Vernacare in the UK Court of Appeal: Invention obvious even if disclosure does not cover all benefits of invention

The Court of Appeal recently overturned the Intellectual Property Enterprise Court’s findings on validity and infringement in one of the patents involved in Vernacare v Moulded Fibre Products. Key to its decision was a judgment that had not been raised in the IPEC, Hallen v Brabantia, the leading case on ‘bonus’ effects of inventions.

At first instance, the IPEC’s finding that the defendant (“MFP”) did not infringe by equivalence because the patent would have been invalid if it had that scope (the ‘Formstein’ defence) was a notable feature which remains unaffected as it was not appealed.

Background

The case concerned disposable washbowls for use in healthcare settings. These washbowls are made from paper pulp, mixed with other ingredients including “sizing agents” (additives which improve qualities such as waterproofing) and biocides, moulded into shape.

Two of Vernacare’s patents were considered at first instance. The first concerned the shape of the washbowl, with the patent found valid but not infringed by the defendant’s washbowl (this part of the judgment was not appealed).

The second, patent GB 24 39 947 (the “947 Patent”) covered the addition of fluorocarbons among the sizing agents to provide protection from detergents which might otherwise degrade the washbowl during use. The IPEC found this patent valid and infringed. The appeal related to the judge’s findings that claims 1 and 9 of the 947 Patent were valid.

Hallen enters play

MFP argued that the IPEC judge had incorrectly defined the inventive concept by introducing an illegitimate purpose-based element into claim 1. Consequently, this construction excluded detergent-resistant washbowls made for reasons other than achieving detergent resistance.

In support, MFP raised a key case that was not argued at first instance: Hallen v Brabantia [1991] RPC 195, in which inventions may be obvious due to a disclosure that does not articulate all the benefits of the claimed invention. In Hallen, a patent concerning a corkscrew coating to ease removal of the cork was not inventive since the same coating had previously been disclosed as being useful to helping the corkscrew enter the cork. Disclosure of the coating for one purpose rendered it obvious to use the coating notwithstanding that its use achieved another benefit not identified in the earlier disclosure.

The benefit in the present case was that of detergent resistance. The Court of Appeal held that, correctly construed, the inventive concept of claim 1 was a washbowl made from paper pulp containing a fluorocarbon. There was no requirement in the claim that the fluorocarbon be added for the purpose of conferring detergent resistance, or that the washbowl maker appreciates that it is added for that purpose. The claim would be infringed whether or not the fluorocarbon was added for detergent resistance.

Consequently, it was irrelevant that the containers described in the relevant prior art did not say anything about resistance to detergent: claim 1 was invalid for obviousness.

Implications

This case is a reminder to patentees to consider all the potential ‘bonuses’ and benefits to their inventions when drafting patents’ claims and focus on those claimed when litigating. Hallen held that “…an added benefit, however great, will not found a valid patent if the claimed invention is obvious for another purpose”. Had the claims required that the sizing agents conferred detergent resistance the outcome might have been different.

This article was co-authored by Ning-Ning Li and Fred Cascarini.