27 May 2012

Patents: Unilever v Johnson

The most remarkable aspect of Unilever Plc v S C Johnson & Son Inc [2012] EWPCC 19 (25 May 2012) is that this action took place in the Patents County Court rather than the Patents Court or before the Comptroller.  As the Patents County Court Guide notes at paragraph 1.3
"the Patents County Court was established to handle the smaller, shorter, less complex, less important, lower value actions and the procedures applicable in the court are designed particularly for cases of that kind. The court aims to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, are not deterred from innovation by the potential cost of litigation to safeguard their rights."
Judge Birss QC remarked at paragraph [4] of his judgment:
"One might ask whether a case between two multinational corporations is suitable for the PCC. Since neither side suggested the matter should be transferred, the question did not arise. I can say this much. In terms of the issues to be decided, the case is clearly suitable for the PCC. There has been no disclosure and the evidence consists only of reports from in-house experts on both sides. The legal representation consisted of junior intellectual property counsel (Andrew Norris and Simon Malynicz) instructed by firms of patent attorneys (Potter Clarkson and Carpmaels & Ransford) for Unilever and SC Johnson respectively. The trial took 1 ½ days. As far as I can tell it has been run expeditiously and without major cost."
As I said in my latest solicitors' newsletter, I have been a fan of the PCC ever since the days of Judge Ford.    It  is encouraging that two multinationals (which could no doubt afford to litigate anywhere) have confidence in this tribunal.

The claim before Judge Birss was for revocation of two patents, namely GB 2 389 547 and GB 2 403 169. entitled "Automated cleansing sprayer" on grounds of anticipation and obviousness. The latter patent was divided out from the application which had led to the former.   The patents related to the cleaning of bath and shower enclosures which become mildewed or coated with soap, hard water scale and the like. Normally removing these deposits requires a human being. The invention was a device for automatically spraying the walls of the enclosure with cleanser. When a user is about to leave the shower, he or she presses a button on the device (which is probably hanging from the shower head) and then leaves, closing the shower door or curtain behind. The device counts down for (say) 20 seconds and then sprays the walls with cleanser, stopping automatically after a period. The device can work with commercially available bottles of cleanser and obviates the need for a person to remember to spray the shower after use.

The judge construed the claims in accordance with Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 169, [2005] RPC 9, [2004] UKHL 46, (2005) 28(7) IPD 28049, 2005] 1 All ER 667 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8.  Referring to Synthon BV v. Smithkline Beecham plc [2005] UKHL 59, [2006] 1 All ER 685, [2006] RPC 10 and General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 he directed himself that the test for anticipation is strict.   He said, at paragraph [84] "To deprive a claim of novelty the prior art must disclose something with (sic) the claims."  I assume the judge meant "within the claims".  As for obviousness he applied Lord Justice Jacob's methodology in Pozzoli Spa v BDMO SA and another [2007] EWCA Civ 588, [2007] FSR 37:
"(1) (a) Identify the notional person skilled in the art;
      (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?"
His Honour identified the "person skilled in the art" at paragraph [107] as "someone working on household care products in a company developing and selling such goods" who is looking to improve cleaning products in general. Earlier in his judgment, at paragraph [14] he said that such a person (or rather a team) would
"have experience of bathroom care products and also related products like cleaning products, air fresheners, household pest control products and fragrances. They would have a general knowledge over a broad range of the technologies needed to develop mass produced cleaning appliances incorporating electronic controls. That will include general knowledge of spraying, pumps, vents, seals, electronic controls, batteries and materials selection."      
However, those persons would not have specialist expertise in spraying or electronics.. Finally, the judge noted that
"In the real world I strongly suspect that the people working in household care in FMCG (fast moving consumer goods) companies are highly innovative and are paid to invent and innovate. However I remind myself that the legal construct – the person skilled in the art – has no inventive faculty. He never misses the obvious and always misses the inventive step."
The one big issue in dispute appears to have been over common general knowledge and whether a particular text book on spraying formed part of it.  That particular text book was in the claimant's library but not in the defendant's. Its absence from the defendant's library persuaded the judge that the book was not common general knowledge (see paragraph [22]) but His Honour regarded the text as "representative of the kind of technical resource a skilled person would know existed and which would be consulted if they had already decided to look seriously at options in spraying technology."

After considering the prior art the judge concluded that 169 was wholly invalid for want of novelty and an inventive step and that most but not all of the claims of 547 were invalid for obviousness.  Should anyone wish to discuss this case with me he or she should  call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

2 comments:

Mildred Alugu Bejuka Esq. said...

Counsel, that's impressive.
Thanks

Jane Lambert said...

Thanks for your kind words. IP litigation used to be very expensive in England which is possibly why the country of Newton and the first industrial revolution trailed its continental neighbours as well as countries like the USA, Japan and China in the number of European patent applications. The Patents County Court under a very dynamic young judge provides a high speed and low cost forum for the resolution of IP disputes. The reason I invited you to connect on Linkedin is that I am interested in IP in emerging economies, particularly West Africa where I have connections. I hope to learn from you and your colleagues in due course.