SEB v De’Longhi Appeal

This was an appeal made by the appellant/patentee SEB against the finding of the judge that the patent, which concerned so called "cool – wall" fryers, was obvious over common general knowledge. Peter Gibson LJ, giving the unanimous decision of the Court of Appeal, upheld the decision of Pumfrey J.

De’Longhi, the defendants/respondents, cross-appealed [1] the findings on infringement and insufficiency, which Pumfrey J had made in favour of SEB. On these issues as well, Pumfrey J was upheld.

As is commonly the case, infringement was tied up with construction. The main issue for the Court had been what the word "closed" meant in context of the claims. Once the Court had decided "closed" did not require a hermetic seal, the fact that the defendants’ fryers had tiny gaps between the two components concerned did not mean they did not fall within the claims. The consequent finding of infringement was upheld, without the need for a "Protocol question" type analysis concerning material variants.

Insufficiency was run as a squeeze with infringement by De’Longhi , but as the judge had no difficulty in deciding what "closed" meant, it followed that the insufficiency argument could not succeed. The Court of Appeal agreed.

Findings of obviousness over common general knowledge, ("cgk"), alone are less common than over citations of particular pieces of prior art, which usually take the form of earlier publications. In the latter case, cgk is the starting point from which the skilled man considers the particular publication. In the former, as in this litigation, it is both starting point and particular prior art simultaneously.

Here, both experts gave evidence on what they considered to be the common general knowledge. There were differences of opinion, one of the main ones being the extent to which the skilled man at the priority date would "compartmentalise" his knowledge of differing household appliances, which might typically be made by the same company.

That was not the only factor in resolving this issue though. De’Longhi’s expert had been found by the judge to be of an inventive turn of mind – to what extent had the judge borne this in mind when weighing up his evidence?

In the appeal, both parties relied on the familiar cases [2], which warn against step by step ex post facto analysis – a particular danger where a finding of obviousness arises from combining elements within the cgk.

Obviousness is a finding of fact and is notoriously difficult to overturn on appeal, although there have been some recent successes [3]. In the event, the Court of Appeal decided there was some evidence on which the judge could rightly base his finding, and because he was an experienced judge and had referred to the relevant cases, it could not be said he had erred in law or principle. That is a novel approach! The experience of the judge has never been a factor in appeals and it introduces a very unwelcome element of subjectivity.

There is no new law in the case, rather a re-affirmation of existing principles. There was an opportunity for the Court of Appeal to give guidance on who the skilled man was in the internet age of the 21^st Century, and whether he was "more skilled" than his predecessors, but this was not necessary and the Court made no comment. This reminds practitioners that obviousness remains the hardest trick in the book!

The case was the UK part of a pan-european litigation between the protagonists, and it is interesting not least because almost without exception, differing decisions on differing grounds have been reached on the same legal issues by the various tribunals involved, including Board of Appeal at the EPO when the patent was opposed after grant. In that respect, it is an advert for the merits of a Community Patent.

[1] Technically the issue was raised only in the Respondents’ Notice to the Appeal rather than by cross appeal, but this was a matter of form rather than substance.

[2] British Westinghouse [1910] 27 RPC 230, Technograph [1972] RPC 346

[3] Sabaf [2002] EWCA Civ 976, Panduit [2003] FSR 8, Wheatley [2001]RPC 7

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.