08 February 2017

Case Note: Jushi Group Co Ltd v OCV Intellectual Capital LLC

Strands of Glass Fibres
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Jane Lambert

Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC) (06 Feb 2017) 

This was a claim by the Jushi Group Co. Ltd. ("Jushi") for declarations of invalidity and non-infringement and the revocation of European patent number 1 831 118 for glass yarns for reinforcing organic and/or inorganic materials. The patentee, OCV Intellectual Capital LLC (a subsidiary of Owens Corning) ("OCV"), counterclaimed for infringement of the patent. Jushi admitted infringement if the patent was valid. The only issue to be determined was whether the patent was valid. The action came on before His Honour Judge Hacon on the 5 and 6 Dec 2016. His Honour delivered judgment on 6 Feb 2017.

The InventionThe patented invention was a glass strand comprising 12 listed constituents, each being present in prescribed percentages by weight, with the further feature that 3 of those constituents taken in combination must constitute at least 23% of the total by weight.  The purpose of the invention was to provide glass reinforcement strands that combine the mechanical properties of reinforced glass, in particular, its stiffness, with improved melting and fiberizing properties, approaching those of electrical grade glass. Its advantage was that it could be produced more economically than strands of similar thickness.

The Action
The action was brought under s.72 (1) (a) of the Patents Act 1977. Jushi alleged that claims 1, 4, 5 and 6 of the invention were not new or were obvious. S.2 (1) of the Act provides that an invention is new if it does not form part of the state of the art. To succeed on this ground a claimant has to prove that an earlier invention or other prior art anticipated the invention. As Lord Hoffmann had put it in Synthon BV v. Smithkline Beecham plc [2006] 1 All ER 685, [2005] UKHL 59, [2006] RPC 10: 
"the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent."
As for obviousness, a patent will be granted only if it involves an inventive step and s.3 provides that "an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art." For both anticipation and obviousness, it is necessary for a claimant to identify some prior art. To determine whether an invention was obvious the court must also consider the skills and knowledge of a skilled addressee or person skilled in the art.

The Prior Art
The prior art on which Jushi relied was US patent number 4,199,364 for a glass composition invented by Homer E Neely.

The Skilled Address
The judge held at para [38] that the skilled addressee was an engineer with experience in the manufacture of glass fibre, with a degree in chemistry, materials science or chemical engineering. 

Common General Knowledge
The parties agreed that common general knowledge would include the contents of three standard texts.

The Claims
Claim 1 of OCV's patent claimed:
"1. A glass reinforcement strand whose composition comprises the following constituents in the limits defined below, expressed as percentages by weight:
SiO 2
Al 2O 3
≤ 2, preferably ≥1.3
Li 2O
0.1-0.8%, preferably ≤ 0.6%
BaO + SrO
B 2O 3
TiO 2
Na 2O + K 2O
˂ 2%
F 2
Fe 2O 3
˂ 1%

wherein the composition has an Al 2O 3 + MgO + Li 2O content equal to 23% or higher."
In addition to claim 1, three dependent claims were in issue:
  • Claims 4 and 5 were each characterized by a specified weight ratio for Al 2O 3 / (Al 2O 3 + CaO + MgO). 
  • Claim 6 was similar form to claim 1 but with most of the ranges for the constituents were narrower. 
Neely's Patent
Neely had disclosed a boron-free and fluorine-free glass composition for producing glass fibres. His invention provided fibres with the mechanical properties of both electric grade glass and '621' glass, a type of glass from an alternative categorization with properties similar to electric grade glass.  The general composition of Neely's glass was as follows:
"Table IV
SiO 2
Al 2O 3
Na 2O
Li 2O

The specification added:
"In the glass composition of Table IV other substituents may also be present in small amounts typically below 1 percent each. In general, Fe 2O 3 is present in quantities of 0.1 to 0.5 percent, TiO 2 between 0.2 to 0.8 percent, K 2O between 0.1 and 0.5 percent and also if the glass composition desired is only a boron-free composition, then a small amount of fluorine up to 1 weight percent can be used in the composition."
The judge found at para [22] of his judgment:
"The 12 constituents in claim 1 of the Patent are either listed in Table IV of Neely or in the passage quoted above. Alternatively their % content as disclosed by Neely can be calculated from figures given. Likewise, Neely's (Al 2O 3 + MgO + Li 2O) content can be calculated, as can the weight ratio of Al 2O 3 / (Al 2O 3 + CaO + MgO), relevant to claims 4 and 5 of the Patent."
It was common ground that the range of each of the constituents in Table IV of Neely either fell within or overlapped the corresponding ranges of claims 1, 4, 5 and 6 of the Patent. Neely also disclosed preferred embodiments with narrower ranges.  Neely disclosed 6 specific examples of his glass, that is to say, 6 glass fibres having constituents present in precisely stated percentages, as opposed to ranges, and one comparative example. None of the 6 examples had constituents with ranges that all fell within the corresponding range specified in claim 1 of OCV's patent. Examples 1 and 5 came closest.


