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Saertex France SAS v Hexcel Reinforcements UK Limited (formerly Formax (UK) Limited, High Court of Justice of England and Wales, Intellectual Property and Enterprise Court (HHJ Hacon), London UK, 4 May 2016, Neutral Citation Number: [2016] EWHC 966 (IPEC)

This case concerned Saertex’s claim that its patent for a method of manufacturing fibre-based reinforcements was infringed by Hexcel, a leading manufacturer of composite reinforcements.  HHJ Hacon held the claims in suit invalid both as granted and as conditionally proposed to be amended.  Had the claims been valid, they would have been infringed.

The Skilled Person
At a case management conference, the parties had agreed that the patent was addressed to a manufacturer of reinforced plastic products i.e. composites.  Reliant on this, the Judge ordered at the CMC that each party could provide evidence from one expert in that field.  Both parties nevertheless submitted, in their skeleton arguments, that the patent was in fact addressed to a skilled team.
HHJ Hacon rejected this attempt to broaden the identity of the skilled addressee and instead found that the parties had been correct in their submissions at the case management conference i.e. only one skilled person was required.

HHJ Hacon revisited the oft-cited statement of Lord Diplock in Catnic where it was said that the patentee addresses the patent to “those with a practical interest in the subject matter of his invention”.  HHJ Hacon held that this “practical interest” referred to “an interest which is held by the putative skilled person in directly performing the invention as claimed – either by himself or, where the facts require, in co-operation with one or more other skilled persons each with different expertise”.  As such, while a person skilled in using a product made according to a patented method to manufacture something else may have a keen practical interest in the invention, it does not mean that such persons must join the skilled team.

Furthermore, HHJ Hacon cautioned that parties wishing to change their position on the identity of the skilled person or team after the relevant CMC should discuss the matter in correspondence and then raise the matter with the Court, if only in writing.  The Judge reasoned that (whilst it ultimately did not make a difference in this case),to do otherwise risked creating a discrepancy between the nature of expert evidence ordered at the CMC and the characteristics of the skilled person or team required.

Construction and Infringement
At the CMC, the Defendant had been ordered to produce a PPD describing the products which were alleged to infringe.  The Judge limited expert evidence to consideration of the nature of the skilled person, the common general knowledge and inventive step, as it was intended that all factual issues relating to infringement would be resolved by reference to the PPD.  Such limitations are typical in IPEC proceedings.

At trial, several points of construction fell to be decided, including the meaning of an “adhesive present only on the surface of the reinforcement”, which was relevant to the question of whether the claims as conditionally proposed to be amended were infringed.  The Claimant submitted that on a purposive construction, the skilled person would interpret “only on the surface” to mean that the administration of the adhesive could not penetrate the spaces between the fibres to such an extent that it would lead to the thickness of the reinforcement decreasing anywhere across its surface.  However, the Defendant’s PPD had failed to address the question of how far the adhesive penetrated its products and the effect of that penetration on fibre adhesion.

The Judge noted that the burden of proof had been on the Claimant to raise the deficiency in the Defendant’s PPD and ensure that the issues of fact necessary to determine infringement were before the Court.  As such, had this been the end of the matter, the Judge accepted that he would have been forced to conclude that the Claimant had not proved its case on infringement.  However, the Defendant had handed up a “Supplemental Note on Construction” at trial in which it conceded that if, on the Claimant’s construction, the claims encompassed the adhesive extending sufficiently far into the material that it has no practical effect on the performance of the reinforcement, the Defendant’s products fulfilled the integer.  In view of the Defendant’s concession, the claims as conditionally proposed to be amended were held to be infringed.

In the course of his assessment, the Judge provided a reminder of the law relating to so-called “free beer” claims as well as the role of technical prejudice in the assessment of inventive step.

“Free Beer”
The Defendants submitted that Claim 1 as granted amounted to a “free beer” claim. i.e. one which is defined by reference to the problem and which, as a result, covers solutions to the problem which are yet to be discovered and which are not enabled by the Patent.  Lord Hoffmann gave a famous example of such a claim in Lundbeck v Generics as:  “A substance which is ten times harder than diamond”.  In this case however, HHJ Hacon held that the claim was limited to a method of making a treated reinforcement consisting of essentially one simple step using a repositionable adhesive.  Noting that that there is no requirement in law that all varieties of an element of a claim that could ever exist must already have been discovered, he held that all variations of that one step were enabled  and as such the “free beer” allegation was not made out.

Technical Prejudice
In the course of submissions on inventive step, counsel for the Claimant suggested that at the priority date, the skilled person would have rejected out of hand the idea which was central to the invention: the use of a repositionable adhesive to allow him to reposition his reinforcement.  The invention was thus overcoming an alleged technical prejudice in the mind of the skilled person.  HHJ Hacon noted that basing an invention on a prejudice is possible but seldom easy.  He referred to the “intellectual oddity” associated with such arguments identified by Jacob LJ in Pozzoli: “you cannot reject an idea as technically unfeasible or impractical until you have had it first.  And if you have had it first, how can the idea be anything other than old or obvious?”

With reference to the case law of the Technical Boards of Appeal, HHJ Hacon emphasised that the patentee must overcome a high standard of proof in demonstrating that the prejudice relied upon is widely or universally held by the person skilled in the art, meaning the patentee will typically require “evidence from a document such as a standard textbook or, if none exists in the relevant field, other documents which demonstrate the widespread nature of the false belief”.  HHJ Hacon concluded that the evidence before him came nowhere near to satisfying this standard.

The judgment is available here.

Headnote by Steven Willis, Bristows LLP