Tuesday Tiddlywinks

Another dreary day in Londontown, but the IPKat Team is here to wish you a very happy day filled with intellectual property goodness.

US Supreme Court to hear Stanford v Roche patent fight: Yesterday the US Supreme Court justices agreed to hear Stanford University's claim against Roche Holding AG in respect of patents for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma. Scientists at Stanford created the invention while under a contract to promise to assign the inventions to the university. However, one of the inventors, Professor Mark Holodniy, had also, prior to the invention, actually assigned his rights in future inventions to Cetus (now Roche). Stanford filed a patent application and demanded a royalty from Roche for their use of the patent. The case reached the US Court of Appeals for the Federal Circuit (the appeals court where all the appealed patent cases go to from the federal district courts) who held that Roche was not liable for patent infringement because they held ownership rights derived from Holodniy's assignment. In their appeal to the Supreme Court, Stanford are arguing that because they were beneficiaries of federal funding for the research, under Sections 200-212 of the Bahy-Dole Act their rights trump that of Roche. The university's question to the Supreme Court reads as follows:

Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party.

The US Department of Justice (DoJ) filed an amicus curiae brief in support of Stanford's writ and argue that the Bahy-Dole Act does indeed trump the general proposition that ownership of a patent vests first with the inventor. This case will be a somewhat obscure but important case for university and federally funded research institutions. The lesson being, make sure your researchers and scientists have entered into strict assignment agreements with your institution. Thanks to Dr. Ward for alerting the AmeriKat to this story.

UK MP to "bang heads" of ISPs and music industry: The UK Minister for Culture, Communications and Creative Industries, Ed Vaizey, (picture, left)has called for a joint meetin between music industry and ISP representatives to progress the implementation of the Digital Economy Act (DEA). Readers will note that the crucial piece to this legislative nightmare is Ofcom's final "Initial Obligations Code", which is still missing. Ofcom received a further three month extension for the Code in September to allow for consultation about its costs provisions with the EU. Judicial review of the DEA applied for by BT and TalkTalk is expected any time. For more information see this report from MusicWeek. This IPKat has searched online to find any further information about the agenda for this meeting without joy. If anyone has any info on this, please let the IPKat know.

Apple sues Motorola: This Kat has just given up trying to follow who is suing who in the mobile patent wars (see previous posts here). As of Friday, Apple has again gotten into the mix by filing two complaints (here and here) in the the US District Court for the Western District of Wisconsin against Motorola for infringement of a number of patents of its android handsets. The patents, for the most part, are for touchscreen technology. Motorola, maybe anticipating the descending cloud of Apple, filed four separate complaints against Apple as well as applying to the court to invalidate over 20 iPhone patents for want of novelty. It hasn't been a good month for Motorola who was on the receiving end of another lawsuit from Microsoft earlier last month. For more information see this report in the Wall Street Journal and CNet.

Court of Appeal Judgment Alert! Mr Justice Kitchen, sitting in the Court of Appeal with Lord Justice Jacob and Longmore, dismissed the appeal in the case of Softlanding Systems Inc v KDP Software Limited and Unicom Systems Inc ([2010] EWCA Civ 1172) last week. The case was on appeal from Mr Justice Wilcox of the Technology and Construction Court for England and Wales (see previous 1709 blog post by IPKat Jeremy). This Kat has not had an opportunity to digest the judgment, but there will be a full IPKat report on the judgment soon!

Schlumberger v EMGS: A Non-Obvious Marriage of Skills

Who (or what) is the "person skilled in the art"? This was the main question posed in the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, the judgment of which was issued yesterday by the Court of Appeal.  This resulted from an appeal from the judgment of Mr Justice Mann at the High Court (commented on at the time by the IPKat here), who had found EMGS's patents, relating to geological surveying, to be invalid for being obvious.

While Article 56 EPC asks whether a claimed invention would be obvious to the person skilled in the art, Article 83 asks the different question of whether the patent application discloses the invention in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art.  In many, if not most, cases the person would be one and the same, not least because the person who would not find the claimed invention obvious must be sufficiently taught by the patent specification how to implement the invention.

