UK Patent Law Primer: Reading through Judge Stone’s New Opinion

by Dennis Crouch

Geofabrics Ltd. v. Fiberweb Geosynthetic Ltd. [2020] EWHC 444 (Pat) [[2020] EWHC 444]

In the UK, Geofabrics just won a judgment of infringement against Fiberweb for its European Patent No. 2 430 238.  The parallel U.S. Patent 8,978,995 has not yet been enforced.  I thought I would walk through the decision looking at how UK Judge Mr. David Stone handled issues and their parallel US comparison.

The invention here is a fairly expensive multi-layer geo-liner for a railway. The layered product includes two support layers sandwiching a filtration layer — this filtration is the key to the invention.  The filtration layer is “normally impermeable to water” but allows water to pass upward through the layer when under high pressure (rail car).  The inventors called it a filtration layer because it only allows water to pass through and leaves behind silt and clay-fines in order to avoid erosion.

The defense offered several reasons for denying the infringement: lack of novelty, obviousness, and insufficiency of the claims and disclosure.

Novelty: The UK novelty law is substantially parallel to that of the U.S., although with a somewhat heightened enablement requirement. In a 1972 opinion, Lord Justice Sachs provided the following metaphor to the law of (land) discovery:

To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentees.

General Tire & Rubber Co v Firestone Tyre & Rubber Co Limited [1972] RPC 457.  More recently, UK courts have noted that an anticipatory references must both disclose the claimed invention as and also “enable the ordinary skilled person to perform it.” Synthon BV v SmithKline Beecham plc [2006] RPC 10 (Lord Hoffman).

In the present case, the Judge Stone found that multi-layer fabric in the prior art lacked the precise permeability spectrum claimed in the invention.

Obviousness in the UK similarly parallels the U.S. law’s Graham analysis:

(1) (a) Identify the notional [skilled addressee]; (b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

Pozzoli SpA v BDMO SA [2007] EWCA Civ 558 (Jacob LJ).  The UK statute itself is simple asking is the invention “obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.” The Patents Act 1977 (as amended).  Note here that the UK statute limits obviousness analysis only to publicly-available prior art while secret prior art (such as prior filed applications) are available only for novelty analysis.

The case here focused also on two sub elements:

  • Obvious to try: There must be at least a reasonable expectation of success of a combination.
  • Long-felt want: Something often pleaded but rarely with success.  However, it can turn “apparent technical obviousness” into a judgment of non-obviousness.

In his opinion, Judge Stone again sided with the patentee — finding that although the prior art addressed under-track erosion using a barrier — it’s solution was quite different in practice.

[I]t is by no means clear to me that a skilled addressee equipped with the CGK [Common General Knowledge] would:

(a) replace an impermeable membrane with a permeable one; (b) introduce a filtering element when none is hinted at in Jay; and (c) choose a geomembrane that operated under the load of a train – that is, it would allow water to pass up through it (whilst being filtered) only under the pressure of the load of a train, and not under the pressure of the tracks and ballast in the absence of a train.

In my judgment, the Patent is not obvious over Jay.

Insufficiency: The court examined three defenses under the umbrella of “insufficiency”: Uncertainty (sometimes called ambiguity); Classical insufficiency/lack of enablement; and Lack of plausibility.  The statute provides that the specification must “disclose the invention clearly enough and completely enough for it to be performed by a [skilled addressee]”.  72(1)(c) of the Patents Act 1977.

Insufficiency – Uncertainty is basically the same as claim indefiniteness in the U.S. — requiring undue effort to understand the scope of the claims. Here, the court found that the claim requirement of being “normally impermeable” was not unduly uncertain.

Classical Insufficiency is parallel to enablement in US law — the specification must enable a person killed in the art to perform the invention without undue burden.  Here, the court found that some testing was necessary to create the claimed permeability profile, but that testing was “not unduly burdensome.”

Insufficiency – Plausibility: In the UK, the plausibility doctrine has some flavors of US utility doctrine.  Normally, plausibility will be assumed. However, courts have raised suspicion in situations where an inventor could easily file many patents based upon pure speculation of success.  One example of this might be a new medical use of a known drug (“second medical use claim”).  In that situation, the UK Courts require “some disclosure as to how or why the known product can be expected to work in the new application.”  In rejecting this defense, the court noted that a patent for a new product (as here) is “almost always” plausible.

