UK Patents Court Considers Correct Approach To Disclosure In Relation To Obviousness In Positec v Husqvarna

In a recent case, Positec Power Tools (Europe) Ltd and others v Husqvarna AB [2016] EWHC 1061 (Pat), the UK's Patents Court has considered the correct approach to disclosure under the Civil Procedure Rules (CPR) in their current form in patent proceedings in which obviousness was in issue. In doing so, it declined to make an order for disclosure on the grounds that it would not be in accordance with the overriding objective. The dispute between Positec and Husqvarna relates to robotic lawnmowers. Husqvarna owns a patent, EP (UK) 1 512 053, which claims a method of operating a robotic lawnmower device under the guidance of an electronic directing system. Positec wishes to sell its own robotic lawnmowers in the UK. To clear the path, it issued proceedings against Husqvarna for revocation of the patent on the grounds of novelty and obviousness, and/or a declaration of non-infringement in respect of its own robotic lawnmowers. This judgement, by Mr Justice Birss, is on a preliminary matter considered at the case management conference (CMC). In its Disclosure Report, Husqvarna indicated that it would disclose documents relating to validity in the key four-year window, ie those documents dated between two years before and two years after the earliest priority date (paragraph 6.1(2) of Practice Direction 63 of the CPR). However, by the time of the CMC indicated that it was not willing to give such disclosure. The Court therefore had to decide whether disclosure should be ordered. At the CMC, arguments were presented on the correct approach to standard disclosure (CPR 31.5) and how the approach applies to the question of whether to order the disclosure of documents arising from the making of an invention in an obviousness case. Mr Justice Birss referred to the development of the current approach to disclosure, in particular Jacob LJ's comments in Nichia v Argos [2007] EWCA Civ 741. In Nichia, Jacob LJ discussed how obviousness is objective, and the knowledge and behaviour attributed to the skilled person is not the same as a real person. The skilled person only foresees what is obvious because, unlike a real person, they take no inventive steps. Therefore the evidence of what the inventor actually did can be of little value and may be tainted by hindsight. It is secondary evidence, rather than primary evidence, such as that provided by a suitably qualified expert witness. In reality, disclosure from a patentee about what an inventor actually did...