Kapur v Comptroller General of Patents [2009] EWHC 1302 (Pat)

[2009] EWHC 1302 (Pat)Case No CH 2009 APP 0083
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
St. Dunstan’s House
Venue 133-137 Fetter LaneDate Thursday, 14 th May 2009
London EC4A 1HD
Before
HIS HONOUR JUDGE FYSH QC
Between
RAJESH KAPURClaimantCOMPTROLLER GENERAL OF PATENTSDefendant
Digital Transcription of Marten Walsh Cherer Ltd.,6 th Floor, 12-14 New Fetter Lane, London EC4A 1AG.Telephone No: 020 7936 6000 Fax No: 020 7427 0093 DX: 410 LDEEmail: info@martenwalshcherer.comWebsite: www.martenwalshcherer.com
THE APPELLANT appeared In Person for in personMISS CHARLOTTE MAY (instructed by The Treasury Solicitor) for Respondent
Judgment
[1]I have before me an appeal by Mr. Rajesh Kapur who is the applicant for a number of patent applications (I will not recite them all) which relate to Document Management Systems.[2]The applications have had a bit of a history – which is not in dispute. Originally, Mr. Bartlett of the Patent Office refused all these applications on two bases (both under section 1(2) of the Act), (1) that they consisted of or directed the claims to a rule or method of performing a mental act and, (2), they consisted of a program for a computer. Mr. Kapur appealed and the case went before Floyd J. I would say that Mr. Kapur has always conducted these cases himself – and he has made a good job of it.[3]Floyd J gave a decision which is also before me. It is dated 10th March 2008 and is a 46-paragraph judgment. He basically in effect said, “I am upholding the decision of Mr. Bartlett insofar as it concerns the computer implementation. I am not now going to go into the technicality of the inventions because they are long and, in any event, I was not taken to them in detail. But insofar as the computer implementation parts were concerned, I uphold the decision of Mr. Bartlett in relation to all the claims of all the applications”. However, insofar as we were concerned possibly with claims covering a mental act, Floyd J disagreed with the conclusion that Mr. Bartlett came to and said this:
“Nevertheless I would allow Mr Kapur's appeal insofar as it relates to the mental act exclusion and remit the case to the Office to consider whether, after the exclusion of the computer implementation, the application could survive further examination under the other provisions of the Act. That further examination should include consideration of the impact of the business method exclusion on any” – note – “amended claim, a matter which Mr Bartlett rightly left to one side as unnecessary when dealing with the claims before him.”
[4]Miss May, who appears for the Comptroller, has drawn my attention to other passages in Floyd J’s decision. She has noted that there was no appeal from it. Earlier today, Mr. Kapur told me in fact that he agreed with Floyd J’s conclusion.[5]So Mr. Kapur went back to the Patent Office to see whether something could be retrieved in the manner which Floyd J thought might be possible. As a result two things happened. Seven of the applications were left as they were when they were before Floyd J and one application was amended; that is the one numbered ’365. On ’365 Mr. Kapur added some, I think, seven additional dependent claims. They form claims 37 to 43 and they were dependent basically on claims 33 and 34 of the claims that were before Floyd J and which he had found objectionable on the basis that they were directed to computer programs.[6]There was then some toing and froing between the applicant and the Patent Office. As a result, a second decision was given, this time given by a different Hearing Officer, Mr. J. Elbro. That was dated 6th February 2009. From that decision Mr. Kapur appeals today.[7]Looking at his notice of appeal, he appears to have appealed everything; so a good deal of time today was spent with (and Miss May’s skeleton of argument was largely concerned with) questions of res judicata.As I have said, seven of the eight patent applications came before me today in exactly the same form as they were before Floyd J.[8]Miss May has rightly drawn my attention to a number of authorities relating to res judicata and indeed it is right to say that, in his decision, Mr. Elbro has gone into the matter with exemplary correctness. Paragraph 22 sets out his understanding of the law and also, it should be said, at paragraph 20, his understanding, as a matter of law, of excluded matter. I find no fault with those paragraphs at all.