tag:blogger.com,1999:blog-5574479.post9094443634214569898..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Does Mr Justice Birss' decision in Positec finally signal the end of disclosure in obviousness cases in the UK Patents Court? Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-42059770453922072582016-05-19T09:16:29.074+01:002016-05-19T09:16:29.074+01:00As we all know, expert evidence has to be "ke...As we all know, expert evidence has to be "kept in its place" and so too, according to Mr Justice Birss, does discovery. I too agree with Robin Jacob's position as expressed in Nichia. But readers, you should keep in mind that Mr Justice Jacob (as he then was) was fresh from adjudicating in the Leonard Studio case, where discovery was decisive to the outcome.<br /><br />In Leonard, the patents were on a camera dolly designed on the West Coast of the USA, not far from Hollywood. On location in England a camera grip (McAnulty) was using a dolly that exhibited several of the nice design features patented by Leonard.<br /><br />The defence was one of prior use. The managing director (Grottesi) of the manufacturer swore blind that the engineering drawings had been under his personal control at all material times. He reminded the court that they were dated significantly earlier than the US priority date. In short, the rogues in California had copied him!<br /><br />On the stand, thanks to discovery, he was confronted with the drawings, with the original dates (which as it happens were later than the exhibition of the Californian dolly at a big Trade Show) painted over with TIPPEX. His response? One thing is sure, it wasn't me that did it. This is a shoddy job whereas I am an absolute professional in everything I do.<br /><br />The thing is, can you be sure that, even today, nobody (anywhere in the world) ever changes the date on a document?<br /><br />I think that as soon as English law fact-finding is done away with, a lot more date-changing will go on. I think it is only discovery that keeps people honest (see for example the news this morning about a FIFA official in court in the USA). Let's not throw the baby out with the bathwater.<br /><br />Nevertheless, I agree with Robin Jacob, Colin Birss and the current Court Rules, that (despite cases like Leonard) discovery should be the exception not the rule.<br /><br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49324647290130921082016-05-18T11:33:16.717+01:002016-05-18T11:33:16.717+01:00I see no help in those suggestions MaxDrei, other ...I see no help in those suggestions MaxDrei, other than a viewpoint (your own) that appears to put a rather peculiar gloss on the compared and contrasted UK/German modes.<br /><br />Further, from your own sharing on this side of the pond, your "protest" in your opening paragraph falls rather far from the impression that you have left on the US blogs.<br /><br />I do hope that any comments that you share after reading the decision are a bit more clear and bit less tainted.<br /><br />Thanks.THE US anonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-11727195750913785582016-05-18T09:36:15.950+01:002016-05-18T09:36:15.950+01:00A "must read" decision for me. For years...A "must read" decision for me. For years I have been reminding colleagues that, also for obviousness, the notional skilled addressee has characteristics not shared by any real person. Why is it that, for novelty, colleagues accept that proposition without a murmur yet, when it comes to obviousness, they baulk at it?<br /><br />Can readers supply answers? To get the ball rolling, I will offer two suggestions.<br /><br />In England, litigation runs on the evidence given by real people, the witness evidence. We are justifiably proud of the excellent fact-finding processes that are the bedrock of English patent disputes. Squander discovery and we are no better than the civil law jurisdictions. So, like the hand of our nurse, we must all cling to it desperately, for fear of something worse.<br /><br />In Germany, what is obvious is what I (Humpty Dumpty ie the judge) say is obvious, neither more nor less. In tricky cases, I am helped by a court-appointed expert. He is a real person. His learned expert opinion is what informs me. Together, we work it out. Neither of us has much feeling (or time) for the characteristics of that legal fiction, the notional fantasy person that has an ordinary level of skill in the art, that knows all the disclosures but lacks any inventive faculty.<br /><br />Different jurisdictions like to disagree on whether obviousness is a question of law or of fact. I think they disagree because they like disagreeing with each other. Look carefully at what they say and when it comes down to it, they are all saying the same thing. I look forward to the day when they admit it to each other.<br /><br />I'm looking forward now, to reading the decision. MaxDreinoreply@blogger.com