Case Comment
The General Tire & Rubber Company v.
The Firestone Type and
Rubber Company Limited and Others
citation(s): [1972] R.P.C. 457 per Sachs LJ
Case Comment |
The General Tire & Rubber Company v.
|
copyright 1997-2004 Donald M. Cameron, Ogilvy Renault
"In the instant case it is common ground that the skilled addressee is in effect a composite entity - a typical chief compounder and a typical scientific adviser as found in the organisations of any company manufacturing tyres on a large scale."
At p. 439-440
"On the other hand, common general knowledge is a different concept derived from a common sense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life.
The two classes of documents which call for consideration in relation to common general knowledge in the instant case were individual patent specifications and "widely read publications".
As to the former, it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst whose versed in the art that upon evidence of that state of affairs they form part of the knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge.
As regards scientific papers generally, it was said by Luxmoore, J. in British Acoustic Films (53 R.P.C. 221 at 250):
"In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art of which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art: in other words, when it becomes part of their common stock of knowledge relating to the art".
And a little later, distinguishing between what has been written and what has been used, he said:
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can never be held to be common general knowledge in the art".
Those passages have often been quoted, and there has not been cited to us any case in which they have been criticised. We accept them as correctly stating in general the law on this point, though reserving for further consideration whether the words "accepted without question" may not be putting the position rather high: for the purposes of this case we are disposed, without wishing to put forward any full definition, to substitute the words "generally regarded as a good basis for further action"."
"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and his claimed invention is not new within the terms of sections 32(1)(e)."
At p. 443
"When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of the words and expressions used in the art and so forth, the question whether the patentee's claim is new for the purposes of section 32(1)(e) falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim is carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated."
At p. 463
"As regards diligent search, a phrase which we were given to understand originates from Lord Reid in Technograph (supra), we take this as apt to describe what research groups employed by large-scale concerns, such as those in the Technograph case and in the instant case, ought to know. Such researches, however, can involve not only heavy expenditure but also questions of priorities in the use of available manpower. What extent of search is appropriate in a given case and what would be its probable results are questions of fact. On these we have not the advantage of the views of the trial judge, who delivered judgment before the date of the Technograph decision in the House of Lords."
"The person who actually found the Semperit documents was not called: but a Mr. Jackson, employed to make such searches, was in fact occupied upon them in various directions for some four to six weeks. Dr. Duck expressed the view that whilst he might have got "an enormous fee" for the search, yet if one is determined enough one can find anything, and did not consider that there would have been difficulty in bringing the Semperit specifications to light."
"Taking the evidence as a whole, and having looked at the terms of the abridgements (G.8, pp. 8, 220 and 8, 217) available in Book 8 of Vol. 3 of the Patent Office, we doubt whether, on balance of probabilities a normally diligent search by persons seeking a solution to the problem of the "gap" mentioned earlier in this judgment but not knowing the answer in advance would have brought Semperit (a) or Semperit (c) to attention as potentially useful material."
"For construing the patent in suit and again for reaching a conclusion, if there was no anticipation, on the issue of obviousness, it is necessary for us to put ourselves into the position of a skilled addressee at the time the specification was published on 20th November, 1950. For it is a skilled addressee - a skilled man reasonably well versed in the art - that the specification is deemed to be addressed, and it is by the standards of the common general knowledge of such a man that one tests whether the invention was obvious or not."
At p. 482
"The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in the patent law is regarded as public knowledge. This distinction is well explained in Halsbury's Law of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case [1971] F.S.R. 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if is resting anywhere in the shelves of the Patent Office."
"As regards scientific papers generally, it was said by Luxmoore, J. in British Acoustic Films (53 R.P.C., 221, at 250):
"In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge related to the art."
And a little later, distinguishing between what has been written and what has been used, he said:
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
Those passages have often been quoted, and there has not been cited to us any case in which they have been criticised. We accept them as correctly stating in general the law on this point, though reserving for further consideration whether the words "accepted without question" may not be putting the position rather high: for the purposes of this case we are disposed, without wishing to put forward any full definition, to substitute the words "generally regarded as a good basis for further action".
"Throughout, when coming to our conclusions on this important matter, we have of course kept in mind that the state of common general knowledge at any specified date is a question of fact to be decided upon evidence, and that it is for those who attack a patent to establish such knowledge as they may seek to rely upon."
At pp. 485-486 reverse infringement
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claims if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not infringe the patentee's claim, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented..."
"...For this purpose it is not permissible to combine earlier unconnected publications to show anticipation, for, if combination of earlier unconnected publications is necessary to assemble all the elements of the invention said to have been anticipated, it follows that no one man has previously made the invention and that the combination is novel."
"...A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
At pp.497-498
"In relation to the word "obvious" we were assisted by Sir Lionel Heald reminding us as to how this word came to be introduced into patent law -referring us to the speeches of Lord Herschell in the American Braided Wire case (1889) 6 R.P.C. 518 at 528 and in Vickers v. Siddell (1890) 7 R.P.C. 292 at 305. There were also cited to us a considerable number of cases in which the meaning of the word was discussed in relation to particular facts. We agree, however, with what was said by Diplock, L.J. (as he then was ) and Willmer, L.J. in the Johns-Manville case [1967] R.P.C. 479 at 493 and 496 deprecating "coining" phrases which may later be suggested to be of general application. "Obvious" is, after all, a much-used word and it does not seem to us that there is any need to go beyond the primary dictionary meaning of "very plain".