Jushi argued that example 5 of Neely anticipated claim 1 of the patent.  The judge did not accept that contention. He said at para [60]:
"In my view the short point is that the skilled person would not just dismiss the statement in the Patent that example 5 of Neely is a comparative example. Whatever else the skilled person might conclude about claim 1, he would be clear that it was not intended by the patentee to cover example 5 of Neely. This might influence the skilled person's view of how numbered ranges stated in the Patent are to be interpreted. I do not, anyway, accept that a Patent can lack novelty over an example expressly stated in the specification to be a comparative example where it is possible to construe the claims such that they are not anticipated by the comparative example. The allegation of lack of novelty of claim 1 over example 5 of Neely fails."
Jushi's alternative argument was that since the range of fibres falling within claim 1 overlapped the range falling within Neely, claim 1 lacked novelty.  In  T 26/85 TOSHIBA/Thickness of Magnetic Layers [1990] E.P.O.R. 267, the Technical Board of Appeal had said at para [9]:

"It appears to the Board, therefore, that a realistic approach in assessing the novelty of the invention under examination over the prior art in a case where overlapping ranges of a certain parameter exist, would be to consider whether the person skilled in the art would in the light of the technical facts seriously contemplate applying the teachings of the prior art document in the range of overlap. If it can be fairly assumed that he would do so it must be concluded that no novelty exists."
Judge Hacon adopted that approach for the reasons set out in paras [68] to [70]:
"[68] Looking at cases of overlapping ranges more generally, it is possible to envisage a spectrum of possibilities. At one extreme, the range claimed in a patent in suit could overlap that claimed in the prior art document almost entirely. At the other extreme there may be only a very small area of overlap. With very great respect for the reasoning of Floyd J (as he then was), for my part, I am not confident that where there is, say, 99% overlap, the invention of the patent in suit still lacks novelty over the prior art because it cannot be said with certainty that the skilled person would perform the prior art in conformity with 99% of the range disclosed - he might go for the other 1%. I think it could be said that in such a case there is disclosure of embodiments of the invention, i.e. those which are performed using any part of 99% of the prior art range. If any of those embodiments were performed, it must result in the patent being infringed (to echo the language of Lord Hoffmann).
[69] Where the overlap is more modest, one might well imagine that there comes a point at which the prior art does not deprive the invention of novelty. Take the example of only 1% overlap. It is still true that if the embodiment or embodiments in the 1% area of overlap are reproduced, the invention of the later patent will inevitably be performed. However, the smaller the overlap, the more likely it is that this part of the prior art disclosure is "so submerged in it as not to be available" (see Lundbeck at [88](b) and T 666/89). There will come a point at which the prior art does not anticipate the patent.
[70] If so, there must be a criterion to distinguish those circumstances in which an overlap deprives an invention of novelty from those circumstances in which it does not. Apparently with this in mind, the TBA devised the criterion of whether the skilled person would seriously contemplate applying the teaching of the prior art document in the range of overlap."
After considering the expert evidence, His Honour concluded at [83] that he did not know the extent of the overlap between Table IV and claim 1 but, more importantly, he was not satisfied that it had been shown that the skilled person would seriously contemplate making fibreglass according to the teaching of Table IV within that area of overlap, and thus within claim 1. It followed that claim 1 of the patent did not lack novelty over Neely's Table IV. The same was true of claim 6.

Jushi argued that a variation of the constituents in example 5 of Neely's patent bu plus or minus 6% would bring the skilled addressee within claims 1 and 6. OCV retorted that there was no reason why he should wish to try such variation. The judge was unpersuaded.  He said at [86]:
"In my view it was not shown on the evidence that the skilled person would regard changes in either example 1 or 5 of Neely - changes sufficient to bring the composition within the scope of claim 1 or claim 6 of the Patent - as workshop modifications. Research, with no pre-conceived expectation of success, would have been required to test whether such variations provided satisfactory glass fibre."
Nor was he persuaded that the table in claim 1 was obvious over that of Table  IV of Neeley.  In the course of argument, OCV had contended that its patent could be justified as its invention was a selection invention. That would have been important had its defence on novelty and obviousness failed, In that case, the judge would have agreed that the invention was at least in part a selection invention. However, it was not necessary for him to decide the point as OCV had successfully resisted the attack on the validity of its patent.

Judge Hacon dismissed Sushi's claim for declarations of invalidity and non-infringement and revocation and allowed the counterclaim for infringement in the light of Jushi's admission mentioned in the first paragraph.

This is a significant decision in that it imports the Technical Board of Appeal's doctrine on overlapping ranges into English law and gives the skilled addressee a role in determining novelty questions as well as those on obviousness and insufficiency. It also conflicts with Mr Justice Floyd's dicta in H. Lundbeck A/S v Norpharma SpA [2011] RPC 23, [2011] EWHC 907 (Pat) rejecting that approach. However, Judge Hacon's reasons set out in paras [68] to [70] are compelling and I should be surprised if they are overturned on appeal or simply not followed.

Should amplification or clarification of any point be required, I should be glad to take calls on +44  (0)20 7404 5252 during office hours or respond to messages through my contact form.