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Patents

B Ms P Sita: nothing ordinary about her

Enercon (India) Limited (Enercon) v Alloys Wobben, OrderNo 174 of 2013, Intellectual Property Appellate Board,India

In 2013 the Intellectual Property Appellate Board (IPAB)issued several decisions, including the one discussed inthis note, whereby it sought to raise the standard of non-obviousness of an invention in India by ruling that thelegal fictitious person who serves as a reference for deter-mining or evaluating whether an invention involves aninventive step and thus is non-obvious is Ms P Sita (aperson skilled in the art, who has more than averageknowledge of the state of the art and who also has somecommon sense). Such person is not at all ordinary and isnot the same as Mr PHOSITA (the person having ordin-ary skill in the art) as referenced by US patent law andwho is ordinary by definition.

Legal contextThe person skilled in the art is the legal fictitious person whoserves as a reference for determining whether an inventioninvolves an inventive step. The person skilled in the art isalso used as a reference in determining sufficiency of disclos-ure, ie whether an invention is sufficiently disclosed in thedescription of a patent, or in determining whether two tech-nical means are equivalent when evaluating infringement.

In Europe, the ‘person skilled in the art’ is presumed to be askilled practitioner in the technical field of the invention.Such person has average knowledge and average ability andpossesses general common knowledge in the art as at the pri-ority date of the invention. The person has access to all docu-ments which form the ‘state of the art’, and in particular hasaccess to the documents cited in the search report. He has themeans and ability to carry out routine work and experimenta-tion in the technical field of the invention. He is also involvedin constant development in his technical field and is capableof looking for suggestions to neighbouring and general tech-nical fields or, in certain cases, even to remote technical fields,if prompted to do so. In certain decisions, such as T 164/92(ECLI:EP:BA:1993:T016492.19930429 || ROBERT BOSCHVs. Siemens) and T 986/96 (ECLI:EP:BA:2000:T098696.20000810 || M.A.I.L.CODE INC v NEOPOST LTD), theEuropean Patent Office has stated that the person may beequivalent to a group of persons, such as a research team.

In the United States, in the landmark case of KSR Int’l Cov Teleflex, Inc (550 US 398 (2007)) Justice Kennedy raised

the bar for the PHOSITA, stating that he is a person of or-dinary creativity, not an automaton. Thus the US SupremeCourt acknowledged the opinion expressed in severalfederal circuit cases that the PHOSITA possesses commonsense and could find motivation implicitly in the docu-ments that formed the state of the art.

The United Kingdom also has its own definition of sucha fictitious person. In Technograph v Mills & Rockley [1972]RPC 346, such person was described as:

a skilled technician who is well acquainted with workshoptechnique and who has carefully read the relevant literature.He is supposed to have an unlimited capacity to assimilatethe contents of, it may be, scores of specifications but to beincapable of a scintilla of invention. When dealing with [in-ventive step], unlike novelty, it is permissible to make a‘mosaic’ out of the relevant documents, but it must be amosaic which can be put together by an unimaginative manwith no inventive capacity.

In Rockwater Ltd v Technip France SA & another [2004]EWCA Civ 381, he was said to be

very boring—a nerd. The no-mosaic rule also makes himvery forgetful. He reads all the prior art but unless it formspart of his background technical knowledge, having read (orlearnt about) one piece of prior art, he forgets it beforereading the next.

In India, English and European case law has very strongpersuasive value. In order to examine whether an inventionhas an inventive step, the Intellectual Property AppellateBoard (IPAB), in various decisions, has endorsed the testprescribed by the decisions issued by England and Wales inWindsurfing International Inc v Tabur Marine (GB) Ltd[1985] RPC 59 and Pozzoli Spa v BDMO SA & Another[2007] EWCA Civ 588. The IPAB has also endorsed theEuropean approach of determining inventive step throughthe ‘problem-solution approach’.

However, in India, one of the issues in almost all revoca-tion proceedings is determining who the person skilled inthe art is. In the current case, this was the crucial issue.

FactsIn the case under discussion, Enercon filed for the revoca-tion of patent No 200249, ‘A wind power installation andprocess for the operation of the same’, granted to AloysWobben, on the grounds that the invention claimed in thepatent was anticipated and would have been obvious to aperson skilled in the art.

Having mapped the features of the independent claim ofthe patent against the cited prior art, the IPAB found that

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the independent claim was not anticipated. The decisiveissue was thus whether the independent claim was obviousto a person skilled in the art due to lack of an inventive step.

