Inventiveness and incontinence: a barrage of cross-purpose expert evidence

The substance of Environmental Health Systems Limited ("EDS") v Synergy Health plc and Another ("Synergy") & Gravits (International) Limited & Others ("Gravitas") [2014] EWHC 1306 (IPEC) concerns obviousness of EDS's European Patent No 2 393 989 for a method of manufacturing barrage units. However, the case highlights a tension that can arise between the English approach to the person skilled in the art and the practical effect of the field of expertise chosen by the parties for their experts.

Not everyone is so concerned
about incontinence: there are those
who prefer to go with the flow ...
The method of the patent was the manufacture of water absorbent pads and their arrangement within a porous bag or sack, forming a barrage unit. It is common ground that, since about 1994 Synergy, has been making absorbent pads according to the method in the patent (by agreement with EDS until June 2011). Until 2007 these had been used solely for healthcare purposes. Gravitas sells sandbag substitutes for use in flood defences and for non-flood purposes. It was also common ground at trial that these are made using absorbent pads supplied to Gravitas by Synergy and that the absorbent pads are made according to the method described in the patent. Patent infringement was therefore alleged.  However, because of other issues raised in defence – continuing acts done before the patent's priority date (section 64 Patents Act 1977) and non-entitlement to a patent (section 72 (1)(b)) – it was decided that the whole matter could potentially be disposed of by determining the patent's alleged obviousness as a preliminary issue: whether there is an inventive step in the patented method of manufacture of barrage units from absorbent pads (which were known in the prior art for healthcare purposes, particularly for use as incontinence pads).

In the event, Judge Hacon found that by the start of 2009 the skilled person would consider absorbent pads to be at least worth trying as fillers for a barrage unit, with a reasonable expectation of success given the disclosure of sandless sandbags. Hence, there was no inventive step in the manufacture of barrage units as claimed in the patent.

But will the expert's evidence hold water?
So what's the really juicy ["Is this the right word?" asks Merpel] bit of this case? The judge was hampered in assessing the obviousness issue by the expert choices of the parties. Schlumberger Holdings Limited v Electromagnetic Geoservices AS [2010] EWCA Civ 819 is authority for the proposition that the technical backgrounds of the skilled person addressing construction and/or insufficiency on one hand, and inventive step on the other, may not necessarily be the same. Although Schlumberger does not go so far as to say that inventive step must always be considered through the eyes of a skilled person drawn from the relevant prior art, for which there is authority in the European Patent Office's Technical Board of Appeal (TBA) cases (T422/93 JALON/Luminescent security fibres [1999] EPOR 486). Hence, the judge says, there is nothing wrong with having the skilled person who is assessing construction of the claims or insufficiency also assess inventive step; if a skilled person drawn from any technical field finds the claimed invention obvious having read an item of prior art, there is no inventive step. However, absent the prescriptive approach to addressing prior art that the TBA employs, this means that the scope for the identity of the skilled person allowed by UK law can result in experts opining on completely different areas of expertise. This is what happens in this case. In fact, it happens twice:

Look, no pads!
Gravitas pleaded that the skilled person was a manufacturer of absorbent products without saying whether he came from the personal hygiene or flood defence industry, Synergy said nothing and EDS pleaded that the skilled person was interested in environmental protection with a focus on barrage units. However, upon exchanging expert reports, it transpired that EDS had decided to switch to an expert on absorbent pads in the hygiene business and Gravitas settled on an expert on flooding defences. Again, both experts were at cross-purposes.

Given that this problem can arise under the law, Judge Hacon emphasised the practice point that could have avoided the dilemma at trial:
"by the time of the CMC [case management conference] the parties' contentions in this regard (and all others) must be clear so that the court is in a position to rule on whether expert evidence may be given and to identify the technical field or fields to which that evidence will relate. The parties can then select their expert witnesses from that field or those fields. From the CMC onwards these matters should be fixed for the purposes of the trial."
In other words the issue could have been headed off at the CMC. In fact, a year on from the implementation of the Jackson reforms, the case gives cause for reflection that, further to the amendments made to CPR 35.4 in April 2013, parties are not merely required to identify the field with which the expert evidence is concerned at the CMC now, but also the issues that evidence will address. The more general practice point is therefore that consideration of expert evidence cannot begin too early in a case.

Incontinence here
Incompetence here
Intemperance here
Pee Power here

Huge thanks are due to Paul England (Taylor Wessing LLP) for leaping into instant action in order to draft this word-perfect Katnote in less time than it takes to, well never mind ...
Inventiveness and incontinence: a barrage of cross-purpose expert evidence Inventiveness and incontinence: a barrage of cross-purpose expert evidence Reviewed by Jeremy on Thursday, May 01, 2014 Rating: 5


  1. Btw, until Commission documents are lawfully published, they remain subject to copyright. After that they are covered by their open access regime with limitations. It has not been unheard of them to follow up when large quotes from leaked documents. Just saying.

  2. And as this is not yet a Commission document but a work in progress -under Belgian law- the place where the work is presumably being created, the copyright still rests with the individual authors. Belgian law can be quite tough.

  3. Couldn't resist getting in early, even though I have not yet had time to read the patent or the decision.

    Jeremy labels the EPO approach to obviousness as "prescriptive". Is that neutral or a put-down?

    A prescriptive approach does have at least one merit, that one knows how to apply it.

    Thus, at the EPO, one starts from the specification of the patent. There we will find Applicant telling us what is the technical field and what, within it, was his problem, seen subjectively, and solved by the claimed subject matter.

    The EPO gives Applicant full faith and credit for that choice.

    By that I mean that the EPO's "starting point" has to be "realistic" relative to that field and that problem.

    Of course, once you have that "starting point" the problem might change, in consequence. That is because the EPO does obviousness objectively, relative to the hypothetical "person skilled in the art" with whom no real scientist or engineer can share the same knowledge base.

    So how about looking at the spec to establish the Terms and Conditions on which the patent owner asks for the obviousness of the subject matter claimed to be assessed. That might streamline the argument in court.

    What's not to like about that?

    As soon as I can, I will read the patent and the decision.

  4. Me again. The technical field is Barrage Units. So, I hie me to the Oxford dictionary:

    to discover that a Barrage can be an:

    "artificial barrier across a river or estuary to prevent flooding"

    which set me wondering how wide one can stretch the notion of a Barrage and in particular (embarrassment alert) whether a sanitary or incontinence unit is properly to be regarded as just one form of "barrage unit".

    I don't see in the patent or the Decision any attempt whatsoever to define, in context, the ambit of "barrage". Why did they confine it to Dutch dyke type situations, "land under" and so on, as in Holland? Where is the justification for that?



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