Jushi Group Co Ltd v OCV Intellectual Capital LLC

Numerical limits in a patent claim are construed in their full context. The same construction applies to validity and infringement. An acknowledged comparative example may show that figures are exact and not subject to broadening by whole-number rounding.

For novelty under the Patents Act 1977, a generic disclosure does not disclose every specific combination within it. Whether a numerical range implicitly permits every value or combination depends on the prior document and common general knowledge. The "serious contemplation" language adds no relaxed or separate test to the ordinary requirements of disclosure and enablement.

An obviousness attack requires evidence that the skilled person would make the particular combination of changes necessary to reach the claim, without hindsight and with a reasonable expectation of success.

Jushi sought revocation of OCV’s European patent for glass reinforcement strands. The claim specified ranges for glass constituents, including a calcium oxide to magnesium oxide ratio and a minimum combined content of aluminium oxide, magnesium oxide and lithium oxide.

HHJ Hacon, sitting in the Intellectual Property Enterprise Court, dismissed the revocation action and upheld OCV’s counterclaim for threatened infringement following Jushi’s admission: [2017] EWHC 171 (IPEC). Jushi appealed, alleging that the claim was anticipated by, or obvious over, the prior disclosure in Neely.

The appeal concerned claim construction, novelty where multiple numerical ranges overlap, and whether the alleged modifications of the prior art were obvious.

1. Appeal dismissed. Floyd LJ, with whom Henderson and Kitchin LJJ agreed, upheld the finding that the patent was valid. Its claim was therefore not revoked.

2. The scope of a numerical claim is the same for infringement and validity. Its limits must be construed in the light of the specification, common general knowledge and the precision chosen by the patentee. Here, the patent reproduced Neely’s example 5 as a comparative example and specifically identified its calcium oxide to magnesium oxide ratio as 2.14. The skilled person would understand that it lay outside the claim. This showed that the claim limits were exact and were not widened by whole-number rounding. Positions adopted by the patentee in later litigation could not affect that construction.

3. Under sections 2(1) and 2(2) of the Patents Act 1977, anticipation requires disclosure and enablement. A broad generic disclosure does not ordinarily disclose every specific member or combination within its ranges. The so-called serious-contemplation approach in overlapping-range cases is legitimate only insofar as it assists in deciding whether information was made available to the skilled person. It does not relax the ordinary novelty inquiry.

   Neely’s Table IV did not teach the skilled person to select every possible combination of values. The constituent percentages were interdependent, and small changes could have large non-linear effects. The claimed combination was consequently hidden within, rather than disclosed by, Neely’s generic ranges.

4. The structured inquiry in Pozzolli applied to obviousness. Starting with Neely’s worked examples, Jushi needed evidence that the skilled person would alter the out-of-range values in the required directions while preserving the remaining claimed limits. There was no such evidence, and no reason without knowledge of the patent to focus on those parameters. Starting with Table IV, there was likewise no evidential basis for saying that every composition within its ranges would successfully fibreise. The proposed exercise was research without a preconceived expectation of success, not an obvious step.

• Court of Appeal (Civil Division): Dismissed Jushi’s appeal and upheld the validity finding: [2018] EWCA Civ 1416.
• Intellectual Property Enterprise Court, High Court: HHJ Hacon dismissed Jushi’s revocation action, held the patent valid, and upheld OCV’s counterclaim for threatened infringement following an admission: [2017] EWHC 171 (IPEC).