balanced and multiple outcomes are possible; in some cases more than one outcome could be correct. Furthermore, the right outcome is not always reached - I have won cases that I should have lost. And the appellate court is not always correct.

In any case, my comment was made specifically with reference to this case, not as a general proposition, and in context the comment is quite appropriate. I do wonder whether you have yet engaged with the issues of this particular litigation.

Best wishes


Raoul said...

Dear Darren,

I fully support your view with respect to the US Anon. There are lots of situations in which a decision on patentability or infringement can go one way in first instance and the opposite way in second instance, and none of those decisions are wrong. It depends on lots of factors, like the way the hearing or OP went, the ability of the representatives to shed a slightly different light on the matter etc. May be in the US life is black and white, but life elsewhere has lots of shades of grey (nothing to do with 50 famous shades of grey....).

I agree that the issue of patentability should not come into consideration when it comes to infringement. The example you gave is very clear and suffers no discussion. As compound X is protected by a patent, any use of compound X is infringing.

I just wanted to throw in some arguments into the discussion to foster it, in an attempt to understand how the Court of Appeal could have come to this decision.

I fully understand your position, and I am looking forward to further developments.

I maintain that the decision should remain a one off, as otherwise certainty for third parties will have gone. And this could be detrimental to all of us.

Darren Smyth said...

Dear Raoul
Thank you for your kind comment. A key purpose of this blog is to foster debate by which our understanding is shared and enriched by the consideration of comments from our readers, and you have contributed greatly to that purpose here. I appreciate your contributions.
I wonder whether this case may go to the Supreme Court, in which case we may not yet have heard the last. In one sense I agree that it may be a one-off; however the issue of the interpretation of numerical ranges is potentially wide-reaching, although it takes a relatively unusual set of factual circumstances to highlight the problems. It would be good if we could get a decision which gives some clarity and third party certainty for the future.
Best wishes

THE US anon said...

Let's foster debate:

If one person writes: the range from 1.0 to 25.0, and
another person writes: the range from 1 to 25,

Have they written the same thing? Is the first person's ".0" meaningless? If so, should those meaningless things be stricken during prosecution?

Methinks you mistake agreement and pleasantry for debate, good sir.

Darren Smyth said...

To US Anon

No I don't mistake agreement and pleasantry for debate. I just don't see that debate has to be aggressive and unpleasant.

I have made my position clear repeatedly - my view is that the significant figures interpretation is (at least in the case under discussion) the best view. That does not mean that I think those who consider or argue otherwise are shambling morons.

Best wishes


THE US anon said...

Great, let's foster debate, please:

If one person writes: the range from 1.0 to 25.0, and
another person writes: the range from 1 to 25,

Have they written the same thing?
Is the first person's (conscience choice) of ".0" meaningless? If so, should those meaningless things be stricken during prosecution?

Not withstanding any clarity that you have made before, please indulge me with answers to these questions.

Thank you.

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