AnalysisThe applicant had argued that the person skilled in the art isan electronic engineer or an academic researcher in the samefield. The respondents, backed by an expert’s opinion, sub-mitted that the person of ordinary skill in the art shouldbelong to an industry in India and the knowledge suchperson would possess should be a cumulative result ofvarious factors, such as publications, know-how, planning,manufacturing and marketing. The respondents argued thatthe applicant had provided no evidence to establish who aperson of ordinary skill in the art is, and had failed to estab-lish what his the experience or specialization is. The respon-dents argued that it was not sufficient to state that anyelectronic engineer or any academic researcher in the relevantfield is a person skilled in the art, and that the onus lies onthe applicant to establish whether the person skilled in the arthas three years of experience, or 20. The respondents statedthat the applicant’s sweeping statement, implying that anyelectronic engineer may be considered a person skilled in theart, without identifying the relevant skill set, was incorrect.

The applicant then stated that the respondent’s expertlacked qualification to depose in this matter as the expert,who was from the field of structural sciences, lacked bothknowledge and experience in the field of invention and thathis opinion could not be relied upon.

While deciding the person skilled in the art for thecurrent case, the IPAB referred to the Delhi High Court’slandmark decision in F. Hoffmann-La Roche Ltd & anotherv Cipla Ltd (2012 (52) PTC 1 (DEL)) in which the Court-stated:

Therefore the same cannot be read to mean that there has toexist other qualities in the said person like un-imaginarynature of the person or any other kind of person having dis-tinct qualities

and

Was it for practical purposes obvious to a skilled worker inthe field concerned, in the state of knowledge existing at thedate of the patent to be found in the literature then availableto him, that he would or should make the invention thesubject of the claim concerned?

The IPAB also referred to its earlier Order ORA/08/2009between same parties, and reiterated that the Indian PatentAct neither limits the skill of ability of the person skilled inthe art nor defines him as possessing certain qualities.Rather, the obviousness test is made with reference to aperson skilled in the art and not one who is residing in Indiaperforming experiments with local materials and in the la-boratories specified. The IPAB refused to read into the defin-ition of person skilled in the art words that are absent from

the statute. Rejecting the respondent’s argument, the IPABstated that the Indian Patent Act stated that an inventivestep is what is ‘not obvious to a person skilled in the art andnot to an Indian skilled in the art working in an Indian la-boratory’. The IPAB highlighted the fact that the IndianPatent Act had territorial limitations in other contexts, suchas enablement, but not with reference to obviousness. TheIPAB also emphasized that the Act does not describe theperson skilled in the art as either ‘ordinary’ or ‘average’.

Unlike the EPO, which, in cases such as T 60/89 (ECLI:EP:BA:1990:T006089.19900831 || Harvard. v Hoechst,Unilvever, Gist-Brocades), T 694/92 (ECLI:EP:-BA:1996:T069492.19960508 || Mycogen Plant Science, Inc.v Unilever N.V. & Others) or T 373/94 (ECLI:EP:-BA:1998:T037394.19980731 || Mallinckrodt, Inc. (a Dela-ware corporation) v Arzneimittel GmbH Apotheker Vetter& Co. Bracco S.p.A), has stated that the skilled person musthave the same level of skill while he is assessing inventivestep and while he is assessing sufficient disclosure, the IPABmakes it plain that, under the Indian Patent Law, in thecontext of enablement, the person covered by the descrip-tion of the patent application is a person ‘who has averageskill and average knowledge’. However, the attributes ofaverage skill and average knowledge have not been assignedby the statute to the person who should assess the inventivestep. Thus, according to the IPAB, the Indian Patent Act dis-tinguishes between the person skilled in the art (who deter-mines whether an invention involves an inventive step) andthe person who has average skill (who determines whetherthe disclosure of a patent application is sufficient).

The IPAB also stated that it is highly important that, in de-termining obviousness, a dullard is not imagined to be theperson skilled in the art who has ‘ordinariness’ inherent inhim. The IPAB also recognized that this may raise the bar forobviousness in India as compared to other jurisdictions.

The IPAB then referred to its earlier decision in SankalpRehabilitation Trust v Hoffmann–Roche (OA/8/2009/PT/CH) in which the IPAB, while defining the person skilled inthe art, had stated that such a person has read the prior artand knows how to proceed in the normal course of researchon the basis of what he knows of the state of the art. Hedoes not need to be guided step-by-step, and can work hisway through. He reads the prior art as a whole and allowshimself to be taught by what is contained in it. He neitherpicks out the ‘teaching towards passages’, as does the chal-lenger, nor does he seek out the ‘teaching away passages’, asdoes the defendant.

The IPAB seemed to agree with the decision of the USSupreme Court in KSR Int’l Co v Teleflex, Inc, 550 US 398(2007) that, when determining obviousness,

the question is not whether the combination was obvious tothe patentee but whether the combination was obviousto the person skilled in the art. Under the correct analysis,

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any need or problem known in the field of endeavor at thetime of invention and addressed by the patent can provide areason for combining the elements in the manner claimed.

