Jushi Group Co Ltd v OCV Intellectual Capital LLC

This is an appeal from a decision dated 6 February 2017 of HHJ Hacon sitting in the Intellectual Property Enterprise Court by which he dismissed an action brought by the appellant, Jushi Group Co., Ltd (“Jushi”), to revoke European Patent 1 831 118 (“the patent”) belonging to the respondent OCV Intellectual Capital, LLC (“OCV”). The judge held the patent was valid and (on the basis of an admission) consequently upheld OCV’s counterclaim for threatened infringement in relation to one of Jushi’s products. Jushi appeals, arguing that the judge ought to have found the patent invalid for lack of novelty and obviousness.

The patent claims a priority date in December 2004. The invention claimed is a glass fibre or “strand” for inclusion as reinforcement in other materials such as glass-reinforced plastic. The American Society for Testing Materials (“ASTM”) defined a number of standard categories of glass for use in glass fibre, including the ranges of constituents that make up that type of glass. In 2004 by far the most widely used category was ‘E-glass’, or electrical grade.

To make glass fibres the chosen constituents are first heated to produce a molten glass. The molten glass passes, under gravity, through a pattern of holes, to emerge as fibres which are subsequently cooled and treated further. For this process to work, the formation of solid crystals within the molten glass, a process known as ‘devitrification’, must be avoided. The ‘liquidus’ temperature of the glass is the lowest temperature at which the glass is wholly free of crystals. In addition, the glass should be of the correct viscosity. The temperature at which the glass will achieve the desired viscosity is known as the “log 3 forming temperature” or the “fibre forming temperature”.

One of the significant costs of glass production is that expended on heating, and so using a process with a low fibre forming temperature offers an important cost advantage. On the other hand, to ensure that the production of fibres occurs without devitrification, the fibre forming temperature should be, as a rule of thumb, at least about 50⁰C above the liquidus temperature. This differential is known as the forming or fiberizing range or as ‘the Delta-T’.

The composition of the glass plays a key role in determining its properties. Various oxide components are used to control properties. They are classified as network formers, intermediates and network modifiers. Network formers include principally silicon dioxide (SiO₂) and boron oxide (B₂O₃) which form a molecular chain network which holds the glass together. Network modifiers include the monovalent oxides of the alkali metals (lithium, sodium and potassium) and the oxides of divalent alkaline earth metals (calcium, magnesium, barium and strontium). The inclusion of these oxides disrupts and pushes apart the network, reducing the softening point of the glass, its processing temperature and its viscosity. Network modifiers can also disrupt and delay glass devitrification. Intermediate oxides can act either as network formers or as network modifiers. Aluminium oxide and titanium oxide are intermediate oxides.

The claimed invention is a glass strand comprising a number of listed constituents. Each is required to be present either in a specific range of percentages by weight, or in a range specified for a pair of components. In addition, the ratio of calcium oxide to magnesium oxide (“CaO/MgO”) is required to be less than or equal to 2. Finally, three of the constituents (Al₂O₃, MgO and Li₂O) taken in combination must constitute at least 23% of the total percentage by weight. Claim 1 reads:

“1.

A glass reinforcement strand whose composition comprises the following constituents in the limits defined below, expressed as percentages by weight:

SiO₂ 58-63%

Al₂O₃ 12-20%

CaO 12-17%

MgO 6-12%

CaO/MgO ≤ 2, preferably ≥1.3

Li₂O 0.1-0.8%, preferably ≤ 0.6%

BaO + SrO 0-3%

B₂O₃ 0-3%

TiO₂ 0-3%

Na₂O + K₂O ˂ 2%

F₂ 0-1%

Fe₂O₃ ˂ 1%

wherein the composition has an Al₂O₃ + MgO + Li₂O content equal to 23% or higher.”

At [0007] the patent refers to the conditions under which E-glass can be fiberized. These are said to be highly advantageous in that the working temperature is relatively low, at around 1200°C, the liquidus temperature is about 120°C below the working temperature, and its devitrification rate is low.

The ASTM specification for E-glass left it open to make glasses which did not contain boron or fluorine compounds. The specification points out at [0011] that the fiberizing conditions for boron-free E-glass were less favourable than those for boron-containing E-glass, but the glass remained economically acceptable and had a specific Young’s modulus at an equivalent level.

At [0012] the patent acknowledges as prior art U.S. Patent 4 199 364 (“Neely”). Neely is reported as disclosing an inexpensive glass containing neither boron nor fluorine which has mechanical properties comparable to those of E-glass.

At [0014] the patent explains that, in bulk, R-glass (another ASTM category) is known for its good mechanical properties, especially as regards the specific Young's modulus, which is around 33.5 MPa/kg/m³. However, the melting and fiberizing conditions were more constrictive than in the case of the E-glass, and therefore the final cost of R-glass was higher.

