Haulm Sweet Haulm for the Grimme Reaper?

Some good folk would say that quite enough has already been said about Tuesday's Patents Court for England and Wales ruling of Mr Justice Floyd in Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott (trading as Scotts Potato Machinery [2009] EWHC 2691 (Pat), an earthy tussle over rights in machines for separating potatoes from weeds, earth, clods, stones and haulm. Grimme alleged patent and design infringement.

Right: nothing to do with potatoes, this is actually a machine for recovering costs ...

Scott denied infringement and counterclaimed for (i) invalidity and (ii) ungrounded threats to sue for patent and design infringement. Both sides emerged as both winners and losers (see PatLit here for a brief explanation and some idle speculation as to what the costs order might look like), and Class 99 waxed lyrical on the analogy between the design issues in this action and those in the 'pig fenders' case ( C & H Engineering v Klucznik [1992] FSR 421: as David Musker notes, "for pig read potato").

So is there anything left for the IPKat? Yes, there is. The question is again raised as to whether the commercial success of a patent is an indication of inventive step. Says Floyd J:

"Commercial success

127. Grimme also rely on commercial success of machines made in accordance with the invention. Commercial success can, in some fairly rare and clear cases, amount to a secondary indication of inventive step. The reasoning behind why this is so was explained in characteristically lucid terms by Laddie J in Haberman v Jackel [1999] FSR 683 at 699 to 701.

128. Grimme have provided a table of the sales which it relies on to show commercial success. It relies on the Grimme MultiSep spiral segment separator sales from 2000 when it was launched. It contrasts these with sales of other separators, including the MultiSep with paddle star wheels. Grimme contend that the MultiSep spiral segment is made in accordance with the Patent but that the MultiSep paddle star is not.

129. I have not found the evidence of commercial success helpful on any issue of obviousness in this case. The basis on which I have found claim 1 to be obvious is that a Rollastar machine with rubber clod rollers is sufficiently adjustable that it falls within the claim. That being so, no amount of commercial success of either MultiSep machine can have a bearing on the issue. The same applies to claim 24.

130. So far as claim 17 is concerned, I have been able to find that claim to be inventive by a sufficient margin not to require secondary indicia of the kind provided by commercial success. But given the level of sales enjoyed by the paddle star, which did not have this feature, I do not think that it is established that commercial success is due to the features of claim 17.

131. I think it would be unwise to attribute the success of the MultiSep to anything disclosed in the Patent. The lips or projections taught by the Patent are nothing like those used in the MultiSep. The evidence showed that those used in the Patent would fill with mud and be difficult to clean. I believe that the commercial success of the machines relied on is likely to be due to a combination of factors including Grimme's market position and the decline of the Pearson business. It is impossible to distill from that evidence any indication that the features of claim 17 played a significant role".

The IPKat doesn't like to see himself as an extremist or an iconoclast; still less does he like to take issue with the late Sir Hugh Laddie -- but he fervently wishes that the 'commercial success' criterion were consigned to the scrapyard of legal history along with frankalmoign and enfeoffments. If you look at Article 56 of the European Patent Convention, there's a bit in it that read:

"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art".

The Kat knows this sounds somewhat trivial, but this looks to him as though inventive step is measured by looking at the invention itself, rather than the receipts and invoices. He understands that, in the days when judges knew plenty of Latin and Greek but whose knowledge of science was confined to apples falling from trees, it was cruel and unfair to blind them with science, so lovely little rules of thumb like 'long-felt-want' and 'commercial success' were devised. Surely there's no room for them now, with specialist patent courts and even some judges with a science background to staff them. In any event, as one member of the Court of Appeal once pointed out (and there's a pint of beer for whoever first posts his name below together with the case he said it in), the absence of commercial success is as much an indicator as the existence of commercial success (i.e. if something's sufficiently non-obvious, people won't see how you can make it pay: think of Frank Whittle's invention of the jet engine).

At this juncture, three things occur to the IPKat. First, we are all supposed to be good Europeans now. So can anyone tell him how far 'commercial success' is used as a criterion of inventive step elsewhere in Europe?

Secondly, if we are all supposed to be looking for ways to streamline and accelerate patent litigation, can the judges make it a point of case management to say something like: "don't go bothering me with evidence of commercial success in support of a patent's validity unless I say so"?

Thirdly, it may only be a matter of impression, but 'commercial success' generally looks to the IPKat as though it's thrown in when the case in favour of a patent's validity is pretty weak. So, other than to make the client happy by letting him hear his patent praised and running the risk that he might be faced with disclosure of some of his more delicate financial and management records if he does so, does 'commercial success' really achieve anything?

Grimme reapers here

The Grim Reaper here and here

Cat potato here