Patents - Advanced Bionics AG v Med-El Elektromedizinische

 

Jane Lambert

Court of Appeal (Lady Justice Thirwall and Lords Justices Arnold and Birss) Advanced Bionics AG and  Another v Med-El Elektromedizinische Gerate GmbH [2023] EWCA Civ 637 (9 June 2023)

This was an appeal against Mr Campbell Forsyth KC's revocation of European patent (UK)  3 138 605 entitled "MRI-safe disk magnet for implants" ("the patent") on grounds of obviousness over PCT application WO 03/081976 A2 entitled "Reducing Effect of magnetic and electromagnetic fields on an implants magnet and/or electronic" invented by Martin Zimmerling ("Zimmerling") (see Advanced Bionics AG and another v Med-El Elektromedizinische Gerate GmbH [2022] EWHC 1345 (Pat) (1 June 2022)). The defendant, Med-El Elektromedizinische Gerate GmbH, ("Med-El") applied for permission to appeal which was granted by Lord Justice Arnold.  The appeal was heard by Lady Justice Thirwall, Lord Justice Arnold, and Lord Justice Birss on 23 and 24 May 2023.  At the end of the hearing, the Court announced that the appeal would be dismissed for reasons to be given in writing later.  Those reasons were delivered by Lord Justice Arnold with short concurring judgments from Lady Justice Thirwall and Lord Justice Birss on 9 June 2023 (see Advanced Bionics AG and another v Med-El Elektromedizinische Gerate GmbH [2023] EWCA Civ 637). 

Mr Forsyth's Findings

Lord Justice Arnold began his judgment by referring to Mr Forsyth's findings on the skilled addressee at para [4] of his judgment, the parties' experts at para [5], the common general knowledge between [6] and [21] and Zimmerling between [22] and [40].  He considered the patent between [41] and [54], claim 1 of the patent at [55] and Mr Forsyth's judgment at [70].

Grounds of Appeal

Med-El's grounds of appeal were as follows:

• Ground 1: The judge "erred in principle by failing to appreciate that a core part of the invention of the Patent was to redefine the problem which was addressed by the prior art". 
• Ground 2: The judge "erred in principle in failing to appreciate the role that hindsight played in accepting a path to obviousness consisting as [sic] discrete steps which would not, and could not, have been taken without prior knowledge of the ultimate multi-faceted solution presented by the Patent". 
• Ground 3: "[H]ad the judge correctly understood [the] multi-faceted nature of the invention that required insight as to the final solution, he would have appreciated Med-El's expert's reluctance to accept the stepwise approach being pressed upon him in cross-examination. Having failed so to appreciate, the judge wrongly criticised Med-El's expert and afforded his evidence insufficient weight". 
• Ground 4: The judge "erred in law by requiring that Med-El show that the entire industry knew of the prior art to support a case of long-felt want. Had [the judge] not so erred, he would have found that the secondary evidence supported a finding of inventive step".

Lord Justice Arnold said that grounds 2 and 3 amounted to a contention that Mr Forsyth had failed to apply the warning of Lord Diplock in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 362:

"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."

That contention was not pursued in argument. Instead, Med-El argued that Mr Forsyth had erred in principle in that he had isolated the teaching from Zimmerlingt at too high a level of abstraction ignoring important detail that provided context and purpose. Lord Justice Arnold referred to that ground as "Ground 0".

Appeals on Obviousness

Referring to paras [78] to [81] of Lord Hodge's judgement in Actavis Group PTC EHF and others v ICOS Corporation and another (2019) 167 BMLR 1, [2019] RPC 9, [2019] Bus LR 1318, [2019] UKSC 15, [2020] 1 All ER 213, Lord Justice Arnold said at para [71] of his judgment in Advanced Bionics that obviousness involves a multi-factorial evaluation and therefore the Court of Appeal is not justified in intervening in the absence of an error of law or principle on the part of the judge.  Citing paras [72] to [82] of Re Sprintroom Ltd [2019] EWCA Civ 932, [2019] BCC 103, he added that Lord Hodge's remarks accorded with the general approach of the Court of Appeal to appeals against evaluative decisions.

