Hot roast chickens and Aspergic skilled men

A judgment has just been released to the public via the BAILII website from Mr Peter Prescott QC, sitting as Deputy Judge in the Patents Court. The case, Alan Nuttall Ltd v Fri-Jado UK Ltd & Anor [2008] EWHC 1311 (Pat), related to cabinets for keeping food (such as roast chickens) hot when on display in a shop. The proprietor of a patent (GB2348697) had alleged that cabinets made and sold by Fri-Jado Limited (pictured right) infringed their patent. Fri-Jado disagreed, and attempted to argue that they either did not infringe, or that the patent was invalid for lack of inventive step.

The case was only unusual (as far as UK courts are concerned at least) for the fact that the patent was found to be both valid and infringed. However, as part of the usual judicial process of contemplation, a couple of points made by Mr Prescott caught the IPKat's attention. The first was that a party which is attempting to argue for a lack of inventive step is not really helping their case by throwing lots of different documents at the problem:
"The Defendants for their part cited a considerable number of items of prior art in support of their case on obviousness. That is seldom sound policy because, if the alleged invention was indeed obvious in the light of one particular item of prior art, it does not make the case any better that there were other items that were not quite as good. On the contrary, to cite numerous pieces of prior art in an obviousness case tends, if anything, to suggest that the invention was not so obvious after all. At the trial the Defendants dropped most of those and wanted to rely on four, including a prior user of their own. In the end they decided to rely on just the two best citations, plus common general knowledge" (paragraph 8).
This appears to the IPKat to be fairly sensible. The more documents that are needed to establish a lack of inventive step, the more likely it is that the invention is indeed not obvious. This is also compatible with the EPO's view of inventive step, as stated in the EPO Guidelines for Examination (C-IV 11.8): "It is permissible to combine the disclosure of one or more documents, parts of documents or other pieces of prior art (e.g. a public prior use) with the closest prior art. However, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be the sign of the presence of an inventive step". It is not, however, a point that the defendant seemed readily to grasp.

The other point related to what the notional 'skilled person' would be, when considering the Windsurfing/Pozzoli test:
"In my judgment the person skilled in the art for the purposes of this case is an engineer, perhaps employed by the design department of a company that manufactures display cabinets for hot food, alternatively a consultant who might be engaged by such a company. He has the technical knowledge to understand the contents of the patent in suit at both a practical and a principled level and the ability to construct such a device. Being an engineer, he is interested in mechanical contraptions and has been since he was a boy (in this industry it is probably a he, but that is neither here nor there). Like the rest of us he goes to supermarkets and he will have noticed, and been interested in, the commonplace chilled display cabinet I have mentioned in paragraph 12 above. He is not a person capable of real lateral thinking. He never misses the obvious and he is taken to read the cited prior art with care and attention (see Windsurfing International Inc v. Tabur Marine (G.B.) Ltd [1985] RPC 59 at 74. That includes the cited prior art in this case that has to do with refrigerated display cabinets" (paragraph 31).
To the IPKat, this definition of the skilled person seemed to sound a lot like someone with Asperger syndrome, a condition very well illustrated by Mark Haddon (in a book this Kat would unhesitatingly recommend to all). Someone obsessed with all kinds of display cabinets, particularly those involving heating and cooling of contents, but unable to go beyond the disclosures evident to him to arrive at something new, sounds very much like poor young Christopher Boone being unable to figure out who killed his dog Wellington.

Merpel, contrary as always, would just like to point out that Temple Grandin is actually quite a prolific inventor, and is not even a man.
Hot roast chickens and Aspergic skilled men Hot roast chickens and Aspergic skilled men Reviewed by David Pearce on Friday, June 13, 2008 Rating: 5

1 comment:

  1. I'm not sure that the C-IV 11.8 is particularly relevant here.

    Did the Defendants really try to combine multiple documents? I interpreted Mr Prescott's point as being more along the lines that it's not a good idea to say that the invention is obvious over say D1 (your main argument) and then say its also obvious over say D2 or D3 or D4.

    Eventually you get to the point where you are providing so much prior art, none of which are a novelty depriving, that it suggests that "the invention is not so obvious after all" (numerous others have worked around the subject matter without any of them working the invention).


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