There are some cases where an invention comes from combining knowledge from more than one field of technology.  Once this knowledge is combined, how to carry out the invention becomes straightforward, and the person skilled in the art according to Article 83 becomes a team of people with knowledge from each field.  If the same team of people was used to determine the question in Article 56, however, the effect would be to make the invention immediately obvious.  This is clearly a problem for some inventions that would otherwise be patentable.

In this case, the invention related to a method of finding out whether an underwater geological formation contained oil or water.  Seismic surveying could be used to find promising areas to look into further, but could not go as far as telling what a formation contained.  This was a problem for oil exploration companies, who would generally have to spend about $25M each time in order to drill a test well to find out.  With a hit rate of about 1 in 10, striking water instead of oil 9 times out of 10 made doing this a quite expensive way of finding oil.  This was effectively the situation prior to the application date of the patent in question. 

What the patent, EP1256019, taught was that a technique known as controlled source electromagnetics (CSEM) could be used in a very specific way to tell the difference between oil and water in a geological formation.  Before the patent application, nobody had thought to marry the known techniques of deep water surveying for oil with CSEM in such a way, although both were well known separately.  What the patent proprietor was arguing for was that the invention was a "non-obvious marriage of skills".  In other words, the invention resulted from the recognition that CSEM could be used in a particular way to tell the difference between oil and water in formations that had already been identified.

Lord Justice Jacob, taking the lead role in the judgment, considered that it was clear that the person skilled in the art for obviousness was not necessarily the same person skilled in the art for performing the invention once it was made.  In a key part of the judgment's reasoning (at least in the IPKat's opinion), Jacob LJ stated:

"I think the flaw in [assuming that the skilled person is the same in each case] is to assume that “the art” is necessarily the same both before and after the invention is made.   The assumption may be correct in most cases, but some inventions are themselves art changing.  If a patentee says “marry the skills of two different arts to solve a problem,” marrying may be obvious or it may not.  If it is not, and doing so results in a real technical advance then the patentee deserves and ought to have, a patent.  His vision is out of the ordinary. 

This is not because a different construction is being given to the phrase “person skilled in the art” in the different Articles.  It is because the phrase is being applied to different situations.  Where the issue is claim construction or sufficiency one is considering a post-patent situation where the person skilled in the art has the patent in hand to tell him how to perform the invention and what the monopoly claimed is.   But ex-hypothesi the person skilled in the art does not have the patent when considering obviousness and “the art” may be different if the invention of the patent itself is art changing.

In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?”  That leads one in turn to consider the art in which the problem in fact lay.  It is the notional team in that art which is the relevant team making up the person skilled in the art.   If it would be obvious to that team to bring in different expertise, then the invention will nonetheless be obvious.  Likewise if the possessor of the “extra expertise” would himself know of the other team’s problem.   But if it would not be obvious to either of the notional persons or teams alone and not obvious to either sort of team to bring in the other, then the invention cannot fairly be said to be obvious.    As it was put in argument before us the possessors of the different skills need to be in the same room and the team with the problem must have some reason for telling the team who could solve it what the problem is." (paragraphs 63-65, emphasis added).

Jacob LJ then went on to consider what the correct approach would be in this case:

"It follows that the correct approach in this case is to start with the real problem faced by exploration geophysicists.  Did they appreciate they had a solvable problem?   How could they determine whether a thin layer of porous rock identified by seismics as potentially hydrocarbon bearing in fact does so or is just a false positive bearing only brine or water?   One then asks whether the notional exploration geophysicist who read the cited prior art would see that the answer was to use CSEM, or if not that, at least that CSEM had a sufficient prospect of being useful that it was worth asking a CSEM expert.  

The problem must also be approached the other way round, from the point of view of the CSEM expert.  Would he or she know of the exploration geophysicists’ problem and, if so, would he or she appreciate that CSEM had a real prospect of being useful to solve the problem?  

In short: was the marriage obvious to either notional partner?" (paragraphs 71-73).

