This month the English Court of Appeal handed down judgment in the case of Pozzoli SpA v. BDMO SpA and others. This followed the judgment in the High Court last summer where a patent for a multiple-disc tray was found invalid (and even if it were to be found valid, it would not have been infringed by the Defendants’ disc tray products).


As mentioned in a previous Hot Topic here the patent was basically directed to a tray in which two optical discs could be held in the tray so that they partially overlapped (but without touching each other) and could each be removed for playing, independently of the other. These trays are typically injection moulded in one piece and then attached to quality cardboard artwork folders, for high-end marketing of their contents.

The alleged infringing tray had an arrangement whereby the discs overlapped each other, but they were held at an angle inclined from the base of the tray. The claim of the patent required that the discs be “axially” retained. After dealing with construction of the claims, the judge decided that the manufacture of the Defendant’s trays did not infringe. Note that in related litigation involving Pozzoli the Dusseldorf court had come to the conclusion, on essentially the same arguments, that there was infringement.

The judge also dealt with validity and decided that the patent merely embodied an invention that was obvious in light of the common general knowledge and should therefore be revoked. Leave to appeal was refused by the High Court judge so the patentee applied to the Court of Appeal itself for such leave.


In the Court of Appeal the main judgment was given by Jacob LJ. He began by dealing dismissively with an argument that permission to appeal in the first place should be given “as of right” because of Article 32 of the TRIPs (Trade-Related aspects of Intellectual Property rights) agreement annexed to the WTO Treaty. This provides that “An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available”. Pozzoli argued that this meant a full judicial hearing on the merits was called for. The judge disagreed and decided that a decision by a Court of Appeal judge or judges made on the papers or following an oral argument as to whether or not to grant permission to appeal from an order for revocation is a “judicial review”. Permission to appeal was given anyway. In fact Jacob J indicated that such permission was likely to be given in patent cases other than very simple ones:

“Unless the case is very clear and can be understood sufficiently readily in an hour or so, the better course is normally for permission to be granted by the trial judge. For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge. Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if later it discerns that the case is indeed clear”.

However Jacob LJ also reiterated that when actually deciding such an appeal, findings of fact in the court below could not be challenged unless “plainly wrong”. Plus, in relation to appeals on decisions finding patents invalid on the obviousness ground, the appellate court should be slow to overturn such a finding made by a judge on what is a question of degree. Jacob LJ discussed in some detail the famous Windsurfing case test for determining whether an invention is obvious. He said that the test needed some “restatement and elaboration” not least because it is impossible to determine the “inventive concept” (original step 1) other than through the eyes of the man skilled in the art (original step 2). He therefore ended up both re-ordering its steps and rewording it as follows:

(a) Identify the notional "person skilled in the art"

(b) Identify the relevant common general knowledge of that person;

Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Applying this reformulated version of the obviousness test Jacob LJ nevertheless reached the same conclusion as the judge. One argument of particular interest which was raised was that the invention was not obvious, because of a technical prejudice in the industry against doing what the patentee did. The High Court judge had decided that there can be an invention if it is proven that there was such a prejudice (in this case, essentially against partially overlapping discs) and that the patent has overcome this prejudice and therefore contributed something to the field.

Jacob LJ analysed this issue differently. He said that patent protection could not be given to something that was already an old idea (you must have had the idea already, in order to formulate a prejudice against it!) even if it was thought not to work or to be impractical, unless the patent explains “how or why, contrary to the prejudice, that it does work or is practical”. Otherwise no contribution to “human knowledge” as he called it, has been made.


The Court of Appeal is always going to find it difficult to overturn a finding of obviousness of a patent. This is illustated in case after case. The rationale is of course that it is only the judge at first instance who hears all of the evidence and cross-examination.

It is however interesting to note that the non-infringement finding was also left intact on appeal, despite the different views of the German court in related litigation. Jacob LJ was content to disagree with that court, but in a recent extra-judicial paper he has used the Pozzoli case as an example of why a European Patent Litigation Court (separate from the institutions of the EU) is needed.