Infringement: The court found infringement both literally and as equivalence.  For equivalence – the court applies a result-way test: “Substantially the same result in substantially the same way.” Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48 (Lord Kitchin JSC). Equivalence can be negated based upon evidence that patentee “intended that strict compliance with the literal meaning . . . was an essential requirement of the invention.” Id.  In this case, the question of what “normally” impermeable meant. The court found that the accused product fit that term or was at least the equivalent.  The basic argument on the other side was that the layer might be permeable under the weight of flood-water and in some parts of the UK floods regularly occur.

In the end, the court upheld the patent and found it infringed. The next steps in the case will be to consider remedies. The patentee has requested damages as well as injunctive relief.

18 thoughts on “UK Patent Law Primer: Reading through Judge Stone’s New Opinion

  1. 4

    AI taking a video feed from a courtroom and producing a transcript almost in real time is nearly with us. It could radically reduce the overall cost of patent litigation in the UK through replacement of stenographers. In 2019 lawyers finally started looking at using Artificial Intelligence to solve the problem which has effectively wrecked ‘access to justice’ in civil litigation. An article in the Financial Times (23/23/2028) that outlined a Pilot Programme was thought likely to bring about “a change of culture amongst legal representatives, parties and judges” and stop “the unnecessary harvesting of countless useless documents which the judge will probably never read” – as Dame Elizabeth Gloster, a former Court of Appeal judge and chair of the working group that produced the disclosure reforms, has said.

  2. 3

    This is an interesting read. Max’s comments are helpful.

    1. 3.1

      Thank you, Night. But I must correct one thing, the time it took to go from issuing proceedings to handing down the high Court Decision. Not one year but two.

      Typically, it is around 15 months. The English judicature pride themselves on the pace at which the courts work, these days.

      But here it took longer. Perhaps this explains the identity of the judge. Was he drafted in to reduce pendency? I have no idea. Paul Cole might know, if he is following this thread.

      1. 3.1.1

        Sorry, can’t help here.

  3. 2

    Readers, if you are interested enough to look into this posting, I give you some thoughts to mull over:

    1. Less than 13 months from start of this litigation to the finish of it, viz. claim does not lack patentable novelty, is not obvious, is not bad for insufficiency, but is infringed by the accused embodiment. End of story.
    2. In England, in only about one in three of Patents Court judgements is an appeal process initiated. I can’t see this one going to appeal. What would be the point?
    3. Because the judges at first instance get the law right, do not make an error of principle and their fact-finding is not appealable.
    4. So Decisions like this one serve as a basis for pan-European settlement or, if not, a roadmap for courts elsewhere in EPC-land.
    5. I have never heard of this judge. I wonder whether this is the first time he has heard a patents case; and
    6. Patent litigation in England is expensive, but only for the time it takes to get to a decision at first instance (here: 13 months).

    1. 2.1

      4. So Decisions like this one serve as a basis for pan-European settlement or, if not, a roadmap for courts elsewhere in EPC-land.

      But does it really? For this to carry the weight that you appear to want to give it, must not the actual underlying law that is being applied BE THE SAME?

      In addition, the feature that you like to stress about the LACK of stare decisis actually works against the notion that any one decision can really serve as a “roadmap” since each court has no compunction to follow any previous ‘map’ provided (so even if the underlying law were identical, such would be no guarantee of a clear roadmap being followed).

      Your stated conclusion does not follow.

      1. 2.1.1

        The law is one thing, the facts another. Fact-finding under English law is different from the way it’s done inthe courts of continental Europe. Imagine trying a case on the continent, with no discovery and no hours-long cross-examination of expert witnesses, in court, in front of the judge, with a stenographer delivering to each legal team, each evening, a complete transcript of what the expert averred, under oath, that day in court, for them to use as fuel for the continuing cross-examination, the next day.

        Then go back and in this light read again any first instance decision by the Patents Court in England about the validity of a claim in dispute.

        Then imagine how influential that Decision might be to other Judges elsewhere in Europe, asked to find the facts but without any help in their own court of the standard fact-finding tools used by the court in England.

        And of course the statutory law of patent validity all over EPC-land is the same as well.