By this point, it was quite clear what the end result would be, which was that the invention was not obvious because the marriage of CSEM with known geophysics in identifying hydrocarbon layers was not obvious to either notional partner before the priority date of the patent.  The appeal was allowed, resulting in the judgment of Mann J on finding the patent to be invalid being overturned.

In support of the reasoning, various other cases were mentioned where similar arguments would apply, such as Mandy Haberman's 'Anywayup Cup', which married the known features of a slit valve with a trainer cup, and James Dyson's cyclone vacuum cleaners, which married domestic vacuum cleaners with industrial scale cyclone technology.  Jacob LJ also noted with approval some of the leading cases from the EPO on where the problem-solution approach could be used in such situations.  All this led the IPKat to think, perhaps rather egotistically, that his (and some of his readers') words on how the Court of Appeal might have got it wrong in Actavis v Novartis could have had some effect.  Regardless of whether he has had an influence, however, the IPKat is very pleased to see that the EPO problem-solution approach is increasingly being married with the UK-style Windsurfing/Pozzolli approach to produce quite a pleasingly robust test for inventive step that would not necessarily have been obvious to persons skilled in either approaches before. 

Confusion about generally elliptical cone shapes

The IPKat thought he knew all there was worth knowing about what would be classified as being of a "generally elliptical cone shape", when he read the judgment of Mr Justice Patten in Ancon Ltd v ACS Stainless Steel Fixings Ltd back in October 2008 (IPKat commentary here). How wrong he was. After Patten J decided that Ancon's patent, although valid, was not infringed because ACS's product did not include a head having a generally elliptical cone shape, Ancon decided to appeal. They now have the result they originally wanted, thanks to a judgment delivered by Lord Justice Jacob yesterday.

The judgment, although unusual, could have been very unusual indeed had the other judge involved, Lord Justice Waller, not agreed with Jacob LJ, because the usual third member of the Court of Appeal was not present due to illness. The parties were willing to accept the risks of having a hung decision, which appears to have paid off for Ancon at least.

What puzzles and troubles the IPKat, however, is the highly unusual, not to say bizarre, way in which Jacob LJ decided to interpret the wording of claim 1 of the patent in question, which reads:

1. A channel assembly (21) adapted to be attached to a building structure, said channel comprising a spine (29), two side walls (28) and lips (27) defining a slot (25) in the channel and adapted to restrain a fixing in the channel, said spine (29) being provided with anchors (31) for casting into concrete, said side walls (28) being inclined inwardly towards the spine (29) and further including a fixing (30) having a head (33) with inclined sides characterised in that the head (33) has a generally elliptical cone shape. [IPKat emphasis applied]

One of the embodiments in the patent (see illustration, above right) showed what this would mean in practice. The head, shaped to fit a matching channel, was of an elliptical shape to allow it to lock into the channel when turned, and was cone-shaped to allow it to more closely fit the channel. This combination had the effect of improving engagement between the two parts, which together served as a secure mounting assembly for hanging heavy things from.


As all European patent attorneys will immediately recognise, the positioning of the characterising clause in the claim clearly indicates that the generally elliptical cone shape of the head was also what persuaded the EPO that the claimed invention was distinguished over the closest prior art document, which was identified during opposition proceedings as GB782428. This characterising feature should be reasonably clear from the selection of figures from this document shown on the left.

What the IPKat fails to understand is how, given all this, the term "generally elliptically cone shape" could be applied to the alleged infringing article (pictured below right). The IPKat's own conclusion would most definitely be that it would be stretching the bounds of credulity quite a bit to imagine that such a shape could be described as being in any way a generally elliptical cone. He wonders therefore whether Jacob LJ has indulged a bit too much in the "meticulous verbal analysis" that, quoting Lord Diplock in Catnic, he specifically warns against (paragraph 19). If the alleged infringement could be described as being generally elliptically cone-shaped, then why would the corresponding component in the closest prior art document not be described as such? Is the IPKat missing something obvious here, or is this a judgment that is just plain wrong?

Merpel simply wonders what it is about building products that makes such contentious legal decisions.