At [0016] – [0017] the patent explains the object of the invention:

“Other attempts at increasing the mechanical strength of glass strands have been made, but generally to the detriment of their fiberizability, the processing then becoming more difficult or imposing the need to modify existing fiberizing installations.

There is therefore a need to have glass reinforcement strands having a cost as close as possible to that of E-glass and exhibiting mechanical properties at a performance level comparable to that of R-glass.”

Particular attention is drawn to the CaO/MgO ratio at [0022] to [0024]:

“Lime (CaO) is used to adjust the viscosity and to control the devitrification of the glasses. The CaO content preferably lies in the range from 13 to 15%.

Magnesia (MgO), like CaO, acts as a viscosity reducer and also has a beneficial effect on the specific Young's modulus. The MgO content lies in the range from 6 to 12%, preferably from 7 to 9%.

The CaO/MgO weight ratio proves to be an essential factor for controlling devitrification. The inventors have identified that a CaO/MgO ratio not exceeding 2, but preferably greater than 1.3, promotes crystallization of the glass in several phases (anorthite: CaO.Al₂O₃.2SiO₂ and diopside: CaO.MgO.2SiO₂, or even forsterite: 2MgO.SiO₂ or enstatite: MgO.SiO₂) which enter into competition for growth at the expense of the liquid phase. This competition has the effect of limiting the maximum growth rate of the crystalline phases and therefore reducing the risk of the glass devitrifying, and of allowing it to be fiberized correctly.”

At [0028] the patent explains that “[p]referably” the sum of the Al₂O₃, MgO and Li₂O contents is “equal to 23% or higher, thereby making it possible to obtain very satisfactory specific Young's modulus values (of greater than 36 MPa/kg/m³) while still having good fiberizability”. Despite the use of the word “preferably”, it is common ground that the skilled person would understand that this feature has been incorporated into and become a requirement of the claim.

The patent also includes a table of results either obtained or calculated for various compositions of glass. The table includes two comparative examples, one of which (example 7) is example 5 of Neely. At [0046] the patent claims that:

“[0046] … the examples according to the invention exhibit an excellent compromise between melting and fiberizing properties and mechanical properties. These fiberizing properties are particularly advantageous, especially with a liquidus temperature of around 1210°C, which is much lower than that of R-glass. The fiberizing range is positive, in particular with a difference between T(1og η=3) and T_liquidus of more than 50°C, and possibly up to 68°C.

[0047] The specific Young's modulus of the glass obtained from the compositions according to the invention (Examples 1 to 5) is markedly higher than that of E-glass and also improved over that of R-glass and the glass containing no Li₂O (Example 6).

[0048] Remarkably, with the glasses according to the invention, substantially better mechanical properties than those of R-glass are thus achieved, while appreciably lowering the fiberizing temperature, bringing it close to the value obtained for E-glass.

[0049] The glasses according to the invention crystallize in three phases. At the liquidus, the phase is diopside, which is more favourable as it is less refractory than anorthite (Example 6). The maximum growth rate of diopside is lower than in the case of the glass of Example 7 for which the CaO/MgO ratio is 2.14 (a reduction of at least 50%).

[0050] The glass strands according to the invention are less expensive than R-glass strands, which may advantageously be replaced in certain applications, especially aeronautical applications, or for reinforcement of helicopter blades, or for optical cables.

It will be seen that in [0049] the patent makes a favourable comparison for the glass of the invention with comparative example 7 (which is example 5 of Neely), pointing out that Neely’s CaO/MgO ratio in this instance is 2.14. This is outside the range claimed for this ratio in claim 1, at least if construed strictly (less than or equal to 2).

That brings one to the disclosure of Neely itself. Neely discloses boron- and fluorine-free glass compositions for producing glass fibres. Because of cost and other disadvantages of boron and fluorine there was, according to Neely, a need for glass compositions which excluded those two elements yet which retained favourable fiberizing properties, i.e. the properties that allow the glass composition to be melted and refined into fibres at high rates and relatively low temperatures.

The glass compositions disclosed in Neely were said to provide fibres with the mechanical properties of E-glass. The general composition of Neely’s glass is set out in Table IV of the specification:

TABLE IV

Ingredients	Percent
SiO2	55-61
Al2O3	12-18
MgO	4-10
CaO	14-18
Na2O	0.1-1.5
Li2O	0.1-1.5
BaO	0.0-1.0

Neely goes on to say this (at col.4, lines 7-14):

“In the glass composition of Table IV other substituents may also be present in small amounts typically below 1 percent each. In general, Fe₂O₃ is present in quantities of 0.1 to 0.5 percent, TiO₂ between 0.2 to 0.8 percent, K₂O between 0.1 and 0.5 percent and also if the glass composition desired is only a boron-free composition, then a small amount of fluorine up to 1 weight percent can be used in the composition.”

