Poisonous priority – how many ways can a patent be toxic?

Several members of the IPKat team have been captivated by the recent case of Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) (22 April 2013), another masterful judgment from Mr Justice Arnold (206 paragraphs, since you ask - rather concise considering the large number of points at issue).  This case concerns Nespresso coffee makers and their attendant capsules, and is packed with interesting legal points, several of which merit consideration.  Merpel suggests that readers watch out for further posts.  This moggy wishes for the time being to focus on the first and third of the judgment’s conclusions:

i) the Patent is not entitled to priority from the Priority Document;
iii) claims 1, 2, 7 and 8 lack novelty over the Priority Document.

First, a little background. As the judgment records:

The Claimants (collectively “Nestec”) are respectively the owner, exclusive licensee and alleged exclusive sub-licensee of European Patent (UK) No 2 103 236 (“the Patent”). Nestec allege that the First and Second Defendants (collectively “Dualit”) have infringed European Patent (UK) No 2 103 236 (“the Patent”) by supplying coffee capsules which are compatible with Nestec’s Nespresso coffee machines. Dualit deny infringement and counterclaim for revocation.

The patent was directed towards a system including both the coffee maker and the capsule, whereas Dualit had only sold capsules, and the aspect of the case with which this post does not concern itself is whether Dualit had committed any act of infringement at all (spoiler – they had not, according to Arnold J).

What got this Kat’s whiskers twitching however was the finding of invalidity over the Priority Document, European Patent Application No. 03015776 filed on 10 July 2003 which was subsequently published as No. 1 495 702 A1.  This Kat recently noted a series of cases where several patents were revoked because of a finding of an invalid priority claim and consequent invalidity over intervening prior art.  The present case goes one better – the prior art was the publication of the priority application itself.

The finding of lack of priority was as a consequence of the broadening of the terms of the claim between the priority document and the application as filed, with the result that claim 1 of the patent covered some possibilities that were not present in the priority document.  Arnold J considered that this meant that the claim as a whole was not entitled to priority.  He referred to the law on partial priority:

In the present case, there is an issue as to partial priority. This was explained by Kitchin J in Novartis AG v Johnson & Johnson Medical Ltd [2009] EWHC 1671 (Pat) at [122] as follows, having cited a passage from G2/98:

“I discern from this passage that the EPO considers it is permissible to afford different priority dates to different parts of a patent claim where those parts represent a limited number of clearly defined alternative subject-matters and those alternative subject-matters have been disclosed (and are enabled) by different priority documents. Further, this principle applies even if the claim has adopted a generic term to describe and encompass those alternatives. I do not detect anything in the decisions of the Court of Appeal in Pharmacia and Unilin Beheer which is inconsistent with this approach and in my judgment is one which this court should adopt.”

Arnold J stated “I do not consider that such arrangements [those covered by claim 1 but not in the priority document] are clearly defined alternatives to the other arrangements covered by claim 1.”  He therefore found the priority claim invalid.

However, the priority application was itself published, and was therefore taken to be part of the state of the art pursuant to section 2(3) of the Patents Act 1977 (corresponding to Article 54(3) EPC – novelty-only prior art effect of post-published patent applications having an earlier priority date).  Arnold J recorded the submissions of the parties and his conclusion as follows:

Nestec contends that the claims cannot simultaneously lack priority from, and be anticipated by, the Priority Document. Counsel for Nestec did not dispute, however, that in principle such a result was legally possible.  Nor did he dispute that the Priority Document disclosed arrangements having all the features of the relevant claims. Rather, he argued that it followed that the claims were entitled to priority. As counsel for Dualit pointed out, however, the claims are broader than the disclosure of the Priority Document. Thus they can, and in my judgment do, lack novelty over the disclosure of the Priority Document even though they are not entitled to priority from it.

Now, readers of the CIPA Journal will recall a pair of articles last year on the cognate subject of “Poisonous Divisionals”.  In the February 2012 issue of the CIPA Journal, Malcolm Lawrence and Marc Wilkinson  argued that in a pair of applications in a parent/divisional family, priority-entitled subject matter in one case can be novelty-destroying prior art against a priority-non-entitled claim in the other case.  There is relatively little case-law for this proposition, but EPO Board of Appeal case T680/08 did find such a situation for a priority application and patent claiming priority from it – exactly analogous to the present case.  In T680/08, however, the patent was saved by a disclaimer to the terminal point of a range.  In the present case, there was no saving amendment.

In the March 2012 CIPA Journal, Peter Arrowsmith and Tom Faulkner published “An antidote to poisonous division(al)s?”, arguing that in principle the claim should be divisible into the priority-entitled part, where the other application was not prior art, and the priority-non-entitled part, that would not be anticipated because the disclosure was not present in the priority document.  Arnold J’s analysis suggests that this analysis only applies where there are clearly defined alternatives.  However, many commentators including this Kat are troubled by the restriction of the possibility of multiple priorities for a single claim (which is explicitly provided for in the law) to the situation of clearly defined alternatives.  The apparent concession that “such a result [invalidity over its own priority document] is legally possible” may not be the correct approach.

It is surprising that this is still an open question.  The only perfect way to avoid the problem is not to amend a case between the priority and final filing; it can be mitigated by not allowing the priority application to publish and then not filing divisionals.  But this greatly reduces the usefulness of these two beneficial procedural possibilities.  Is it reasonable that the priority and divisional procedures should be able to combine with such lethal effect?