        1. 2.1.1.1

          There were two parts to my post.

          Your conclusion still does not carry.

          I “get” that you want the diligence of a UK proceeding to have the effect you wish to have, but there is just no mechanism is there for making it so, eh?

          One might even surmise that with BREXIT, that those ‘on the Mainland’ may even be looking for reasons to NOT employ any proceedings in the UK courts… (human nature, being what it is).

          1. 2.1.1.1.1

            I don’t follow. My, you are a cynical fellow.

            as far as I know, from my experience, courts strive to render sound decisions, decisions that can withstand even the most robust criticism. Judges are only human, and so want their decisions to be more highly regarded than those of any other judge. Where I’m sitting, for a court in Europe wilfully to ignore or disregard forensic fact-finding of the highest quality strikes me as absurd, self-defeating and unconscionable behaviour. I can’t think of a case where it might have happened.

            On the contrary, in their periodic get togethers, the patents judges of Europe vie with each other to come across as more sophisticated than their colleagues in the other jurisdictions of Europe. That’s only human, but very healthy, and good for the development of patent law in Europe.

            1. 2.1.1.1.1.1

              That is hardly cynical (and you have been much more cynical of late with your expressed views of applicants ‘taking advantage’ of the system).

              And yet again in your response, you have taken only a piece of my comments (now, an even smaller piece related to a ‘fact-finding’ portion).

              I suggest that you take a step back and absorb the entire comment.

    2. 2.2

      Interesting setup for the Judge.

      Mr. David Stone is a solicitor and partner at Allen & Overy he is also a part-time Deputy High Court Judge.

      1. 2.2.1

        Dennis, yes. He seeems to be a TM man but is Global Head of IP at his firm, an ages-old, very illustrious and “Magic Circle” London law firm:

        link to allenovery.com

        Nobody is going to pull any wool over his eyes, are they?

        1. 2.2.1.1

          I am curious, MaxDrei, does the UK have a conflict of interest mechanism (or related ethical standards) for the duo Solicitor/Judge roles?

          1. 2.2.1.1.1

            Yes. Obviously. But now I’m curious: what principle of ethics or conflict are you imagining, that amounts to a per se bar to a practising solicitor serving his country, from time to time, as a judge?

            Who else but an experienced and fully-qualified lawyer is fit to step up to the bench and serve as a judge?

            1. 2.2.1.1.1.1

              Typically (here) you will NOT have any type of shared role. A Judge will not maintain a role as a separate solicitor.

              Similarly, a “solicitor” will not have a shared duty as a government employee and private “solicitor” (think of Director Iancu).

    3. 2.3

      AI taking a video feed from a courtroom and producing a transcript almost in real time is nearly with us. It could radically reduce the overall cost of patent litigation in the UK through replacement of stenographers. In 2019 lawyers finally started looking at using Artificial Intelligence to solve the problem which has effectively wrecked ‘access to justice’ in civil litigation. An article in the Financial Times (23/23/2028) that outlined a Pilot Programme was thought likely to bring about “a change of culture amongst legal representatives, parties and judges” and stop “the unnecessary harvesting of countless useless documents which the judge will probably never read” – as Dame Elizabeth Gloster, a former Court of Appeal judge and chair of the working group that produced the disclosure reforms, has said.

  4. 1

    Great idea, Dennis, to walk through the decision and offer insights into the similarities and differences with the US jurisprudence. I look forward to a lengthy comments thread.

    Further, I can’t wait for you to do the same survey on two more ticklish issues, namely eligibility and prosecution amendments (WD/added matter). I hope that a suitable English case will come along soon.

    And if your audience wants it, perhaps you could do a similar job on an EPO case. Of course that would be validity issues only, but not without interest for some of your readers. Heck, there are plenty of cases where there are parallel proceedings in the USA and at the EPO, the CRISPR cases, for example. And whereas the cases in the courts of England, while influential around the world, decide matters for just one relatively small jurisdiction, an EPO finding that the claim lacks validity is determinative for a jurisdiction of 600 million folks.

    1. 1.1

      I am a bit less sanguine that even such a carefully laid out expose will drive home the Sovereign-Centric nature of patent law to those that proselytize for a “One World Order” approach to patent law.

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