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Intellectual property: Free beer and patents

06 June 2016

Intellectual property: Free beer and patents - read more

One thing to get a patent onto the register, another to use it as a weapon against a competitor

Although I have a science degree in chemistry and started out as a patent lawyer, I tend to find the judgments in patent cases somewhat dry. So, in scanning a recent case in the junior IP Court (Intellectual Property Enterprise Court − IPEC), my appetite was whetted when I saw ‘free beer’ claims.

A ‘free beer’ claim

The case of Saertex v Hexcel concerned an invention for a process for reinforcing a structure (armature was the term used) using, for example, fibreglass material to which had been applied an adhesive.

The idea being that the reinforcing material could be positioned and repositioned correctly in a mould before pouring resin into the mould to create the reinforced structure. A bit like being able to reposition a Post-It Note but, in this patent’s case, the adhesive ultimately set.

The defendant in the case (whose own products would infringe the patent if it was held to be valid) argued that all the claims lacked novelty or an inventive step (i.e. it was obvious). The defendant also raised a lot of evidence (‘prior art’ as it is called in the patent world), establishing it had all been done before. However, their starting point was that claim one, as granted, was a ‘free beer’ claim.

They argued that the following statement defined the claim by reference to the problem to be overcome (i.e. repositioning): ‘A method of manufacturing a fibre-based armature intended to be embedded in a matrix or a mixture of matrices, characterised in that it comprises performing the following steps, preparing a fibre-based material, and depositing a re-positionable adhesive on at last one of the surfaces of the material thus obtained’.

The judge, however, disagreed. He pointed out that the classic free beer claim was when a patentee set out his claim by reference to a desirable end, and so claims all solutions to a problem, even if he only discovered one such solution.

The classic example to illustrate the point was by Lord Hoffmann, who used ‘A substance which is 10 times harder than diamond.’ He pointed out that a patentee could claim a particular substance with that quality, specifying its structure or composition, or a method to make such a substance. Yet the claim would cover all products with that ability, even those which had not yet been discovered.

The ‘skilled person’

In considering whether a patent is valid or not, a court will first construe the claim, in order to understand and give effect to what is said to be the invention. Claims are construed through a legal construct which was formerly known as the ‘man skilled in the art’, but has now been PC’d to ‘skilled person’ (or addressee).

This individual is said to be unimaginative but diligent and to have a practical interest in the subject matter of the patent. Were they for real, they would probably a good candidate for ‘Billy no mates’.

In most cases, the skilled person is all that is needed. However, if more than one skill is necessary, the individual becomes a team. Generally, the skilled person is the same in considering construction and whether a patent is invalid − particularly in the case of obviousness or insufficiency, i.e. does the patentee give sufficient details for the skilled person or team to work the invention?

In rare cases though, where the invention is actually a breakthrough, that cannot be the case. The point being that where it is a team that is the skilled person, an individual can be added to the team in considering the issue of sufficiency.

In other words, the breakthrough is the very skill that the new team member has, and so understands how to work the invention. But that individual’s skills would not have existed at the time the patent was invented because it was so new, so they cannot be included to assess obviousness.

In the Saertex case, the judge (with this problem in mind) specifically asked the parties at the case management conference (CMC) who the skilled person was, and whether it was a team. The parties picked on individuals.

By the time of the trial, they were indicating that it might be a team of two or three individuals, and it seems that this was how the expert evidence was presented. It was only at the time of writing his judgement that the judge recognised that the skilled person had morphed in to many, and that neither party had communicated this to the other prior to exchange of experts’ reports.

Although nothing turned on it in this case – not least because the judge disagreed with both parties’ interpretations – he laid down a marker that the skilled person should not be so liberally changed from that person identified at the CMC, or else there would be consequences (although he did not say what these were).

Amending the claim

Although the judge considered it was not quite free beers all round, when it came to the prior art − which included an article in a magazine for model aircraft enthusiasts called Model Aviation, more the sort of journal that gets picked for guest appearances on ‘Have I Got News For You’ than serious patent litigation − the patent’s claims all ended up in the beer slop bucket.

Perhaps sensing the case was not that good, even at the beginning, the claimant had proposed amendments to their patent’s claims, in order to stave off the worst. This is a classic tactic often adopted by patentees, once the defendant has searched high and low for suitable knockout prior art, that the patentee themselves may not have found.

This is not surprising, as defendants have a huge incentive to look in the darkest recesses for prior art which the patentee does not have and the Patent Office may not have the resources to find.

Although some of the damage was limited, since the judge concluded that the patent lacked inventive step (but there was novelty) only in respect of one of the pieces of prior art, it nevertheless failed.

More rigorous scrutiny

The skill of a good patent attorney is not to try and claim the earth; or, if they do, to disguise it better than was done in this case. It is one thing to get a patent past the Patent Examiner and onto the register: quite another to use it as a weapon against a competitor.

The degree of scrutiny of what is covered by the claims in a court is far more rigorous, not least because there is evidence, witnesses, cross-examination and so on. It is unsurprising that quite a few patents fail in court, which otherwise make it on to the register.

Running the patent claims past a patent litigator first, with all the prior art available, might mean more patents survive, but the costs may well not justify this. On the other hand, it would be a lot cheaper than losing in court and paying the other side’s costs. I doubt, however, this will ever be the norm. Yet if all the patents were perfect, I would be out of a job.

Paul Harris is a Partner at Venner Shipley Legal Limited

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