Bühler v Spomax: a lion in the path, or just a yapping terrier?

The Honourable Mr Justice Mann recently delivered his judgment in the case of Bühler AG v FP Spomax SA [2008] EWHC 823 (Ch). The case involved a fight over whether Bühler could rightfully lay claim to a method of milling wheat flour.

Bühler were the proprietors of EP(UK) patent 0336939 claiming a method of grinding wheat using a variant on a known "high grinding" system (using counter-rotating rollers: see picture right), where the wheat is taken through double roller grinding stages, screening to remove bran only after each double grinding stage. What was commonly done previously was to screen the partially-ground flour after each grinding stage. Bühler's advance was essentially in the removal of a screening stage, which they claimed had certain advantages in being able to obtain a good quality product suitable for obtaining starch, while avoiding the material being over-ground. Mann J put the situation thus:

"[T]his is said to be one of those cases in which a prejudice, thought to provide a 'lion in the path' (to use the metaphor of the cases – see Pozzoli Spa v BDMO SA [2007] FSR 372 [IPKat commentary here]) is said to be demonstrated to be wrong" (paragraph 15).

Mann J then followed the Windsurfer-esque Pozzoli approach. Much of the argument centred around what the skilled man (pictured left) would know, and in particular to what extent common general knowledge could be used to determine the extent of prejudice he would have against grinding twice without intermediate sieving. Bühler argued it was necessary to turn to historical material in order to see whether it dispelled the prejudice, and that it was also necessary to turn to the actual experience of starch flour millers and consider whether that affected the prejudice too. Mann J disagreed, saying:

"I do not consider that this is the correct approach to ascertaining prejudice. One does not look at the evidence which, by itself, is said to establish it, and then look for evidence dispelling it. The enquiry is an overall one – does the prejudice exist, weighing all the evidence together and not starting with one piece and then testing the rebutting quality of others. It is therefore necessary to consider the remainder of the evidence before coming to a conclusion as to whether the prejudice relied on by Bühler was part of the common general knowledge of the skilled person" (paragraph 36).

In finding that the prejudice did exist, but that it was not uniform and there was no technical reason for it being widespread, Mann J concluded against the claimant:

"The prejudice of the bread miller merely provides one element in the overall picture. There is no lion in the particular path down which the skilled man travels in this case (or at least not the particular lion alleged). There is at most an interesting small terrier which yaps a little to attract attention. It does not provide much distraction, let alone deterrence" (paragraph 45).

This was, effectively, enough to dispose of the matter, although Mann J went on to consider the various cited prior art documents (some dating back to the earlier part of the last century), and eventually found that the core concept of the patent was not inventive. The patent was consequently ordered to be revoked.

Another point, not in the end relevant to the outcome, was that Buhler had applied to the EPO for their patent to be limited, under the new procedure allowed after EPC2000 came into force last year. Their application under Article 105a, made on 17 December 2007, involved the deletion of several claims and limitations to the wording of claim 1. As Mann J put it:

"In a fax dated 31st January 2008 an examiner in the EPO confirmed a prior telephone conversation and confirmed in writing that the examination division dealing with the amendment application intended to 'limit' the patent in accordance with the amendments shown above, but 'for internal procedural reasons it is at present not possible to issue the decision on the limitation of the Patent before April 2008'. While that seems an extremely surprising state of affairs in a modern organisation, that is apparently the position. It is hard to conceive that the position will change pending the final issue, and in those circumstances I treated the patent as amended (all parties were prepared to argue the case on that basis) and did not hear any part of the English amendment application."

The IPKat is not as surprised as Mann J was about the time taken by the EPO to deal with the request. However, over 4 months to deal with a simple request for limitation does seem like quite a long time. Have any of the IPKat's readers had similar problems getting applications for limitation dealt with?

[NB: Contrary to appearances, this was in fact posted by the IPKat's amenuensis David, and not Jeremy as stated. Apologies for any confusion caused as a result!]