Posted: February 16th, 2017
Jushi Group Co., Ltd v OCV Intellectual Capital, LLC, Intellectual Property Enterprise Court (HHJ Hacon), 6 February 2017, Neutral Citation Number  EWHC 171 (IPEC)
This case is interesting for the approach taken by the UK court in a situation where the patent in suit claims ranges that overlap with ranges disclosed in the prior art. The action was brought by Jushi to clear the way for the import of fibre glass products into the UK.
Jushi sought the revocation of EP 1 831 188 B1 entitled “Glass Yarns for Reinforcing Organic and/or Inorganic Materials” and also a declaration of non-infringement, on the basis that the patent was invalid and therefore could not be infringed. Accordingly, only validity was in issue.
The invention claimed by the patent was a glass strand comprising 12 constituents, defined by reference to ranges of percentages by weight of the glass composition. Jushi’s invalidity case rested on a single piece of prior art, Neely, over which the patent in suit was alleged to be both anticipated and to be obvious.
Neely disclosed in “TABLE IV” a composition of glass fibre, with constituents again defined by ranges of weight per cent, the ranges overlapping with those claimed by the patent in suit. Neely also disclosed a number of examples, one of which (“Example 5”) was referred to in the patent in suit as a comparative example.
Jushi’s anticipation arguments were twofold. First, Jushi argued that Example 5 of Neely, when two of the constituents were rounded using the nearest whole number convention, fell within claim 1 of the patent in suit: namely, the upper limit of CaO/MgO required by the patent was less than or equal to 2%, whereas Neely Example 5 had 2.15%, and the sum of the weight per cents for aluminium oxide, magnesium oxide and lithium oxide had to be 23% or higher, whereas Neely Example 5 was 22.88%.
However, the judge held that when construing the meaning of the numerical ranges of claim 1 of the patent in suit, the skilled person would not construe them in a way that would mean that the claim would cover something expressly stated in the patent to be a comparative example (as opposed to an example of the claimed invention). The judge therefore held that the claim was not anticipated by Example 5 of Neely.
Second, Jushi argued that the skilled person would seriously contemplate producing glass fibres with constituents falling in the area of overlap between the ranges disclosed in TABLE IV of Neely and the ranges required by claim 1 of the patent in suit.
Jushi relied on the decisions of the EPO’s Technical Board of Appeal in T 26/85 TOSHIBA/Thickness of Magnetic Layers and T 666/89 UNILEVER/Washing Composition  in which a test of “…whether the skilled person would seriously contemplate applying the teaching of the prior art in the range of the overlap…” was applied for the assessment of novelty, where the prior art disclosed ranges that overlapped with that of the patent being opposed.
The UK judge preferred and applied this approach, despite the fact that this conflicted with comments of the judge (Floyd J, now a Court of Appeal judge) in the case of H. Lundbeck A/S v Norpharma SpA  EWHC 907 (Pat) in the UK’s Patents Court.
In that case Floyd J had commented that the test that should be applied was whether practising the prior art would inevitably result in something that fell within the claims of the patent in suit.
However, the judge was not satisfied on the evidence that Jushi had established that the skilled person would seriously contemplate the production of glass fibres that incorporated each and every range of overlap that would be needed to arrive at glass fibre within claim 1. The patent was therefore not anticipated.
On inventive step the judge, relying on the expert witness evidence, accepted OCV’s case that the skilled person would be unlikely, when presented with an example of a working composition, to vary the relative amounts of each constituent component, absent some good reason. The skilled person would accordingly not deviate from the examples disclosed in Neely. Jushi’s submission, that the skilled person would experiment up to 6% in either direction, was not accepted.
Consequently the patent was held to be both valid and infringed.
A copy of the judgment can be found here.
Headnote: Graham Burnett-Hall and Peter Lyons, Marks & Clerk Solicitors