Vernacare Limited v Moulded Fibre Products Limited

In assessing obviousness, the statutory test in section 2 of the Patents Act 1977 remains controlling. The structured approach in Pozzoli is an aid to applying that test, not a licence to rewrite the claim or import an unstated purpose.

An inventive concept must reflect the invention properly construed. A product may be obvious from a disclosure that does not articulate every benefit of the claimed product. Where prior art gives the skilled person good reasons to make an article that in fact possesses the claimed characteristics, the absence of recognition of one benefit does not preserve inventive step. An inadequately reasoned first-instance assessment may be re-evaluated on appeal, particularly where relevant expert evidence was not addressed.

Vernacare sued Moulded Fibre Products for infringement of patents concerning disposable moulded-paper-pulp medical products. The appeal concerned claims 1 and 9 of GB Patent No 2 439 947, which covered an open-topped, detergent-resistant washbowl made from paper pulp containing a fluorocarbon. MFP contended that the claims lacked inventive step over Japanese patent application No JPH7-137726, Shimooka.

Mr Nicholas Caddick KC, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, held claims 1 and 9 valid: [2022] EWHC 2197 (IPEC). The central issues were the proper construction of “washbowl”, the identification of the inventive concept, and whether the claimed quantity range was independently inventive.

1. Appeal allowed. Claims 1 and 9 of GB Patent No 2 439 947 were invalid for lack of inventive step over Shimooka.
2. The statutory test is that in section 2 of the Patents Act 1977. The Pozzoli structured questions are aids to applying that test. “Inventive concept” means the invention properly construed; it cannot be used to rewrite the claim or introduce features or purposes that the claim does not contain.
3. A washbowl was properly construed as an appropriately described bowl with a degree of detergent resistance and capacity to hold enough water to be useful for washing a patient. The claim did not require hospital use, a particular volume, portability, or that the fluorocarbon had been added with the purpose of conferring detergent resistance.
4. Accordingly, the inventive concept of claim 1 was a washbowl made from paper pulp containing a fluorocarbon. The biocide was common general knowledge and could be disregarded for this analysis. Hallen v Brabantia [1991] RPC 195 established that an invention may be old or obvious even where the disclosure does not articulate every benefit of the claimed invention.
5. Shimooka gave the skilled person good reasons to make a bowl from fluorocarbon-containing pulp for water, oil and grease resistance. It was common ground that such a bowl would in fact be detergent resistant. A cereal-bowl-sized article could hold enough water to be useful in washing a patient. The argument was not an artificial product of hindsight, and claim 1 was obvious.
6. Claim 9 specified only the volume of liquid carrier, not the relative quantity of fluorocarbon, and was consequently very wide. The first-instance judge had not addressed the only relevant expert evidence, had not explained the basis on which claim 9 was assessed, and had not considered it on the correct inventive concept. The Court of Appeal was entitled to re-evaluate the issue. The unchallenged evidence that the claimed range would be obvious to try was fatal to claim 9.

• Court of Appeal (Civil Division) allowed MFP’s appeal and held claims 1 and 9 invalid for lack of inventive step over Shimooka.
• Intellectual Property Enterprise Court, Mr Nicholas Caddick KC sitting as a Deputy High Court Judge, held the claims valid: [2022] EWHC 2197 (IPEC).