It was common ground that the range of each of the constituents in Table IV of Neely either fell within or overlapped the corresponding ranges of claims 1, 4, 5 and 6 of the patent.

Neely disclosed six specific examples of glass, i.e. six glass fibres having constituents present in precisely stated percentages, as opposed to ranges, and one comparative example. None of the six examples had percentage constituents which all fell within the corresponding ranges specified in claim 1 of the patent. Examples 1 and 5 came closest. In example 1 the figure for Li₂O was too high (if 0.9 is treated as being outside 0.05-0.85) and the figure for the total of Al₂O₃, MgO and Li₂O was too low (again, if 22.54 is treated as being outside 23 or higher). In example 5, the figure for the CaO/MgO ratio was 2.15%, whereas claim 1 of the patent requires a ratio of ≤ 2 and the total of Al₂O₃, MgO and Li₂O in example 5 was 22.88%, compared with a minimum of 23.

The judge first considered the correct construction of the features of the claim which required (a) the ratio CaO/MgO to be ≤ 2 and (b) the total content by weight of (Al₂O₃ + MgO + Li₂O) to be equal to 23% or higher. Jushi had contended that the claim used the “whole number convention”, under which numbers are taken to indicate the nearest whole number. Under that convention, therefore, the limits of ≤ 2 would be taken to include anything from ≥ 1.5 to ˂ 2.5 and the figure of 23% for (Al₂O₃ + MgO + Li₂O) would embrace anything from ≥ 22.5% to ˂ 23.5%. On this basis the patent would lack novelty over Neely’s example 5.

The judge rejected this argument. It was fair to assume that the patentee was not intending to claim example 5 of Neely, given its use as a comparative example. The patentee was therefore not intending the ranges to be interpreted with the benefit of the broadening whole number convention.

The judge then turned to the arguments concerning the overlapping ranges, as between Neely’s Table IV and claim 1 of the patent. He directed himself by reference to decisions of the Technical Board of Appeal (“TBA”) of the European Patent Office in T 26/85 TOSHIBA/Thickness of Magnetic Layers [1990] E.P.O.R. 267 and T 666/89 UNILEVER/Washing Composition [1992] E.P.O.R. 501, in which the TBA asked whether the skilled person reading the prior art document would “seriously contemplate” applying the teaching of the prior art in the area of overlap.

Applying the “serious contemplation” test, the judge first identified the fact that the present case was not concerned with a single range but with multiple ranges. Table IV of Neely defined 7 ranges which were either the same as or fell entirely within the ranges claimed in the patent. However there were 6 ranges where the ranges merely overlapped. The overlap in these 6 ranges was between 33% and 87%. The extent of overlap between Neely and the patent was not simply a matter of multiplying the 6 percentage overlaps together. Such a purely arithmetical computation yielded a figure of 3.9%. However, as the percentages were dependent on one another, an increase to one constituent could exert a downward pressure on another. Once one started to vary one of the constituents in this exercise, all of the other constituents, even those where there was complete overlap, would come into play.

The judge was not satisfied (see paragraph [83]) that it was possible on the evidence to determine the true extent of overlap. Further he was not satisfied on the evidence that it had been shown that the skilled person would “seriously contemplate” making fibre glass according to the teaching of Table IV within that area of overlap, and thus within claim 1. Prof Gibson, Jushi’s expert witness, had approached each of the constituent ranges individually, and had not addressed the question of whether the skilled person would seriously contemplate making glass fibres according to all of the specified ranges in claim 1. Dr Bingham, OCV’s expert, had said that the skilled person would only stray outside the worked examples of Neely with caution, because of a fear that varying the composition would lead to production problems. Accordingly the judge, although expressing reluctance at having to resolve the issue on the basis of the burden of proof, concluded that Jushi had simply not established their case.

The judge then turned to the issue of inventive step. He characterised Jushi’s first argument as being that the skilled person would not regard the figures for the constituents of fibre glass given in examples 1 and 5 of Neely as set in stone. Variations would be contemplated. As originally framed, this case was put on the basis that the skilled person would believe that each of the constituents of examples 1 and 5 of Neely could be varied by ± 6%. Among such obvious variants would be compositions that fell within claims 1 and 6. Alternatively Jushi argued that it would be obvious to try varying each constituent by different amounts within ± 6%, with a reasonable expectation of success.

