There were two issues on appeal. The more straightforward, and in this Kat’s view, the more interesting point, was obviousness over an article referred to as “Fox.” Floyd J had held that the invention was not obvious over Fox. CellXion appealed on the basis that this finding was contrary to the evidence. In particular, as the Court of Appeal explained:
It was common ground that for an appeal on obviousness to succeed, it has to be shown that the Judge made an error of principle, see Biogen v Medeva [1997] RPC 1 at p.45. Mr Wilson submitted that he had indeed done so. The error was that the Judge had overlooked the fact that the experts on both sides accepted that the way to get from Fox to the claim would have been obvious. The evidence was all one way. There was no weighing of conflicting opinions to be done.
The Court of Appeal carefully reviewed the evidence and ultimately accepted this argument. It therefore held the invention to be obvious, and CellXion’s appeal succeeded on that basis.
This Kat does not see any error of principle here. The Court of Appeal simply held that Floyd J at trial had overlooked a key concession made by the expert witness for MMI. But Biogen never said that an appeal on obviousness can succeed only if the trial judge has made an error of principle. It said that the trial judge’s decision on obviousness “should be treated with appropriate respect,” and “[w]here the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation.” The standard of review applied by the Court of Appeal is consistent with this statement of the law, even if there was no point of principle.
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| What you may find in a brown envelope |
The other issue on appeal was that of novelty over supply of the machines and manuals before the priority date. The appeal turned on a procedural point. At the original trial [2009] EWHC 418 (Pat) Floyd J held that the GA-900 machines had been supplied subject to an obligation of confidence, and in any event, inspection of the machines would not reveal how they worked. The anticipation argument failed accordingly. The defendant CellXion claimed to have been supplied, after the original judgment, by an anonymous source with a brown envelope containing a manual in English with an accompanying disk, and a manual in Italian. CellXion applied to the Court of Appeal for permission to appeal and for permission to adduce further evidence. The Court of Appeal held that there was no real doubt that either of the manuals would anticipate the invention, if they had been disclosed to someone who was free to use the information. The Court of Appeal consequently decided ([2009] EWCA Civ 1120) to admit the new evidence and to remit the matter to the Patents Court; but it explicitly instructed that “The issue of whether a user can work out what [] the GA 900 machine does from the machine itself is not to be re-opened.”.
The dubious provenance of the two manuals proved to be too much of a hurdle for CellXion to overcome, and in the judgment on the remitted issues [2011] EWHC 426 (Pat), Floyd J was not persuaded that the manuals had been supplied to anyone before the priority date. On appeal CellXion argued that even if the manuals were not provided before the priority date, the manuals were evidence going to show that a user of the GA-900 machine would have been able to figure from inspection of the machine - not from the manuals - how the GA-900 worked. In other words, the argument was that the manuals showed that Floyd J was wrong in his original conclusion that sale of the machines would not constitute enabling disclosure. The Court of Appeal dismissed this ground of appeal with the observation that the order remitting the matter to Floyd J expressly prohibited a reopening of this issue