Ground 0

Lord Justice Arnold said that Ground O was Med-El's principal ground of appeal.  It referred to para [158] of Mr Justice Floyd's judgment in Ratiopharm GmbH v Napp Pharmaceutical Holdings Ltd [2008] EWHC 3070 (Pat), [2009] RPC 11, (2009) 32(3) IPD 32019:

"… allegations of obviousness in the light of common general knowledge alone need to be treated with a certain amount of care. They can be favoured by parties attacking the patent because the starting point is not obviously encumbered with inconvenient details of the kind found in documentary disclosures, such as misleading directions or distracting context. It is vitally important to make sure that the whole picture presented by the common general knowledge is considered, and not a partial one."

The appellant argued that the principle applied by analogy to cases such as the current one where there was only one item of prior art.

Lord Justice Arnold disagreed.  It could not be said that Mr Forsyth had ignored the detail in the prior art since he had set out a succinct but comprehensive summary of all the relevant parts of Zimmerling in his judgment. Between para [79] and para [87] Lord Justice Arnold addressed Med-El's criticisms of the deputy judge's conclusions each of which he rejected.

Ground 1

The learned Lord Justice said that Ground 1 depended on the contention that a core part of the invention was to redefine the problem addressed by Zimmerling. Med-El had made little attempt to pursue that contention at trial. Instead, it argued that Mr Forsyth had reached the wrong conclusion in assessing obviousness,   

As that argument did not allege an error of principle the Court of Appeal was not bound to explore it.  However, Lord Justice Arnold did consider each of the appellant's criticisms of Mr Forsyth's judgment individually before rejecting them seriatim.

Ground 4

Med-El submitted that Mr Forsyth had erred in law by requiring it to show that Zimmerling was "well known to all the relevant parties in the industry" in order to support a case of long-felt need.   Lord Justice Arnold said that he might have been disposed to accept that submission had there been evidence of such need but that had not been the case as there were other solutions.   Even if there had been a long-felt need,  the deputy judge would not have found an inventive step unless it was supported by expert evidence.  That was a view that he was entitled to take.

The Opposition

Advanced Bionics AG had opposed the patent under art 99 of the European Patent Convention, The opposition came on before the Technical Board of Appeal of the European Patent Office after the trial in England.  In Case Number: T 0732/21 - 3.4.01 of 28 Septy 2022 the Board upheld the validity of the patent. Med-El relied upon that decision in support of its case that the deputy judge had erred. Lord Justice Arnold rejected that contention at para [96] of his judgment:

"It is often possible for two tribunals faced with a finely-balanced issue as to obviousness to reach opposing conclusions without either tribunal making an error. In the present case, the Board of Appeal did not have the evidence of the expert witnesses as to the common general knowledge which was before the judge. For example, there is no mention in the Board's decision of the fact that it was common general knowledge that a diametrically magnetised magnet can be rotated by an external magnetic field. Nor is there any discussion of the reasons accepted by the judge as to why, based on their common general knowledge, the skilled team would want, if possible, to retain the conventional disc-shaped internal magnet. Thus the fact that the Board reached a different conclusion is more than sufficiently explained by the fact that it did not have the same evidence as the judge."

Comment

There are three important lessons from this appeal.   The first is the reminder that in a multi-factorial evaluation such as an appeal against a finding of obviousness, an appellate court is justified in intervening only where the tribunal below has erred in law or principle.  The second lesson is to beware of hindsight when considering the differences between the invention and the nearest prior art.   That must have been what Lord Justice Arnold had in mind when he referred to Lord Diplock's well-known warning in Technograph at para [74] of his judgment.  The third is that decisions of other tribunals do not need to be followed where the evidence before them was different from the evidence before the court in England or Wales.

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