Obviousness over the CGK - dead or alive?

What better way to spend a Wednesday December evening than tucked up at the British Museum for Hogarth Chambers Festive Patent Seminar.  On the menu was "Obviousness over the common general knowledge", followed by mulled wine and mince pies, all served up by chair Michael Hicks, the man behind the successful obviousness over CGK challenge way back when in Pozzoli SpA v BDMO SA & Others [2006] EWHC 1398 (Pat) (first instance) and [2007] EWCA Civ 588 (Court of Appeal). 

Johnny Moss opened the seminar, and explained that there are two types of obviousness over the CGK attack.  (1) where the prior art is said to constitute the CGK; and (2) where obviousness is alleged over the CGK alone i.e. a 'collocation of known aspects of the CGK'. It is this second category which causes the most issues.  A collocation attack is often tried, but is rarely successful.  Why is this?  And what can a litigant do to increase their chances of a successful attack?  Analysing the five principles put forward by Floyd J in Ratiopharm v Napp Pharmaceutical Holdings Ltd [2008] EWHC 3070 (Pat) (see paras 154-159), Johnny observed that the days of simply pleading "obviousness over the CGK" are long gone - you must now assert what it is that you specifically allege is CGK. 

The British Museum - filled with IP lawyers and mince pies

The Courts have repeatedly stated that obviousness over the CGK arguments must be "treated with caution" - this phrase is used in many cases.  A higher level of scrutiny is justified because an obviousness over CGK argument: (a) enables the litigant to avoid inconvenient details (e.g. teaching in the other direction, misleading context) that might be found in a piece of prior art; and (b) the combination of features relied upon is always and necessarily one created with hindsight knowledge of the invention.   In the recent case of Accord Healthcare v Medac Gesellschaft [2016] EWHC 24 (Pat), Birss J noted that if an invention is not obvious over concrete prior art, the Court is entitled to be sceptical that it is nevertheless obvious over the CGK alone (see paras 119-124).

Jamie Muir Wood reviewed the recent decision in Unwired Planet v Huawei [2016] EWHC 576 (Pat) (the third technical trial, which involved a standard essential patent), where an obviousness over CGK argument failed.  Here, the Court found that the defendant had not properly pleaded its case on CGK  - and when the claimant requested further information, the defendant responded to the effect that its position would be elaborated on in expert reports. The defendant's case on CGK was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and "it presented points of common general knowledge at a level of generality which itself was crafted with hindsight."  Jamie noted that the requirement to specify your case on obviousness over the CGK upfront puts litigants in a difficult position.

The seminar rounded off with Richard Davis covering the recent Meter-Tech LLC v British Gas Trading Limited [2016] EWHC 2278 (Pat) decision.  British Gas pleaded that a series of propositions were CGK.  Many of these were accepted by Meter-Tech (the exclusive licensee), but the Amended Grounds of Invalidity had not explained how the skilled person would get from the CGK to the claim (i.e. no path to the invention had been identified).  Mr Daniel Alexander QC (sitting as a Deputy High Court Judge) explained that a statement of case should set out not only "what the common general knowledge is alleged to be but also how that differs from the invention of the patent and why such is said to render the claim in question obvious. That requires a pleading not of just the starting point but of the allegedly obvious route to the claimed invention so that the notional thinking of the skilled person can be seen and evaluated."  

Going forwards, although it is clear that the Courts recognise obviousness over the CGK as a valid basis upon which to revoke a patent, how does one improve their chances of successfully challenging a patent on the basis of obviousness over the CGK alone? Richard noted that it has become increasingly difficult to plead a broad principle as CGK.  It would seem better to plead the CGK as a series of tenets, and frame the analysis into the Pozzoli questions for assessing obviousness (i.e. the reformulated Windsurfer questions).  Setting out your position on obviousness over the CGK in the pleadings imposes a heavy burden on the party seeking revocation.  This is particularly so in IPEC proceedings, where expert witnesses may not even have been appointed.  The reluctance to set out your CGK case upfront is understandable - prior to the exchange of expert reports, the patentee will not usually have set out its case on claim construction, and it is therefore exceedingly difficult to know the target to meet.  A claim of obviousness on the basis of CGK alone will not be easy, but the Pozzoli case shows that it is possible.