Case summary: The Court of Appeal must be even more cautious than usual when seeking to overturn the finding of a specialist judge – in this case overturning the finding of a Patents Court judge that a patent was invalid.
The transcript of the judgment is with the Court of Appeal and will be published shortly
Summary
If a patent has been held invalid (either in whole or part) at first instance and the patentee wishes to overturn that finding of invalidity on appeal, even if that appeal is not contested in order to make a declaration of validity the Court of Appeal still needs to be satisfied that the judge's decision was wrong - and this is no formality, even where the judge had clearly made a mistake (as in this case).
Furthermore, if there has been a settlement between the parties, it should be ensured that the settlement agreement does not contain restrictions (implicit or explicit) that hinder the patentee in presenting a full and fair picture to the Court of Appeal.
Charles Russell acted for the successful patentee.
The facts
Mölnlycke Health Care AB (Mölnlycke) were successful in obtaining a declaration from the Court of Appeal1 that, contrary to an earlier decision of HHJ Birss QC (sitting as a judge of the Patents Court), their European patent (UK) no. 0 633 757 entitled "A method and an arrangement for manufacturing wound dressings, and a wound dressing manufactured in accordance with the method" was valid.
The Patents Court had earlier held that the product claims of Mölnlycke's patent were invalid and not infringed by Brightwake's Episil and Episil Absorbent wound care products. These products were designed to compete with some of those in Mölnlycke's Safetac range of wound care products – the technology of which is based on the use of soft silicone which adheres to dry skin but not to moist wounds and which conforms to the skin's irregularities, while other adhesives stick to the uppermost surface of the skin or wound surface (and so for example are inclined to pull some or all of this layer off when the product is removed). This technology has been a huge success for Mölnlycke. Indeed the inventor named in Mölnlycke's patent the subject of the proceedings received what has been described as the most prestigious Swedish technology award, the Stora Teknikpriset, in 2010 for his work with this technology.
Following judgment at first instance in the Patents Court, the dispute was settled – but Mölnlycke still needed the first instance decision to be overturned insofar as it related to validity. However, as was indicated to the Court of Appeal at the time the matter came before them, the question of infringement was no longer a matter of active dispute between the parties and accordingly this was not a matter to be considered on the Appeal. The precise reasons the Patents Court judge fell into error are irrelevant for the purposes of this case summary; suffice it to say that the Court of Appeal said that the basis on which the judge held the patent was obvious was not supported by the evidence; indeed it was contrary to the evidence given by one of the Defendant's own expert witnesses.
Under the Civil Procedure Rules2 the Court of Appeal must be certain that the judge was wrong if it is to allow an appeal. As the Court of Appeal noted in its judgment, it must be cautious about overturning a trial judge and, in the case of a specialist judge (such as in this case) even more cautious. It referred to the decision by the House of Lords in Biogen v Medeva3 where it was held this "is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge's overall evaluation."
A finding of obviousness is a finding of fact and therefore must be based on evidence. In relation to obviousness, the primary evidence is that of the expert; all other evidence is secondary. In an earlier case in the Court of Appeal relating to the validity of a patent, Panduit v Band-IT4, Lord Justice Aldous had followed this when allowing an appeal against a finding of obviousness. In that case there was no relevant primary evidence on which the judge could have relied in coming to his finding – the judge had started from knowledge of the invention and concluded that to arrive at the inventive step the notional skilled person would have to have taken two earlier steps. From this the judge postulated, without expert evidence, that those two steps would have been contemplated by the skilled person. The judge then came to the view that the secondary evidence was not such as to cause his conclusion to be revised.
The Court of Appeal held that the present case parallels Panduit to an extent but in the present case there was primary evidence, namely that from Brightwake's expert, that the embodiment which the Patents Court judge relied on for his finding of obviousness was in fact not obvious5. Thus in finding the patent invalid for obviousness the judge had made an error of principle by not taking into account the mindset of the skilled addressee.
Comment
It is worthwhile noting that the UK Intellectual Property Office did not exercise its right to appear at the appeal. Accordingly, as the only party appearing, it was incumbent on Mölnlycke to properly and fairly present the case to the Court of Appeal – and to clearly demonstrate that the first instance judge was wrong, both on the application of the specific facts and that this meant his overall decision regarding validity was wrong
Footnotes
1. Lord Justices Ward, Etherton and Lewison, with Lewison LJ giving the principal judgment
2 CPR 52.11(3)
3 [1997] RPC 1
4 [2002] EWCA Civ 465
5 The defendant had relied on a different combination
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.