Some good folk would say that quite enough has already been said about
Tuesday's Patents Court for England and Wales ruling of Mr Justice
Floyd in Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott
(trading as Scotts Potato Machinery [2009] EWHC 2691 (Pat), an earthy
tussle over rights in machines for separating potatoes from weeds,
earth, clods, stones and haulm. Grimme alleged patent and design
infringement.
Right: nothing to do with potatoes, this is actually a machine for
recovering costs ...
Scott denied infringement and counterclaimed for (i) invalidity and
(ii) ungrounded threats to sue for patent and design infringement. Both
sides emerged as both winners and losers (see PatLit here for a brief
explanation and some idle speculation as to what the costs order might
look like), and Class 99 waxed lyrical on the analogy between the
design issues in this action and those in the 'pig fenders' case ( C &
H Engineering v Klucznik [1992] FSR 421: as David Musker notes, "for
pig read potato").

So is there anything left for the IPKat? Yes, there is. The question is
again raised as to whether the commercial success of a patent is an
indication of inventive step. Says Floyd J: "Commercial success

127. Grimme also rely on commercial success of machines made in
accordance with the invention. Commercial success can, in some fairly
rare and clear cases, amount to a secondary indication of inventive
step. The reasoning behind why this is so was explained in
characteristically lucid terms by Laddie J in Haberman v Jackel [1999]
FSR 683 at 699 to 701.

128. Grimme have provided a table of the sales which it relies on to
show commercial success. It relies on the Grimme MultiSep spiral
segment separator sales from 2000 when it was launched. It contrasts
these with sales of other separators, including the MultiSep with
paddle star wheels. Grimme contend that the MultiSep spiral segment is
made in accordance with the Patent but that the MultiSep paddle star is
not.

129. I have not found the evidence of commercial success helpful on any
issue of obviousness in this case. The basis on which I have found
claim 1 to be obvious is that a Rollastar machine with rubber clod
rollers is sufficiently adjustable that it falls within the claim. That
being so, no amount of commercial success of either MultiSep machine
can have a bearing on the issue. The same applies to claim 24.

130. So far as claim 17 is concerned, I have been able to find that
claim to be inventive by a sufficient margin not to require secondary
indicia of the kind provided by commercial success. But given the level
of sales enjoyed by the paddle star, which did not have this feature, I
do not think that it is established that commercial success is due to
the features of claim 17.

131. I think it would be unwise to attribute the success of the
MultiSep to anything disclosed in the Patent. The lips or projections
taught by the Patent are nothing like those used in the MultiSep. The
evidence showed that those used in the Patent would fill with mud and
be difficult to clean. I believe that the commercial success of the
machines relied on is likely to be due to a combination of factors
including Grimme's market position and the decline of the Pearson
business. It is impossible to distill from that evidence any indication
that the features of claim 17 played a significant role".The IPKat
doesn't like to see himself as an extremist or an iconoclast; still
less does he like to take issue with the late Sir Hugh Laddie -- but he
fervently wishes that the 'commercial success' criterion were consigned
to the scrapyard of legal history along with frankalmoign and
enfeoffments. If you look at Article 56 of the European Patent
Convention, there's a bit in it that read: "An invention shall be
considered as involving an inventive step if, having regard to the
state of the art, it is not obvious to a person skilled in the art".
The Kat knows this sounds somewhat trivial, but this looks to him as
though inventive step is measured by looking at the invention itself,
rather than the receipts and invoices. He understands that, in the days
when judges knew plenty of Latin and Greek but whose knowledge of
science was confined to apples falling from trees, it was cruel and
unfair to blind them with science, so lovely little rules of thumb
like 'long-felt-want' and 'commercial success' were devised. Surely
there's no room for them now, with specialist patent courts and even
some judges with a science background to staff them. In any event, as
one member of the Court of Appeal once pointed out (and there's a pint
of beer for whoever first posts his name below together with the case
he said it in), the absence of commercial success is as much an
indicator as the existence of commercial success (i.e. if something's
sufficiently non-obvious, people won't see how you can make it pay:
think of Frank Whittle's invention of the jet engine).

At this juncture, three things occur to the IPKat. First, we are all
supposed to be good Europeans now. So can anyone tell him how
far 'commercial success' is used as a criterion of inventive step
elsewhere in Europe?
Secondly, if we are all supposed to be looking for ways to streamline
and accelerate patent litigation, can the judges make it a point of
case management to say something like: "don't go bothering me with
evidence of commercial success in support of a patent's validity unless
I say so"?
Thirdly, it may only be a matter of impression, but 'commercial
success' generally looks to the IPKat as though it's thrown in when the
case in favour of a patent's validity is pretty weak. So, other than to
make the client happy by letting him hear his patent praised and
running the risk that he might be faced with disclosure of some of his
more delicate financial and management records if he does so,
does 'commercial success' really achieve anything?
Grimme reapers hereThe Grim Reaper here and hereCat potato here

--
Posted By Jeremy to The IPKat - IP pleasure, without the pain! on
11/05/2009 06:21:00 PM