The judge rejected these arguments on the basis that the skilled person would be cautious about varying the constituents of an example which had been shown to work. The figure of ± 6% had no basis in the common general knowledge, but had been arrived at “with an eye on the Patent and how much change to examples 1 and 5 of Neely would be required to bring those examples within the scope of the claims of the Patent”. Professor Gibson had not maintained the ± 6% point in cross-examination. The obviousness case based on examples 1 and 5 of Neely was therefore rejected on the evidence.

A similar fate befell an argument that claim 1 was obvious over Table IV of Neely. This argument was based on the suggestion that the skilled person would expect to be able to make boron- and fluorine-free glass fibres if he used anything within the ranges in Table IV. The judge did not understand Dr Bingham to have accepted this in cross-examination. Dr Bingham had only accepted that compositions having the characteristics of E-glass would be found within the range of compositions defined by Table IV. The judge accepted evidence that making small changes to the composition could have very significant effects, such as changing the composition from a ternary to a quaternary one, or of altering the melt properties of the glass. He concluded that the skilled person selecting indiscriminately from the ranges in Table IV could not assume that he would get a satisfactory E-glass.

Finally the judge considered an argument that the patent was an invalid selection patent, at least insofar as it claimed the area of overlap. He rejected this argument on the ground that Neely’s Table IV did not contain an individualised disclosure of anything falling within the area of overlap. Jushi did not dispute that the glass fibres of the patent offered a technical advantage over Neely’s fibres or argue that this was obvious.

The patent was therefore valid and Jushi had threatened to infringe it.

Mr Turner QC, who appeared on the appeal for Jushi, contended that the judge had been wrong to construe the claims so as to exclude the acknowledged prior art. He had failed to give sufficient weight to the fact that OCV had contended for a broadened construction, presumably on the whole number basis, when asserting infringement.

Mr Turner went on to submit that the judge had been wrong to determine the issue of novelty by reference to the burden of proof. There had been ample evidence for the judge to decide the issue. He took us to some of the expert evidence on this issue.

In summary, Neely disclosed a “compositional space” within which a person skilled in the art is taught to make glass fibre across its breadth. Everything within the compositional space was clearly disclosed and could not be patented subsequently. In taking into account the impact which small changes might have on the properties of the glass fibre, the judge had fallen into the error of not keeping the concepts of disclosure and enablement separately. If he had focused on the disclosure he would have had to conclude that there was a disclosure of claim 1 of the patent.

Finally, even if claim 1 (and claims 4, 5 and 6) were novel, Mr Turner contended that they were obvious. The worked examples of Neely lay only a hair’s breadth from the claimed ranges. There could be no invention in working so closely to the claimed embodiments. The judge had lost sight of the fact that the worked examples in Neely were not being disclosed in isolation but as examples of the broad disclosure. Further, the judge had approached Table IV wrongly by requiring Jushi to show that a specific combination was obvious to make.

Mr Purvis QC, who appeared on the appeal for OCV with Mr Tom Alkin, supported the conclusions reached by the judge. He submitted further in support of a respondent’s notice, that the judge had been wrong to follow the “serious contemplation” test put forward by the EPO as a test for novelty, which was unduly generous to Jushi. He should instead have applied conventional novelty principles.

The principles applicable to the construction of numerical limits were recently reviewed by this court in Smith & Nephew Plc v Convatec Technologies Inc [2015] R.P.C. 32. Kitchin LJ (with whom Briggs and Christopher Clarke LJJ agreed) summarised them as follows at [38]:

“…the approach to be adopted to the interpretation of claims containing a numerical range is no different from that to be adopted in relation to any other claim. But certain points of particular relevance to claims of this kind do emerge from the authorities to which I have referred and which are worth emphasising. First, the scope of any such claim must be exactly the same whether one is considering infringement or validity. Secondly, there can be no justification for using rounding or any other kind of approximation to change the disclosure of the prior art or to modify the alleged infringement. Thirdly, the meaning and scope of a numerical range in a patent claim must be ascertained in light of the common general knowledge and in the context of the specification as a whole. Fourthly, it may be the case that, in light of the common general knowledge and the teaching of the specification, the skilled person would understand that the patentee has chosen to express the numerals in the claim to a particular but limited degree of precision and so intends the claim to include all values which fall within the claimed range when stated with the same degree of precision. Fifthly, whether that is so or not will depend upon all the circumstances including the number of decimal places or significant figures to which the numerals in the claim appear to have been expressed.”

In any particular case, therefore, it is necessary to consider the relevant integer of the claim in the light of the disclosure of the patent, the common general knowledge and all other relevant circumstances. It is clear that the court was not laying down a rule of law as to how numerical ranges should be interpreted in all cases.