[9]During the course of the morning Mr. Kapur, not surprisingly, withdrew his appeal insofar as it touched the first seven applications of the eight, i.e. those to which no amendment had been made. However, with regard to application ’365, he drew my attention to (and relied on) the amendments which had been made to it. I have looked at these claims. As I say, the first one, 37, is to a product – a “recycle bin” system as claimed in claim 33 and claim 32 [put that way around for some reason] further comprising a document management system for searching, retrieving etc. preserving access to and recycling etc. There is also the provision for what Mr. Kapur calls “at least one purpose-built disk”. This is for a convenient purpose, namely, to store earlier documents that are later overwritten or deleted. It is accepted that that could be a useful benefit. The question is however: is it patentable?[10]The Examiner sets out in paragraphs 23 to 31 the arguments of both parties, the examiner’s and the applicant’s arguments. It is noticeable that he was still concerned by the fact that Floyd J’s decision had not apparently been heeded in respect of the amended claims. He said:
“28. The examiner disputed that this was a ‘further technical contribution’. He indicated (and Mr. Kapur accepted) that so-called ‘hybrid disks’, with both a cache memory on a chip and a long-term storage medium were well-known in the art. He did not consider any improvement was being made to the disk – the disk was only a storage medium used in implementing the system of the other claims.”
Then significantly:
“29. I further put to Mr. Kapur at the hearing that these claims still related to a computer implementation, and he agreed.” “29. I further put to Mr. Kapur at the hearing that these claims still related to a computer implementation, and he agreed.”
[11]Mr. Kapur sought to, I think, diminish that agreement by running some arguments before me today – of which I am not convinced – about the word “implementation”. The conclusions Mr. Elbro came to are to be found in paragraphs 37, 38 and 39. He said:
“37. It is possible in principle to conceive of a situation where dependent claims are not excluded, despite the exclusion of the claims they are dependent on. So I am faced with the question of whether these dependent claims, which were not proposed at the time of the previous litigation, are caught by” – if I may paraphrase – “[Floyd J’s judgment and thus the estoppel that follows from it]. 38. In my view, they are. Mr. Bartlett found all the claims of the applications to be excluded and held this was also true of any conceivable amendments. His decision was only overturned by Floyd J insofar as it concerned potential claims which related purely to non-computer-implemented systems.” – I have already read the passage from Floyd J in which he very clearly says that. – “The new claims, as Mr. Kapur conceded, clearly cover computer implementation and so are not covered by the part of the decision that was overturned. Floyd J’s judgment therefore rules them excluded.”
[12]I agree, and though there are other grounds which Mr. Elbro advances for rejecting Mr. Kapur’s amended claims, I need not comment on them. I agree with Mr. Elbro and for the reasons that he has given and that I have just read out, I would dismiss this appeal. Miss May, what is your position on costs? MISS MAY: My Lord, the position of the Office is that they do not seek their costs. JUDGE FYSH: So the appeal is dismissed. You have the judgment. Do you want leave to appeal that? THE APPELLANT: No, your Lordship. Thank you. JUDGE FYSH: All right. Thank you, very much. MISS MAY: My Lord, may I ask for permission to get a recording of the judgment? JUDGE FYSH: Yes, of course. Also I would like you to draft an order, please? MISS MAY: My Lord, I can do that straightaway. JUDGE FYSH: It is quite short. But I forgot on a previous occasion when we had an appeal from the Comptroller that we needed an order. So we had better have one. Could you draw one up, please, Miss May? MISS MAY: Yes, I can do that. We will contact the Mechanical Recording Department. My understanding is they always ask us if we have had permission from the Judge. JUDGE FYSH: You have my permission. MISS MAY: Thank you. I think the Office will want to get a transcript for the record. JUDGE FYSH: All right. MISS MAY: Thank you very much. - - - - - - - - - - - - - -