M-Systems Flash Disk Pioneers Ltd v Trek 2000 International Ltd & Anor

Patent disclosure is assessed through the eyes of the skilled person, reading the specification as a whole and using common general knowledge. A feature is not disclosed merely because it would have been obvious or falls within the scope of the claims. Subject matter may be added by amendment only where it was clearly and unambiguously disclosed, expressly or implicitly, in the application as filed. A reference to a device being directly plugged into a USB socket does not necessarily exclude a cable, whereas a device described as directly introducible into the socket may carry that limitation. A practical requirement that a device operate as an alternative to a magnetic disk or CD-ROM may impose a substantial memory-capacity limitation without specifying an exact capacity.

This was an appeal by Trek from the Hearing Officer’s decision dated 8 November 2006 revoking a patent for a portable solid-state USB data-storage device. The Hearing Officer had found that the application did not disclose a cable-free device, that the granted claims were anticipated by Estakhri and Fujifilm SM-R1, that Abbott did not anticipate them, and that proposed amendments introduced additional matter and should also be refused in the exercise of discretion.

The appeal concerned disclosure, claim construction, anticipation, added matter, an alleged issue estoppel based on Singapore proceedings, amendment discretion and obviousness. The central questions were whether the application disclosed an integral USB device without a cable and whether the proposed amendments validly introduced that limitation.

1. Appeal dismissed. The Hearing Officer reached the correct conclusions on the granted claim, added matter, amendment discretion and Abbott. He erred in treating the proposed amended claim as not excluding a cable and in finding that the proposed claim was anticipated by Estakhri and Fujifilm SM-R1.
2. Following Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, the application and patent had to be construed purposively, as a whole, through the eyes of the skilled person, using common general knowledge. The application disclosed a compact, portable solid-state storage device without moving parts or a mechanical drive mechanism. It did not clearly and unambiguously disclose a device with no cable. References to a USB plug and to plugging the device into a computer were equally apt to describe a captive-cable device.
3. The wording of the granted claim requiring a device which could be directly plugged into a USB socket did not exclude a cable between the plug and the interface device. The proposed wording, requiring the device to be directly introducible into and removable from the socket, did exclude a cable. That limitation was nevertheless inadmissible under section 76(3)(a) of the Patents Act 1977, because it was not clearly and unambiguously disclosed in the application as filed.
4. The requirement that the device operate as an alternative to a magnetic disk or CD-ROM imposed a practical limitation. A device with 64 KB of memory, such as Abbott, was not a realistic alternative to a magnetic disk, for which the skilled person would expect approximately 1.4 MB.
5. The proposed issue estoppel based on the Singapore judgment was rejected. The point was raised too late, was not pleaded or supported by evidence, and caused real prejudice. In addition, the Singapore proceedings applied Singapore law and did not establish identity of issues with the UK proceedings. The court declined to criticise the quality of the Singapore judgment without evidence of Singapore law.
6. The Hearing Officer had not erred in refusing amendment in the exercise of discretion. Privilege need not be waived and no adverse inference could be drawn from maintaining it, but Trek still had to provide the true non-privileged reasons and relevant facts supporting amendment. It provided no sufficient factual basis on which discretion could be exercised.
7. The obviousness issue was not determined because it was unnecessary to the outcome.

• High Court (Patents Court): appeal from the Hearing Officer’s decision dated 8 November 2006. The appeal was dismissed.
• Comptroller-General of Patents, Designs and Trade Marks: ordered revocation of the patent after finding against Trek on amendment allowability and novelty, while finding for Trek on disclosure and insufficiency.