A well-known canon of construction where a patentee has acknowledged prior art in his specification was identified by Jacob J as he then was in Beloit Technologies Inc. v. Valmet Paper Machinery Inc. [1995] R.P.C. 705 at 720:

“There is normally no reason to suppose the patentee when he set the limits of his monopoly knew of a particular piece of prior art which is therefore irrelevant in deciding what those limits are. Of course the position is different if the prior art is specifically acknowledged in the patent. The purposive construction would lead to a construction of a claim which did not cover that acknowledged prior art: it can hardly have been the inventor's purpose to cover that which he expressly recognises was old.”

It is true, as Lewison J pointed out in Ultraframe (UK) Ltd v Eurocell Building Plastics Limited [2004] 1785 EWHC (Ch), that much depends on how the prior art is acknowledged. A mere reference to a prior patent does not necessarily require the addressee of the patent to dig it out and study it in detail before arriving at an understanding of the meaning of language used in the claims.

The patent in the present case undoubtedly recognises the existence of Neely as prior art. However it goes considerably further. The patent specifically refers to and reproduces example 5 of Neely. Further, the patent uses example 5 of Neely as a comparison, and points out that its CaO/MgO ratio is 2.14. It seems to me that this is a very compelling point in favour of adopting the narrower construction of the end points of the ranges in the present case. The purpose of a comparative example is that it identifies something which is outside the claimed invention for the purposes of comparing it with something inside it. The skilled person would be bound to compare the composition of the comparative example with the ranges in claim 1, which he or she can do without “digging out” Neely. The skilled person would observe that the CaO/MgO ratio, to which attention is specifically drawn in [0049] of the patent, is more than 2. If whole number rounding is used in the claim it would not exclude Neely Example 5. Moreover there is no other claim integer which would exclude this example from the claim if whole number rounding is used. The total content of Al₂O₃, MgO and Li₂O in Neely example 5 is 22.88, which would be within the claim if the range is expanded by whole number rounding. The obvious conclusion that the skilled person would draw is that the patentee’s ranges were exact, and not meant to be broadened by whole number rounding.

If that were not enough, the judge noted (at paragraph [56]) the evidence of Dr Bingham, that the skilled person would have known, as part of the common general knowledge, that changes in glass composition, even small ones, could lead to sometimes strongly non-linear changes in key properties of the glass. That was a further reason why the skilled person would understand the patentee to be intending his values to be exact ones.

Jushi had no satisfactory answer to any of this beyond drawing attention to the fact that OCV had argued at some points in their case for a wider construction of the claim. That is a point of no substance. The true construction of a claim obviously cannot depend on how the claim is deployed by the patentee in litigation many years after the priority date.

I would therefore reject Jushi’s construction of claim 1.

The construction point with which I have just dealt is sufficient to explain why claim 1 does not lack novelty over Example 1 or 5 of Neely. Mr Turner maintains that the disclosure of Neely as a whole, and in particular Table IV, nevertheless deprives claim 1 of novelty.

An invention is to be taken as new if it does not form part of the state of the art (Patents Act 1977, section 2(1)). The state of the art includes, amongst other things, all matter which has been made available to the public by written description (section 2(2)). In Synthon’s Patent [2006] R.P.C. 10 Lord Hoffmann explained that there are two requirements for a claim to be anticipated by a prior document: disclosure and enablement. As to disclosure he explained at [22]:

“… the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so.”

In general, a broad generic disclosure in the prior art does not take away the novelty of a claimed more specific one: see Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2009] EWCA 1362; [2010] RPC 9 at [28] to [29]. In that case, a broad disclosure of tens of thousands of chemical compounds identified by means of a Markush formula did not take away the novelty of a claim to a single compound. Jacob LJ, with whom the Master of the Rolls and Richards LJ agreed, said this at [30]-[32]:

“Thus logic dictates rejection of the argument that a disclosure of a large class is a disclosure of each and every member of it. So also does EPO case-law. Mr Carr accepted that was so, so I can take the matter quite shortly, going to just one case, Hoechst Enantiomers T 0296/87 which effectively sums up earlier cases. It said:

6.1

Here the Board is guided by the conclusions it reached in its "Spiro compounds" decision T 181/82 (OJ EPO 1984, 401) concerning the novelty of chemical entities within a group of substances of known formula. With regard to products of the reaction of specific spiro compounds with a (C1-C4)-alkyl bromide defined as a group, the Board drew a sharp distinction between the purely intellectual content of an item of information and the material disclosed in the sense of a specific teaching with regard to technical action. Only a technical teaching of this kind can be prejudicial to novelty. If any such teaching is to apply in the case of a chemical substance, an individualised description is needed.

So what one must look for by way of an anticipation is an "individualised description" of the later claimed compound or class of compounds. …

It is not necessary here to go into what is sufficient to amount to an "individualised description." Obviously the question may partly be one of degree, but other considerations may come in too, for instance the specificity of any indicated purpose for making the compounds. A mere woolly indication of the possible use of the prior class may require less specificity than a precise one.