Acknowledging that the obviousness test is the most fre-quently debated issue in patent litigations, the IPAB statedthat it is better to identify the person skilled on the artthrough pleadings and evidence.

The IPAB thus concluded that the Indian Ms P Sita hasmore than average knowledge of the state of the art and isalso possesses common sense. Indian law expects the non-obviousness to be tested against Ms P Sita and not the USPHOSITA or the European POSITA, who are both ordinaryby definition.

Practical significanceThe IPAB’s decision regarding the person skilled in the artdefinitely raises the bar for non-obviousness in India.Further, the IPAB has specified that the person who deter-mines obviousness is different from the person who deter-mines sufficiency of disclosure.

In Schlumberger Holdings Limited v Electromagnetic Geo-services [2010] RPC 33, [2010] EWCA Civ 819, Lord JusticeJacob stated that it was a fallacy to assume that the skilledperson is the same in each case, since that assumes that‘the art’ is necessarily the same both before and after theinvention has been made. Lord Justice Jacob also addedthat such assumption was correct in most cases, and the as-sumption was invalid only if the inventions were art-chan-ging. So having different persons for assessing inventivestep and sufficiency of disclosure is not an alien concept.However, as per the IPAB, in India, the person assessing in-ventive step and the person assessing sufficiency of disclos-ure is always different, as mandated by the Indian statutes.

Thus the IPAB’s decision raises the bar not only for non-obviousness but also for sufficiency of disclosure as theperson assessing sufficiency of knowledge is of average skilland has average knowledge.

Someshwar BanerjeeLakshmikumaran and Sridharan AttorneysEmail: someshwar.banerjee@gmail.com

doi:10.1093/jiplp/jpt202

B Clarifying the law relating to double jeop-ardy in patent litigation

Resolution Chemicals Ltd v H. Lundbeck A-S [2013] EWCACiv 924, Court of Appeal, England and Wales

The Court of Appeal of England and Wales has simplifiedthe test relating to privity of interest, enabling litigantsto know the circumstances in which a party will be pre-vented from re-litigating a matter.

Legal context and factsLundbeck, a Danish pharmaceutical company, owned aEuropean patent which was subsequently the subject of asupplementary protection certificate (SPC). The SPC relatedto escitalopram, a single enantiomer of the compound cita-lopram, a drug used for the treatment of depression. TheUK equivalent of the patent was ultimately declared invalidin revocation proceedings in 2005. Before and during thelitigation, the claimant, Resolution, was part of the ArrowGroup, the holding company of Arrow Genetics—one of thegeneric pharmaceutical companies that had brought the2005 proceedings against Lundbeck. Resolution, now an in-dependent company, wished to bring invalidity proceedingsagainst the SPC, relying on the invalidity of the patent.Lundbeck argued that Resolution was precluded from bring-ing the action because of the privity of its interest withArrow Generics, which was in turn estopped from bringing asimilar action as a result of the judgment in the 2005 pro-ceedings. Was Resolution thus precluded from bringing itsproceedings? In the High Court, the judge held that ArrowGenerics would be precluded by issue estoppel and the doc-trine of abuse of process from challenging the validity of theSPC on the ground that the patent was invalid.

AnalysisFloyd LJ, speaking for a unanimous Court of Appeal, statedthat privity of interest provided an exception to the generalprinciple of the law of estoppel in that the estoppel bindsonly the parties to the previous litigation. He stated that therules of law compendiously described as estoppels were verybroadly based on the principle that nobody should be vexedtwice in the same cause. So, for example, in cause of actionestoppel, party A would not be allowed to litigate the ques-tion of whether a cause of action existed with a counterpartyB more than once. Floyd LJ explained that the successful liti-gant and the public had an interest in this being the law:first, the litigant has an interest in not being vexed twice inthe same cause; secondly, the public also has an interest inensuring that the scarce resources available for resolving dis-putes are used efficiently. There was, however, no reason inprinciple why a different party, C, who had the same com-plaint against B, should not be free to litigate the same ques-tion. Floyd LJ noted that, notwithstanding the fact that Amight have lost a first action, fairness normally demands thatC should not be precluded by the manner in which A con-ducted the first action from bringing his own action, callinghis own evidence and challenging the evidence called by B.

In the court’s view, these principles applied to actions forrevocation of patents as they do to any other type of action:while the final revocation of a patent was a judgment in remand therefore could be relied on by the world at large, a judg-ment that a patent is valid determines issues only betweenthe parties to the revocation action. Floyd LJ explained that

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