Pozzoli Spa v BDMO SA & Anor

Patent obviousness should be assessed by identifying the skilled person and common general knowledge, identifying the claim’s inventive concept or construing the claim, comparing it with the state of the art, and deciding without hindsight whether the differences required invention. The inventive concept is the essence of the claim, not merely the problem addressed.

Technical prejudice may support inventiveness where a patent shows that an established belief was mistaken. Merely claiming an old idea thought impractical, without explaining why it works, contributes nothing. On claim construction, variants assist in identifying the claim’s meaning; they do not extend its scope after construction. A judicial decision on permission to appeal satisfies the requirement for judicial review of patent revocation.

Pozzoli Spa v BDMO SA & Anor was an appeal from Lewison J’s decision in the Patents Court, [2006] EWHC 11398 (Ch), that European Patent (UK) 0 676 763 was invalid for obviousness. The judge had also decided that the respondents’ Double Push Tray fell outside the patent’s scope.

The patentee sought permission to appeal against invalidity. It contended initially that article 32 of the TRIPS Agreement required a full appeal from any patent revocation, irrespective of the ordinary permission test. Permission was subsequently granted because the appeal had a real prospect of success.

The central issues were whether the patent was obvious and, if valid, whether the respondents’ product infringed claim 1. The infringement issue depended on the meanings of “axially retained” and regions located at different levels.

1. Disposition. Jacob LJ delivered the judgment, with which Keene and Mummery LJJ agreed. Permission to appeal was granted, but the appeal was dismissed. The patent was invalid for obviousness. The court further concluded that, even if valid, it would not have been infringed.

2. A decision by an appellate judge or court whether to grant permission to appeal from patent revocation is a judicial decision satisfying article 32 of the TRIPS Agreement. Article 32 does not require a full merits appeal where the proposed appeal has been judicially determined to lack a real prospect of success. The alleged treaty breach therefore supplied no compelling reason under the Civil Procedure Rules 1998.

3. Findings of primary fact may be disturbed only when plainly wrong and cannot be challenged where supported by credible material. Applying Biogen v Medeva [1997] RPC 1, an appellate court should also exercise particular caution before differing from a trial judge’s evaluative conclusion on obviousness where no question of principle arises.

4. The Windsurfing [1985] FSR 59 approach was restated. The court should: identify the skilled person and that person’s common general knowledge; identify the inventive concept of the claim or construe the claim; identify the differences from the state of the art; and decide, without knowledge of the claimed invention, whether those differences would have been obvious or required invention. The inventive concept is the essence of the particular claim. It is not the problem addressed, and it is identified before considering the prior art.

5. The judge had been entitled to find that there was no technical prejudice against overlapping compact discs and no long-felt want for the claimed container. Once reducing the height of a side-by-side container was considered, overlapping and physically separating the discs were obvious steps. The later product’s commercial success resulted from design features added to the claim rather than from the claimed features. The Fujifilm prior art provided an additional obvious route, although it was unnecessary to the principal conclusion.

6. The infringement conclusions were material obiter because the patent was invalid. “Axially retained” meant retention by a central device acting like a conventional rosette, not merely resistance to movement in the axial direction. The claimed first and second regions were actual parts of the tray at distinct heights, not virtual spaces defined solely by the discs’ positions. The respondents’ peripheral retention system and single-level tray therefore fell outside claim 1.

• Court of Appeal (Civil Division): In Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588, permission to appeal was granted, but the appeal was dismissed unanimously. The invalidity decision was upheld, and the court alternatively agreed that the respondents’ product did not infringe.
• High Court, Chancery Division (Patents Court): Lewison J held in [2006] EWHC 11398 (Ch) that the patent was invalid and that the Double Push Tray fell outside its scope.