This view of the law accords with the decision of the House of Lords in Synthon's Patent [2006] RPC 10. …

Where you have a patent for a particular chemical compound and a prior art general disclosure, performance of the general disclosure (which means no more than using anything within it) does not necessarily result in infringement of the patent. In this case, for instance, you can "perform" 235 in any of 10¹⁹ ways – only one of them would result in infringement of the later patent.”

That requirement for an individualised description was in the context of a claim to a single chemical compound, although Jacob LJ also referred to claimed classes of compounds as well. In each case the simple question is whether the prior document contains a disclosure of the invention. Resolution of the issue will often depend on how the prior document would be understood by the skilled person, taking account of the common general knowledge.

In the case of overlapping ranges of a constituent, the TBAs of the EPO have expressed themselves in different language in the cases of TOSHIBA and UNILEVER on which the judge relied. In UNILEVER the Board said this at page 507:

"[6] The Respondent also submitted in the course of oral proceedings that, as a matter of law, it was not permissible to cross the legal borderline between novelty, in the strict sense of a clear and specific disclosure in a prior document of the particular narrow combination of claimed ranges in question on the one hand, and the obviousness of choosing such a combination of ranges from that prior art document containing a disclosure of the broader range, on the other hand. In this connection the Board wishes to set out the general legal principles that apply to so-called "selection" patents. The most important one is that under the EPC patents are not granted for inventions for the sole reason that they are "selections", but only for new and inventive subject–matter of certain defined kinds (Articles 52 to 57 EPC). Selection is in fact only a conceptual tool, used principally in the field of chemical inventions, for deciding novelty in certain situations, which novelty can, however, only be decided under the express provisions of Article 54, and in particular Articles 54(2) and (3) EPC. Article 54 (2) EPC defines the state of the art as comprising "everything made available to the public by means of written or oral description, by use or in any other way". The term "available" clearly goes beyond literal or diagrammatical description, and implies the communication, express or implicit, of technical information by other means as well. Now it is of course true that in the case of documents the natural mode of communicating information is by written or diagrammatical description. However, this is not the end of the matter in deciding what information content has been made available: cf. G 02/88, OJ EPO 1990, 003, para. 10 of the reasons. One example of the available information content of a document extending beyond this literal descriptive or diagrammatical content is the case where the carrying out of a process, specifically or literally described in a prior art document, inevitably results in a product not so described. In such a case, the prior art document will destroy the novelty of a claim covering a product; cf. T 12/81, "Diastereomers", OJ EPO 1982, 296. It is thus content, express and implied, rather than mere form, that is decisive of the issue of novelty in general, and "selection" novelty in particular (cf. T 198/84, 'Thiochloroformates", OJ EPO 1985, 209, para, 4 of the reasons, English version corrected in T 124/87, "Copolymers", OJ EPO 1989, 491, para 3.2 of the reasons; T 26/85, "Thickness of magnetic layers", OJ EPO 1990, 22, para. 8 of the reasons).

[7] Clearly, the decision on this issue will depend on the facts of each case. Nevertheless, the Boards' jurisprudence has generated certain general principles and broadly applicable concepts, sometimes (erroneously) referred to as ‘tests’. Thus it is clear, (cf. G 02/88 cited above), that matter that is hidden, not in the sense of being deliberately concealed but rather in the sense of being reconditely submerged in a document, will not have been ‘made available’ in the above sense. In the case of overlapping ranges of physical parameters between a claim and a prior art disclosure, what will often help to determine what is ‘hidden’ as opposed to what has been made available, is whether or not a skilled person would find it difficult to carry out the prior art teaching in the range of overlap (T 124/87, OJ EPO 1989, 495, para.3.4). A similar approach adopted by a Board of Appeal (cf. T 26/85 OJ EPO 1990, 22) for assessing the novelty of a claim in a case where overlapping numerical ranges of certain parameters exist between a claim and a prior art document, is to consider whether a person skilled in the art would, in the light of all the technical facts at his disposal, seriously contemplate applying the technical teaching of the prior art document in the range of overlap. Provided the information in the prior art document, in combination with the skilled person's common general knowledge, is sufficient to enable him to practise the technical teaching, and if it can reasonably be assumed that he would do so, then the claim in question will lack novelty.

[8] In the Board's view, there is no fundamental difference between examining novelty in situations of so-called ‘overlap’ or ‘selection’, and in doing so in other situations, although it may be helpful, in order to verify a preliminary conclusion of a novelty examination in cases of overlap, to investigate whether or not a particular technical effect is associated with the narrow range in question. It needs to be stressed, however that such a particular effect is neither a prerequisite for novelty nor can it as such confer novelty: its existence can merely serve to confirm a finding of novelty already achieved (following T 198/ 84, OJ EPO 1985, 209, para.7).

The above concept of ‘seriously contemplating’ moving from a broad to a narrow (overlapping) range, while seemingly akin to one of the concepts used by the Boards for assessing inventive step, namely, whether the notional addressee ‘would have tried, with reasonable expectation of success’ to bridge the technical gap between a particular piece of prior art and a claim whose inventiveness is in question, is fundamentally different from this ‘inventive-step concept’ because in order to establish anticipation, there cannot be a gap of the above kind.

In summary, and in dealing with the respondent's submission outlined previously, under the EPC novelty must be decided by reference to the total information content of a cited prior document, and in assessing the content for the purpose of deciding whether or not a claim is novel, the Board may employ legal concepts that are similar to those used by them in deciding issues of obviousness, without, however, thereby confusing or blurring the distinction between these two separate statutory grounds of objection.”

In H. Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Pat); [2011] R.P.C. 23 I expressed reservations about the criterion proposed by the TBA in UNILEVER in the passage I have cited above:

“[88] I derive the following guidance from this passage of relevance to this case:

(a)

The term ‘available’ goes beyond the strict literal meaning and includes what is implicit as well;

(b)

On the other hand, matter may be contained in a document but so submerged in it as not to be available (compare Dr Reddy's Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2009] EWCA Civ 1362, [2010] R.P.C. 9);

(c)

Novelty in the case of overlapping ranges is no different from novelty in other circumstances.

[89] What I find, with great respect, more difficult to follow is the notion that it may be legitimate to find lack of novelty because the skilled person would ‘seriously contemplate’ moving from a broad range to a narrow range. Merely by stating the proposition in that way one can see that it is inconsistent with the approach approved by the House of Lords in Smithkline Beecham plc's (Paroxetine Methane Sulfonate) Patent. There is no disclosure of the narrower range. Moreover, assuming no specific individual value is disclosed, there are no clear directions to use a value within the narrower range. A person carrying out the disclosure of the prior range will not inevitably fall within the claim of the later patent. If the ‘serious contemplation’ approach is indeed the correct approach in the case of overlapping ranges, then overlapping ranges are a special case in the law of novelty, a proposition which is inconsistent with the third proposition derived from T666/89 itself.

It was not necessary for the purposes of that case, as I pointed out at [90], to reach a final conclusion on that issue. However the judge in our case applied the serious contemplation test, and by its respondent’s notice, OCV says that he was wrong to do so.

Mr Turner submitted that the EPO’s test in the case of overlapping ranges is in fact no different from the law of novelty as expounded in Synthon. The “serious contemplation” test was no more than a way of distinguishing between matter which is properly regarded as hidden in the prior document and matter which is made available and disclosed. As I said in Lundbeck v Norpharma, I have no difficulty with that principle. It is only if the serious contemplation test is intended to relax the rigor of the general law of novelty that I would take issue with the EPO. Mr Turner expressly disclaimed any such assertion. I consider he was right to treat the “serious contemplation” test in that way. On that basis it does not differ materially from the conventional approach to novelty expounded in Synthon and Dr Reddy’s. To my mind, however, it is better to take these cases as the relevant yardstick.

That brings me to the question of whether Neely Table IV deprives claim 1 of the patent of novelty. 6 out of the 13 ranges in claim 1 of the patent merely overlap to varying extents with the Neely Table IV ranges. Jushi do not draw attention to anything in Neely which teaches the skilled person that they should operate in the area of combined overlap of these ranges. The only basis on which it could be said that there is a clear disclosure of operating within the area of overlap is if it can be said that Neely discloses every possible combination of values for each of the constituents. Mr Turner submits that Neely does indeed do this, because it discloses “a compositional space” in which the skilled person would understand that any combination of individual values within Table IV may be chosen. Each and every combination of values is therefore disclosed for the purposes of the law of novelty, and at least a fraction of these combinations will fall within claim 1.

I think that the first difficulty with this argument is that it involves as a first stage the proposition that each and every possible combination of values is disclosed. If that is so, it would follow that it was not possible to claim any specific example or recipe, because that combination must be treated as disclosed by the prior art. That conclusion, albeit an intermediate one on the road to Mr Turner’s ultimate destination, does not sit easily with the decision in Dr Reddy’s Laboratories. The claim to olanzapine was not anticipated precisely because the prior art cannot be treated as a disclosure of each and every possible combination encompassed by the generic disclosure of the prior art.

