UK: UK Patents Court Considers Correct Approach To Disclosure In Relation To Obviousness In Positec v Husqvarna

In a recent case, Positec Power Tools (Europe) Ltd and others v Husqvarna AB [2016] EWHC 1061 (Pat), the UK’s Patents Court has considered the correct approach to disclosure under the Civil Procedure Rules (CPR) in their current form in patent proceedings in which obviousness was in issue. In doing so, it declined to make an order for disclosure on the grounds that it would not be in accordance with the overriding objective.

The dispute between Positec and Husqvarna relates to robotic lawnmowers. Husqvarna owns a patent, EP (UK) 1 512 053, which claims a method of operating a robotic lawnmower device under the guidance of an electronic directing system. Positec wishes to sell its own robotic lawnmowers in the UK. To clear the path, it issued proceedings against Husqvarna for revocation of the patent on the grounds of novelty and obviousness, and/or a declaration of non-infringement in respect of its own robotic lawnmowers.

This judgement, by Mr Justice Birss, is on a preliminary matter considered at the case management conference (CMC). In its Disclosure Report, Husqvarna indicated that it would disclose documents relating to validity in the key four-year window, ie those documents dated between two years before and two years after the earliest priority date (paragraph 6.1(2) of Practice Direction 63 of the CPR). However, by the time of the CMC indicated that it was not willing to give such disclosure. The Court therefore had to decide whether disclosure should be ordered.

At the CMC, arguments were presented on the correct approach to standard disclosure (CPR 31.5) and how the approach applies to the question of whether to order the disclosure of documents arising from the making of an invention in an obviousness case. Mr Justice Birss referred to the development of the current approach to disclosure, in particular Jacob LJ’s comments in Nichia v Argos [2007] EWCA Civ 741. In Nichia, Jacob LJ discussed how obviousness is objective, and the knowledge and behaviour attributed to the skilled person is not the same as a real person. The skilled person only foresees what is obvious because, unlike a real person, they take no inventive steps. Therefore the evidence of what the inventor actually did can be of little value and may be tainted by hindsight. It is secondary evidence, rather than primary evidence, such as that provided by a suitably qualified expert witness. In reality, disclosure from a patentee about what an inventor actually did may be a costly distraction that is only valuable in the minority of cases.

Mr Justice Birss also considered his unique experience in the Intellectual Property Enterprise Court (IPEC). In the IPEC, there is no automatic right to disclosure, but it is dealt with on an issue-by-issue basis using a cost/benefit test. There is no prima facie assumption in the IPEC that disclosure will be ordered (and it generally is not), but the IPEC is still a successful forum.

He also referred to CPR 31.5(7), which details the type of order the Court may make in respect of disclosure, regarding the overriding objective and the need to limit disclosure to that which is necessary to enable the case to be dealt with justly. He held that the fact that CPR 31.5(7) lists six different types of order open to the Court means that standard disclosure is no longer the default option. The nature of patent disputes means that the question is, essentially, whether to order disclosure on an issue-by-issue basis (CPR 31.5(7)(c)). In this case, the only live issue was obviousness, and therefore whether it would be in accordance with the overriding objective to make such an order.

The key factors to consider in this case were the likely probative value of such material and the cost of the disclosure exercise in the context of the overall cost of the proceedings and value of the case to the parties. Taking the second, and perhaps simplest of the considerations first, he held that the value of the case was likely to be in the millions – it was not a case of very low value but nor was it at the high end of cases in the Patents Court, like cases relating to standard essential patents or a blockbuster pharmaceutical. The parties estimated that their costs would be £0.8-£1.1 million on either side, and the Court estimated that the likely cost of disclosure around £90,000 – so neither substantial nor trivial in context. However, in the circumstances of these proceedings, the key consideration was the likely probative value of the material – commercial success was not pleaded, Husqvarna does not intend to call the inventor, nor does it plan to rely on its own internal documents in support of an inventive step. These points argue against disclosure. Positec argued that it would use the inventor’s documents in cross examination, and that on the facts of the case disclosure of these documents would be useful to establish whether the skilled person would think in the same way as the inventor. The Court held that it was, at this stage of the proceedings, unclear if it was in dispute that the skilled person would think in such a way, and if the point is not currently in issue, there is no reason to order disclosure in respect of it. It would be a waste of time and money to do so at this time. If the issue arose later, there would be room in the timetable to allow for disclosure. Mr Justice Birss also commented that the fact that Husqvarna changed its mind about disclosure did not, in his view, mean it is trying to hide something.

In summary, the Court held that it was not satisfied that an order for standard disclosure, or one for issue based disclosure on obviousness, would be in accordance with the overriding objective: “This is an ordinary obviousness case with no special features which might make such disclosure worth the cost.”

This decision demonstrates that a party seeking disclosure must be able to show that it is likely to result in useful material that is of relevance to the issues in the case. Given the move towards Judges becoming more actively involved in case management at an early stage of proceedings, there is a real possibility that the scope of disclosure may become more limited in the future, thereby reducing the costs of UK patent litigation

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.

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

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

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions