MMI Research Ltd v Cellxion Ltd & Ors

For obviousness, an appellate court may interfere only for an error of principle. Where a prior publication states that an invention has been achieved using a particular device, the question may be whether the skilled team could work out how to implement that result, rather than whether the publication would lead to the invention in the abstract. A claimed combination is obvious where the necessary steps follow from the publication, common general knowledge and the evidence, including clear expert concessions. A party cannot use a narrowly confined remittal to reopen an excluded issue or introduce an unpleaded refinement on appeal where this would cause procedural unfairness. A machine sold without an obligation of confidence may be investigated for its mode of operation, but enabling disclosure must be established by evidence.

MMI Research Ltd, the exclusive licensee of a patent for an IMSI catcher, succeeded before Floyd J, who held the patent valid and infringed in the main judgment, [2009] EWHC 418 (Pat). After fresh evidence was admitted and issues were remitted, the judge again held the patent valid and unaffected by that evidence, [2011] EWHC 426 (Pat).

The defendants appealed on prior use and disclosure arising from sales of GA-900 machines and associated materials, obviousness over a 1997 article by Dirk Fox, and the personal liability of Mr Timson. The central issues were whether the prior materials constituted an enabling disclosure, whether claim 1 was obvious over Fox, and whether Mr Timson was personally liable.

Disposition. The Court allowed the main appeal because claim 1 was obvious over the Fox article. It dismissed the appeal on the remitted issues and all other matters on the main appeal, but made no final decision on Mr Timson’s personal liability.

1. Prior disclosure. The Court accepted that, where a machine is supplied without an obligation of confidence, the purchaser is entitled to investigate it to discover how it works. The question nevertheless required evidence of what tests or enquiries could be undertaken and what information they would reveal. Since no such evidence had been adduced at the first trial, the judge was entitled to find that enabling disclosure from the GA-900 machine or manual had not been established.
2. The second trial was governed by a tightly confined remittal order. It expressly excluded reopening whether the machine’s operation could be worked out from the machine itself. The defendants could not raise that issue on appeal, nor introduce a refinement that had not been clearly pleaded or addressed by evidence at the remitted hearing. Allowing either point would have been unfair and would have required a further trial.
3. Obviousness over Fox. The appeal could succeed only for an error of principle: Biogen v Medeva [1997] RPC 1, p 45. Fox disclosed that an IMSI catcher had been achieved using a disguised or false base station. The relevant inquiry was therefore whether the skilled GSM engineering team could work out how to implement that result, not whether Fox disclosed the invention in the abstract.
4. The team would know that the false base station needed a stronger signal and would have to select a location area code. Common general knowledge included using a changed, out-of-area LAC to provoke an immediate response from a mobile phone. The judge’s first two reasons for rejecting obviousness overlooked the expert concession that the claimed steps would follow from the false-base-station concept. His third reason, based on possible reliance on a call being made, was inconsistent with Fox’s reference to all switched-on subscribers. The judge had therefore made an error of principle and claim 1 was invalid for obviousness.
5. On personal liability, the Court’s provisional view was that participation in developing the defendants’ product was insufficient, particularly where Mr Timson was neither shareholder nor director and had not been shown to train customers within the jurisdiction. The issue was academic and was not finally determined.

• Court of Appeal (Civil Division): In [2012] EWCA Civ 7, the main appeal was allowed on obviousness over Fox; the remitted issues appeal and all other matters were dismissed. No final decision was made on Mr Timson’s personal liability.
• High Court of Justice, Chancery Division (Patents Court): Floyd J held the patent valid and infringed in [2009] EWHC 418 (Pat). Following remittal and consideration of fresh evidence, he held the patent valid and unaffected by that evidence in [2011] EWHC 426 (Pat).