The second difficulty lies with showing, on the facts of this case, that Neely is teaching the skilled person that he or she can use every combination of values within Table IV. Mr Turner took us to some parts of the oral evidence before the judge which he said supported that conclusion, including a lengthy passage of the cross-examination of Dr Bingham. However, it seems to me that the question of what it is that Neely discloses is ultimately a question for the court, rather than for any witness. The court must of course equip itself with the common general knowledge (and common sense) of the skilled person. So far as that is concerned, two considerations are material. First, as the judge noted at [75] to [76] the skilled person would know that choices of percentages of constituents are not independent. A change in the percentage of one constituent can lead to a change in another. The skilled person would not expect Neely therefore to be telling one that one can indiscriminately take the value of one constituent to any part of the range without making an appropriate adjustment to another. Secondly, the skilled person would approach Neely knowing that very small changes in percentages of constituents can have large non-linear effects. That, as it seems to me, is a further reason why the skilled person would not understand Neely to be telling him or her that one can choose indiscriminately any combination of values in Table IV.

I would accept that there may be circumstances where a prior disclosure of a numerical range, such as a range of temperatures to be used in a process, may carry with it an implicit disclosure that the skilled person may choose any value within the range. Whether that is so will depend on the disclosure of the document understood with the benefit of the common general knowledge. It is wrong, however, to elevate that possible conclusion into a rule of law, so that every numerical range must be so understood, whatever the context.

I think that Mr Turner’s notion of the disclosure of a “compositional space” is ultimately an unhelpful one. It assumes that there is an implicit disclosure of making every possible combination of compositions within the ranges specified in Table IV, when that is not how the skilled person would understand it. I agree with Mr Turner that the question of whether Neely Table IV deprived claim 1 of novelty was not one which turned on the burden of proof. However, when one considers the disclosure of Neely in the light of common general knowledge, there is no disclosure which deprives claim 1 of novelty. The invention of claim 1 remained concealed or hidden in the disclosure of Neely.

I therefore arrive at the same conclusion as the judge, albeit by a somewhat different route. He was right to reject the allegation of lack of novelty.

Jushi’s case on obviousness no longer relies on the assertion, rejected by the judge, that it would be obvious to vary the percentages in each of the constituents in Examples 1 and 5 of Neely by ±6%. Jushi now says, perhaps somewhat unfairly given the way their case was presented in their evidence below, that the judge should not have focused on such a narrow question when deciding the question of obviousness. He should have asked the broader question of whether it was obvious to modify examples 1 and 5 in accordance with the general teaching of Neely that boron-free E-glass can be found across the breadth of the compositional space in Table IV.

Although neither side referred us to it, a useful, structured approach to the issue of obviousness remains that set out in Pozzolli v BDMO SA, [2007] EWCA Civ 588; [2007] FSR 37 at [23]:

"(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?"

The difficulties faced by Jushi are in connection with steps 3 and 4. Insofar as their case started with Examples 1 and 5 of Neely, it was possible to identify the differences between that matter and claim 1 of the patent. In example 1 the differences lay in Neely’s percentage of Li₂O, which was higher than claimed, and in his total of Al₂O₃, MgO and Li₂O, which was lower than claimed. For this part of the case, therefore, Jushi needed evidence to show that the skilled person would consider modifying those values in the direction of claim 1 whilst keeping all other values within the ranges in the patent. A similar exercise could have been done for Example 5, where Neely’s ratio of CaO/MgO was too high and the total of Al₂O₃, MgO and Li₂O was too low.

We were not shown any evidence on which the judge could conclude that taking such steps was obvious. Moreover, as I have said, there was evidence that making even small changes to constituents could have a disproportionately large effect on properties. Without knowledge of the patent, there was no need to focus on those parameters which were out of range. As the judge observed, the resulting exercise in varying each component by some factor and seeing what happened was more properly characterised as research without any preconceived notion of success.

Jushi’s case on Table IV of Neely depended on the suggestion that Neely would lead the skilled person to expect that every composition within Table IV would have characteristics of E-glass or that there was a reasonable expectation that it would fiberize successfully. They were therefore all obvious, and it was not necessary for Jushi to show that the skilled person would choose any particular one of them. This was either the same as, or a close relative of, the serious contemplation test rejected by the judge on the issue of lack of novelty. The judge did not accept that case on the evidence. He did not consider that it was supported by the evidence given by Dr Bingham in cross-examination.

For it to be obvious to proceed from the information in Table IV to a composition within claim 1 of the patent the judge was entitled to expect evidence that the skilled person would make the relevant choices of values in the combination necessary to do so, whilst at the same time not taking other constituents out of range. In the absence of such evidence he was properly entitled to reject the obviousness attack on the facts of this case.

For the above reasons I would dismiss the appeal.

I agree.

I also agree.