Patents

Case Note Re Cinpress Ltd. and Tamworth Mouldings Ltd.

Jane Lambert

October 1998

This article formerly appeared on the Lancaster Buildings website

On 24 Dec 1996, Laddie J allowed an appeal by Cinpres Ltd. and its associated company, Tamworth Mouldings Ltd. ("Cinpres"), from the decision of the hearing officer dismissing a reference by those companies under s.12 of the Patents Act 1977 for an order that Matthew Sayer ("Mr. Sayer"), one of Cinpres's employees, be named as the inventor of claims 1 and 2 as filed. S. 12 provides that before a patent is granted for an invention in pursuance of an application under any treaty or international convention:

"(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent ….. and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination."

The Issues

Cinpres contended that

	the invention was made by Mr Sayer while he was working as assistant to one James Hendry ("Mr. Hendry") in 1985 when Mr Hendry was a consultant to Cinpres,
	Mr Hendry must have been aware of Mr Sayer's invention, and
	while working for the applicant for the patent, Michael Ladney, he used the invention which he remembered from his Cinpres days.

The Patent Office Proceedings

The hearing officer, who complained that he had been faced with what he called an "undisciplined mass of evidence" consisting of poorly structured written evidence and often irrelevant cross-examination, summarized the issues as follows:

(1) Did Mr Sayer in 1985 make the invention within claim 1?
(2) Did Mr Hendry know of the invention while he was working for Cinpres?
(3) Did Mr Hendry take the invention and use it later in the patent in suit?

It appears from the Court of Appeal transcript that Mr. Sayer could not recall any specific disclosure or discussion with Mr. Hendry and his evidence on the material points could be no more precise than that he discussed everything with Mr. Hendry. Mr. Hendry, on the other hand strenuously denied that Mr. Sayer had disclosed anything to him or that he had taken anything with him to Mr. Ladney. In what the Court of Appeal called "a very careful and lengthy reserved decision running to 31 pages", the hearing officer accepted that Mr Sayer effectively anticipated the invention but he was not satisfied that Mr Hendry had become aware of what Mr. Sayer had done. He concluded that as Cinpres has failed to establish that Mr Hendry learned of the process developed by Mr Sayer, it also failed on the third issue.

The Hearing before Laddie J

Cinpres appealed to the Patents Court under Order 104 rule 19 of the RSC. Laddie J found that the hearing officer had concluded that there was "no relevant conflict of evidence". His Lordship said that he seemed

"to have decided that there was no conflict of evidence which he needed to resolve as between the potentially implausible evidence of Mr Hendry and the evidence of the conscientious Mr Sayer because the latter's evidence was not 'specific and focused enough."

It occurred to the judge that the hearing officer had not enquired into whether Mr Hendry's denials of knowledge in this particular development were credible. The hearing officer came to the conclusion that Cinpres's evidence was not persuasive because it was "conditional". The hearing officer had concluded that as Mr Sayer could not specifically recall discussions on the project his evidence "proved nothing." On the premise that the hearing officer had failed to resolve a conflict of evidence, the judge said that his task was to assess on the basis of the material before him "together with the unchallenged assessment of Mr Sayer as an honest and consistent witness", whether on a balance of probabilities Cinpres had disclosed the invention to Mr Hendry and whether Mr Hendry subsequently used that information as the basis of a patent application. Laddie J concluded that the unchallenged evidence pointed "overwhelmingly" to the disclosure of the invention to Mr Hendry. He reversed the hearing officer's findings of fact on the second and third issues substituting his own conclusions on the basis of his assessment of the evidence.

The Appeal
Delivering the judgment of the Court, Peter Gibson LJ was troubled both by the judge's general approach to the hearing officer's decision and specific details of his criticisms of the decision. He observed that an appeal from a hearing officer under Order 104 rule 19 was by way of a re-hearing. It was common ground that in all material respects the judge was in the same position as the Court of Appeal on an appeal from a trial judge:

"Because the judge has the duty to rehear the case, he must reconsider the material before the tribunal of fact. But he must do so subject to the qualifications that are necessarily attendant upon his position as an appellate court. Thus he must not only recognise that the burden is on the appellant to satisfy him that the tribunal of fact erred but he must also recognise that he has the disadvantage as compared with the tribunal of fact that he has not seen or heard the witnesses. The provision of transcripts of the evidence enables the judge to know all that was said, but not the manner in which the witnesses gave their evidence; still less can the transcripts convey the impression given by a witness to the tribunal of fact. The judge is therefore not in as a good position as that tribunal to determine the appropriate weight to be given to the oral evidence of the various witnesses."

The Court of Appeal was unable to accept the thrust of the judge's criticisms of the hearing officer's decision. Their Lordships even went so far as to say that in certain important respects the judge had misrepresented what the hearing officer had said. For instance, his approbation of Mr Sayer was not total and, in their Lordships' view, the hearing officer did not say that there was no relevant conflict of evidence. He made it plain that there was a conflict between Mr Hendry's consistent denials and Mr Sayer's general assertions of what he always did. The hearing officer was balancing an assertion of one witness's direct recollection of what actually occurred and an assertion by another of what must have occurred. He was entitled to take the view that evidence of what must have happened was of less weight, especially as there were other factors to cast doubt on that testimony. Although their Lordships made it clear that they would not necessarily have reached the same conclusion as the hearing officer, they agreed that he did not fall into fundamental error.
Comment
This appeal should be of interest to lawyers other than intellectual property specialists. The first point of significance is that an appeal from the Comptroller is not radically different from an appeal from other inferior tribunals. As Peter Gibson LJ said, the Court of Appeal hears numerous appeals originating from tribunals of fact consisting of persons without legal qualifications. Even when a tribunal does have a legally qualified chairman their decisions should not be subject to detailed legalistic analysis or gone through with a fine tooth comb. Their decisions must be read in a common sense manner and looked at in the round. While parties are entitled to know from the decision the tribunal's basic factual conclusions and the reasons which have led to them, the courts read such decisions with a degree of benevolence that may not be accorded to the decisions of qualified judges. The second point of significance is that their Lordships could see no reason why a different approach should be adopted in relation to appeals from hearing officers. It should, however, be borne in mind that viva voce evidence is not usually led in proceedings before the Comptroller. The evidence in most hearings before the Comptroller is in the form of statutory declarations. This case may not be quite so relevant to appeals where the evidence is in that form.
 

 

Important