Nampak Cartons Ltd v Rapid Action Packaging Ltd

On an appeal from a specialist patent tribunal, the appellate court should review rather than rehear the decision unless the interests of justice require otherwise. It should interfere with an assessment of obviousness only for an error of principle or where the tribunal was clearly wrong. Particular respect is due where the tribunal has specialist experience and heard oral expert evidence. Expert evidence remains relevant even where experts disagree on the ultimate question of obviousness. It may assist on common general knowledge and on the reasons why the skilled person would, or would not, regard an invention as obvious. A structured obviousness analysis is useful, but an imperfect formulation does not necessarily amount to an appealable error.

Nampak Cartons Limited appealed from a decision of the UK Intellectual Property Office Hearing Officer rejecting its application to revoke Rapid Action Packaging Limited’s patent for a sandwich carton. The patent was amended to claim a carton using heat-sealed flanges and dual parallel partial cuts permitting the lid and flange to be torn apart.

Nampak challenged the rejection of attacks based on three patent specifications and common general knowledge. It alleged that the Hearing Officer had disregarded expert evidence, misconstrued the teaching of Spiral Packs, failed to consider common general knowledge, and failed to apply the structured approach to obviousness. The central issues were the proper scope of appellate review and whether the Hearing Officer’s conclusions involved an error of principle or were clearly wrong.

1. Appeal dismissed. The Hearing Officer’s decision was a reviewable decision under CPR 52.11, as applied by CPR 63.17(1). The appeal was not a rehearing. The court would interfere only if the Hearing Officer had erred in principle or was clearly wrong.

2. Particular weight was required for the Hearing Officer’s evaluation of obviousness. The tribunal had specialist experience and had heard oral evidence. The caution expressed in Biogen v Medeva [1997] RPC 1, and the factors identified in South Cone Inc v Bessant and others (trading as Reef) [2002] EWCA Civ 763 at [26]–[28], applied. The simplicity of the facts created a temptation to decide the case afresh, which had to be resisted.

3. The Hearing Officer had not disregarded the expert evidence merely because the experts disagreed on the ultimate issue. The evidence remained useful on the skilled person, common general knowledge and the reasons bearing on obviousness. The approach to expert evidence described in Rockwater Limited v Technip France SA (formerly Coflexip SA) [2004] EWCA Civ 381 at [15]–[18] supported that conclusion. The Hearing Officer was entitled to conclude that a skilled person faced with the Meyers arrangement would be more likely to narrow the flange than add a second cut.

4. The Hearing Officer was entitled to construe the general reference in Spiral Packs to tear strips formed by lines of weakening as embracing several possible arrangements, none of which disclosed the claimed single Concora arrangement in the bonded flanges. He was also entitled to reject the attack based on common general knowledge because it depended on hindsight, including the idea of putting an existing score line to double duty as a microcut.

5. The Hearing Officer had set out and applied the structured approach to obviousness identified in Pozzoli SPA v BDMO and others [2007] EWCA Civ 588. Any failure to spell out every claim feature at one stage of the analysis was immaterial. He was entitled to consider the whole disclosure of the prior art and to take account of the requirement for sealing around the lid when assessing whether the claimed arrangement was obvious.

• High Court (Patents Court): appeal from the UK Intellectual Property Office Hearing Officer dismissed. The Hearing Officer’s rejection of the revocation attacks was upheld.