When head (f) is invoked it is, of course, as previously indicated, for whoever seeks revocation of a patent to show that the alleged inventive step was obvious to a normally skilled addressee in the art. On the way to that end there are here a number of preliminary questions to be resolved. These include the common general knowledge to be imputed to that addressee; whether what had to be done to achieve the step was truly a matter of inventive experiment or merely a matter of that type of trial and error which forms part of the normal industrial function of such an addressee; what documents he would find in the course of such researches as he would be expected to make; and how he would regard these documents in the light of common general knowledge. Then finally one has to consider whether the step is properly described as a new combination of integers or merely as a collocation of old ones. None of these questions, some of which inevitably overlap, is easy to resolve, and on each it is for the appellants to establish their contentions.
"The question of obviousness is seldom easy to decide. It has been said to be a kind of jury question and, in the days when patent actions were tried before a judge and jury, was treated so. The decision is ultimately one for the court which cannot let its function in this respect be usurped by the witnesses, though undoubtedly the evidence of the witnesses may help the court to arrive at its decision. It must be decided objectively and, being a jury question, it is right that all the relevant circumstances of the case should be taken into account. That this is the correct view of the matter is clear both from the old cases and the new."
His observations naturally apply with equal force to each of the questions which need resolution on the way to giving a final answer on the issue."
"We would add that we find some cogency in the observation in Halsbury's Laws of England, Vol. 29, page 30, para. 63:
"It would be absurd to presume that knowledge of every publication affecting any branch of industry or art must be simultaneously in the mind of a person engaged therein".
although those words relate to common general knowledge. No authority binding on us was cited which states in general terms any proposition as wide as that of Mr. Templeman's primary submission, nor indeed any which seems to make it necessary to give the word "known" in head (f) a meaning other than one natural in relation to a real person who is a skilled addressee - and that meaning would include what a competent addressee ought to know, but would not burden him with anything further in the nature of constructive notice."
At p. 504
"Amongst other points submitted on behalf of the appellants were two that are somewhat closely linked in practice. It was urged that all that was needed by the hypothetical skilled addressee in order to come upon the process disclosed in the patent-in-suit was a series of trial and error activities of a skilled compounder, rather than the sort of experiments which can be ranked as of an inventive nature. Looking at the authorities it is apparent that the demarcation of the borderline between trial and error in the ordinary course of the work of an addressee and the type of experiments which rank as being inventive is on occasion very difficult. Nonetheless it is a question of fact in each case on which side of the borderline fall the steps taken.
Once more we have had to keep in mind the references in the material before us to previous experiments and investigations, as well as noting the nature of those experiments which were carried out by the plaintiffs as a preliminary to claiming patent rights. We also have had in mind that the hypothetical addressee must be assumed to be of standard competence at his work without being of an imaginative or inventive turn of mind (cf Lord Reid's observations in the Technograph case [1971] F.S.R. at 193-A). We have come to the conclusion that in the light of past experience in the industry any experiments needed to lead to the relevant process do not fall within what might be called the run of the mill type of trial and error workings of an employee however skilled."
At p. 504
"A closely linked question is whether in the upshot the process of the patent-in-suit is more properly described as a new and inventive combination of integers or a mere collocation of them. Again the borderline is one not easy of demarcation, especially as it has been aptly said (see Halsbury, Vol. 29, page 30, para. 63) that it
"has been held from the earliest times that a new manufacture may be created, although such manufacture when dissected may consist of individual items all of which formed part of public knowledge".
Whilst remembering the caution needed to avoid putting obstacles in the way of a skilled man making proper use of his talents in the ordinary way, we consider that in the instant case the relevant process falls on the inventive side of the line."
"In all these matters, as also when considering whether the plaintiffs did no more than discover that a known process could produce hitherto unsuspected results, we have, of course, not overlooked the evidence Dr. Duck gave in support of the view that the process in question was one that was obvious to a skilled addressee and one at which we would arrive without difficulty if he set his mind to solve the problem of the gap. Dr. Duck, however, was a witness who had something like fifty patents ("ten more or less") credited to his name and was reasonably submitted by Mr. Gratwick to be a rather different calibre from that type of skilled addressee which Lord Reid had in mind. In the fact of all the other evidence available, we have felt that it is necessary to some extent to discount his evidence on the point of obviousness."
"That leaves the final question as to whether a skilled addressee who is assumed to have read and remembered amongst all other available material the three specifications Semperit (a), Semperit (c) and Wilmington, would be reasons of these have come to regard the plaintiffs' solution of the problem as obvious, despite the fact that his common general knowledge would have biased him against exploring the chances of oil-extended rubber provided a solution. In this behalf we agree with the approach adopted by trial judge when he correctly said ([1970] F.S.R. at page 312):
"It seems to me to be very dangerous and in law not permissible to assess obviousness in the light of carefully selected pieces of prior knowledge edge only".
Whether or not in that particular passage he had in mind the three specifications as being the "carefully selected pieces", it is in our judgment right to apply to them the process of reasoning adopted by the trial judge."
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