UK: EDS v Synergy and Gravitas [2014] EWHC 1306

Last Updated: 3 June 2014
Article by Rachel Taylor and Jennie Cox

This recent decision of the Intellectual Property Enterprise Court (IPEC) demonstrates the importance of parties being clear in their pleadings about the technical field of the skilled person when seeking to invalidate a patent for obviousness in the UK. It also highlights problems that can arise in selecting expert witnesses.

Facts

Environmental Defense System Ltd ("EDS") sued Synergy Health plc ("Synergy") and Gravitas (International) Limited ("Gravitas") for infringement of its patent covering a method of manufacturing barrage units, which are used for flood defences in a similar way to sandbags. The barrage units of the patent comprise absorbent pads to absorb flood water.

Synergy is a manufacturer of healthcare products, including incontinence pads. Synergy had been making absorbent pads according to the method described in the patent since 1994. Until at least 2007, Synergy's pads had been used solely for healthcare purposes. Between July 2008 (before the priority date of the patent) and June 2011, Synergy manufactured barrage units according to the method of the patent and supplied them to EDS by agreement.

Gravitas is a manufacturer and supplier of flood defence products. A number of the products which were made and sold by Gravitas included absorbent pads supplied by Synergy which had been manufactured according to the method described in the patent.

Both Synergy and Gravitas made a counterclaim of invalidity. Synergy also pleaded prior use and lack of entitlement. At the case management conference (CMC), it was decided that since all the points turned on the issue of inventiveness, this should be the subject of a trial as a preliminary point, thereby saving cost and time.

Technical field of the skilled person

The parties did not dispute that the method of manufacture of absorbent pads described in the patent was known for healthcare purposes before the priority date. The issue in question was whether it would have been inventive to use this known method in a process for making barrage units.

Generally in the UK, inventiveness is judged by whether the claimed invention is obvious to a skilled person in view of a single piece of prior art in the light of his common general knowledge. In this case, His Honour Judge Hacon discusses differences between UK and EPO procedure regarding identification of the skilled person. The approach in the EPO is that the skilled person considering inventiveness must come from the same technical field as the prior art unless there is an indication in that prior art pointing to another technical field. In contrast, in the UK the skilled person considering inventiveness could come from any technical field but the party seeking to invalidate a patent needs to nominate the technical field from which the skilled person is drawn. The selection of the technical field dictates the common general knowledge of the skilled person. Thus, the patentee defending against an allegation of invalidity for lack of inventiveness needs to address the extent of the common general knowledge of the skilled person drawn from the technical field selected by the defendant.

By the time of the CMC, Synergy's grounds of invalidity had made no mention of the skilled person. Gravitas's grounds stated that the skilled person was a manufacturer of water-absorbing products without saying whether he came from the personal hygiene or flood defence industry. EDS's defence against the invalidity counterclaim stated that the skilled person was interested in environmental protection with a focus
on barrage units.

Expert witnesses

Judge Hacon gave permission for each side to call one expert witness but did not state the technical subject matter to be addressed by the experts.

Following the CMC, and in preparation for trial, EDS called an expert in the personal hygiene business with expertise in absorbent pads for that purpose, along the lines proposed in Gravitas's pleaded case. EDS's expert was unfamiliar with the field of flood defences. Meanwhile, Synergy and Gravitas abandoned Gravitas's pleaded case and called an expert in the field of flood management

As a consequence, when it came to the trial EDS did not have an expert witness who could provide testimony about the common general knowledge of a skilled person in the technical field nominated by the defendant. The Judge expressed some sympathy with EDS, who had called their expert in response to Gravitas's pleadings, but commented that EDS had not challenged the skilled person's technical field at the CMC.

Outcome

The Judge had to make a decision based on the arguments presented at the trial. He found that a skilled person interested in how barrage units can be made, would have found it obvious to include the prior art personal hygiene pads in a barrage unit thus arriving at the claimed method without inventive skill and so the claims of the patent were found to lack inventive step.

Comment

It is clear from the Judgment that Judge Hacon regretted not appreciating the discrepancy in the technical fields proposed by EDS and Gravitas at the CMC. This case illustrates that by the time of the CMC, the parties' contentions with regard to the technical fields of experts must be clear so that the court is in a position to rule on whether expert evidence may be given and to identify the technical field to which that evidence relates. From the CMC onwards these matters should be fixed. This case also highlights the importance of selecting the correct expert witnesses, particularly in IPEC proceedings where the number of witnesses that may be called is restricted.

Need advice?

For more information, please contact email@carpmaels.com.

Carpmaels & Ransford LLP is a leading firm of European patent and trade mark attorneys based in London. For more information about our firm and our practice, please visit our website at www.carpmaels.com.

This Briefing Note was first published in the IAM IP Newsletter.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.