Nestec v Dualit - a seriously flawed judgment?

A lot has been written about the recent case of Nestec v Dualit, which seems to have brought the idea of "poisonous priority" to UK patent law in a similar way to the "poisonous divisionals" idea in European patent law. The issue centres around whether an application that claims more broadly than its priority application discloses can be anticipated under Article 54(3) / Section 2(3) if the priority application itself publishes. This concept has been much discussed, and I have written about my own solution to the problem here.

What has not been discussed much, however, is whether the conclusion arrived at by Mr Justice Arnold in the case was actually correct. Having looked in more detail at the judgment, I have come to the conclusion that it is seriously flawed on the priority point.

Claim 1 of the patent, as sought to be amended (by the underlined parts) by Nestec, and as broken down into integers by Arnold J, reads:

[1A] Extraction system comprising a device for the extraction of a capsule and a capsule (16) that can be extracted in the device; 

[1B] the capsule (16) comprising a guide edge in the form of a flange, the device comprising

[1C] - a first fixed part (2),

[1D] - a second part (3) which is moveable relative to the first part, 

[1E] [-] comprising a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing, 

[1F] - a part for insertion and positioning comprising guide means (6,7) for the capsule arranged so as to insert the capsule by gravity and position said capsule in an intermediate position; 

[1G] the guiding edge being received in the guide means (6,7); 

[1H] said guide means being insertion slides permitting the engagement of said flange; 

[1I] - a beverage-delivery system (19, 53), 

[1J] said second moveable part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position when the device is closed, characterised in that 

[1K] the guide means (6, 7) comprise stop means (20) configured to retain the capsule (16) in an intermediate position, in a manner which is offset to the axis of the capsule in the extraction position; 

[1L] the flange bearing against said stop means in the intermediate position, and in that 

[1M] the second, moveable part (3) receives the capsule to displace it from the intermediate position to the extraction position on the axis (25) of the capsule in the extraction position in said housing (4) 

[1N] so that, when moved, the moveable part acts on the capsule to move it downwards, 

[1O] the flange of the capsule passing below the stop means (20), 

[1P] and to push it along the axis (25) of said moveable part into its extraction position.

The key part of the judgment relating to the priority question is in paragraphs 95 to 104. In this, Arnold J notes that claim 1 of the patent covers certain arrangements, outlined as: i) the housing receiving the capsule being contained in either the second part (integer 1D) or the fixed first part (integer 1C); and ii) the capsule being offset, inclined or both relative to the extraction axis. Arnold J's view was that, because the priority document did not disclose these different arrangements, which were only found in the later application, claim 1 lacked a valid claim to priority.

On the face of it, this seems to be plausible. However, as any first year trainee will know, there is a huge difference between what a patent claim covers and what it states. The claim in question makes no mention of the housing being in either of the parts [perhaps not: see update below], nor does it require the capsule to be anything other than being offset to the extraction axis. The possibilities of the different ways in which the housing and the capsule could be arranged were therefore only additional possibilities that were added in the later filing. In normal circumstances this would not affect any priority claim at all, as it is perfectly normal practice to add features that might provide further fall back positions in a later priority-claiming filing. Arnold J, however, seems to think otherwise. If correct, this would be extremely worrying as it would result in a substantial proportion of existing patent applications and patents lacking a valid priority claim merely because additional options were added in the later filing, even if claim 1 was left entirely unchanged. Am I missing something, or has Arnold J got it very very wrong?

Update 27 June 2013: To pre-empt any eagle-eyed readers, I have noticed that I may indeed have missed something, although it doesn't affect my conclusion. The addition of the word "comprising" to the start of integer 1E indicates that the housing is part of the second part, not the first part. This would only raise an issue of priority if this could not be unambiguously derived from the priority application, and it was agreed that this arrangement was in fact disclosed in the priority application (see paragraph 96). However, the other point relating to the capsule being possibly also inclined is, I think, still valid.

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 

iii) whether the claimed technical effect results in the computer being made to operate in a new way; 

iv) whether there is an increase in the speed or reliability of the computer; 

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.