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. 

Problem-Solution Approach: ur doin it wrong

This particular Kat was busy digesting the Court of Appeal's decision in Actavis v Novartis when another part of the IPKat commented on it here.  Some comments have already started to arrive about what seems to be the most interesting part of the judgment, which involves Lord Justice Jacob having a lengthy stab at the EPO-style problem-solution approach (at paragraphs 25 to 50), and arguably getting it wrong.  The relevant bit of the judgment goes like this:

"Moreover the PSA does not really cope well with cases where the invention involves perceiving that there is a problem, or in appreciating that a known problem, perhaps "put up with" for years, can be solved. Take for instance the "Anywayup Cup" case, Haberman v Jackel International [1999] FSR 683. The invention was a baby's drinker cup fitted with a known kind of valve to prevent it leaking. Babies drinker cups had been known for years. Parents all over the world had put up with the fact that if they were dropped they leaked. No-one had thought to solve the problem. So when the patentee had the technically trivial idea of putting in a valve, there was an immediate success. The invention was held non-obvious, a conclusion with which most parents would agree. Yet fitting reasoning to uphold the patent into a PSA approach would not really work. For by identifying the problem as leakage and suggesting it can be solved, one is halfway to the answer – put in a valve. 

Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so. 

What then is the answer to the paradox? It is this: the 5¼ inch limitation is purely arbitrary and non-technical. It solves no problem and advances the art not at all. It is not inventive. And although "inventive step" is defined as being one which is not obvious, one must always remember the purpose of that definition – to define what is inventive. That which is not inventive by any criteria is not made so by the definition. Trivial limitations, such as specifying the plate diameter, or painting a known machine blue for no technical reason are treated as obvious because they are not inventive. 

The PSA does not assist in providing an answer to the paradox. This is for the simple reason that there is no problem and so no solution to it."

The IPKat suspects that many people from the EPO, together with many European patent attorneys, will cringe on reading these paragraphs, since both types of difficulties would be well known and fit into the problem-solution approach without too much difficulty.  The first one fits because the problem could be seen to be, in context, how to make a plate according to a particular requirement (e.g. one to fit a table setting). The solution, which is to make the plate a bit bigger, is completely obvious.  The second one is slightly more interesting, because it involves recognising that the inventive step can lie at least partly in the recognition of the problem, following which the solution may be obvious.  In the case of the leaky cup, one way of looking at it could be that the problem may not even have been recognised as being a problem, but instead merely a fact of life, so the recognition of it being one with a potential solution could form part of the inventive step.  This is even given as one of the examples in the Guidelines (C-IV 11.6).  Of course, there may be other ways of looking at the same examples that also fit the problem-solution approach, but this Kat thinks that saying these types of inventions don't fit is not quite right.  It also probably doesn't help when the crucial step of identifying what the technical effect of the difference between the claimed invention and the closest prior art is somewhat skated over, if not missed out altogether.  If this is the way the English courts are going to look at the problem-solution approach, perhaps we would be better off as we are with Pozzoli and Windsurfing.