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Positec Power Tools (Europe) Limited and ors v Husqvarna AB, High Court of Justice of England and Wales, Patents Court (Birss J), London UK, 10 May 2016, Neutral Citation Number: [2016] EWHC 1061 (Pat)

On 10 May 2016, the Patents Court (Birss J) refused the Claimant’s application for an Order that the Defendant patentee provide disclosure in relation to obviousness. In the judgment Birss J acknowledges that, “disclosure from the patentee in relation to obviousness has been a notorious point for many years”.

Jacob LJ had set out the background to this problem several years earlier in a seminal case on this issue, Nichia v Argos [2007] EWCA Civ 741 (here). In summarising Jacob LJ’s position, Birss J noted that evidence of what the inventor actually did is often of little value to the assessment of inventive step, as it tells you little or nothing about whether the notional skilled person would have arrived at the same solution.  There is also always a risk of hindsight.  Birss J further noted that establishing that such evidence is probative can descend into a satellite dispute about how similar the inventor is to the skilled person.

Notwithstanding the questionable probative value and sometimes significant cost of obviousness disclosure, in Nichia, the Court of Appeal (Jacob LJ dissenting) held that a blanket prima facie rule against “standard disclosure” relating to obviousness would be against the interests of justice.

Since Nichia, the Civil Procedure Rules of the Civil Courts of England & Wales have undergone widespread reform (the Jackson reforms).  These reforms have involved a change to the default position on disclosure in all cases (including patent cases).  In particular, Civil Procedure Rule 31.5(7) replaces the previous default requirement for “standard disclosure” with a series of options for different types of disclosure to be ordered, including disclosure only on specific issues, or no disclosure at all.  As a result, Birss J no longer considered himself bound by Nichia and considered that the issue should be assessed according to whether an order for standard disclosure would be in accordance with the overriding objective of the Civil Procedure Rules (i.e. for cases to be dealt with justly and at proportionate cost).  Birss J went on to consider the cost of carrying out disclosure on this issue and the likely probative value of doing so.

Having determined that the costs of disclosure on obviousness in this case would amount to “not a very substantial aspect of the overall costs of this litigation but… [not] in any sense a trivial amount of money”, Birss J held that standard disclosure should not be ordered, because cross-examination using the inventor’s documents was unlikely to be probative either at all or without opening up a further costly and uncertain dispute about the personal qualities of the inventor.

In the judgment, Birss J noted that in some cases such documents might still be ordered to be disclosed, but rejected the Claimant’s contention that there was anything about the particular facts of this case that would have rendered the disclosure of the inventor’s documents useful.  Birss J held that such disclosure might be ordered in cases where the patentee is, for example:

• calling an inventor as witness;
• relying on the alleged reactions of others to support its case on inventive step; and/or
• intending to rely on its own internal documents in order to show inventive step.

Whilst none of these circumstances applied to the patentee’s case as at the date of the hearing, Birss J made clear that if the patentee changed its position in relation to any of these matters, it must tell the claimant immediately.  Indeed, Birss J considered that in such circumstances, there would be adequate time to provide the relevant disclosure after the exchange of expert reports and before trial (only a two month window).

As a result of this case it will now be more difficult to obtain disclosure on obviousness from the patentee.  A party seeking obviousness disclosure from the patentee will need to convince the Court that there is something relevant to the particular facts of the case that render such disclosure useful, when considered against the cost of so doing.  It is not yet known whether Positec will appeal the decision.  However, it will be interesting to see whether the Court of Appeal agrees that the change in CPR 31.5(7) means that Nichia is no longer binding authority.

The judgment can be found here.

Headnote:  Steven Willis, Bristows LLP