Saint-Gobain Adfors SAS v 3M Innovative Properties Co [2022] EWHC 1018 (Pat)

9 May 2022

James Abrahams QC and Michael Conway successfully appeared for the claimant (“Saint-Gobain”) in a claim to revoke a European patent (“the Patent”) registered by the defendant (“3M”) for dish-shaped abrasive particles with a recessed surface.

The Patent claimed that dish-shaped abrasive particles, with a sloping sidewall and a specific thickness ratio, increase the grinding performance and/or cut rate of abrasive articles compared with flat particles.  Saint-Gobain attacked the Patent’s validity the following grounds: (1) anticipation: that implementing a piece of prior art (“Rowenhorst”) would inevitably result in abrasive particles falling within the claims; (2) obviousness: that the disclosure of Rowenhorst made certain modifications obvious to explore and, in doing so, the skilled person would end up making dish-shaped particles; (3) that the Patent made no technical contribution to the art over Rowenhorst and (4) sufficiency: the claims were uncertain and required undue burden for the skilled person to put the Patent into effect.

Michael Tappin QC, sitting as a Deputy High Court Judge, held that the patent should be revoked for insufficiency because the skilled person could not, without undue burden, make dish-shaped abrasive particles across the breadth of the thickness ratio claimed.  The judge dismissed the anticipation attack on the basis that the evidence did not establish that implementing Rowenhorst would inevitably produce particles falling within the claims.  Regarding obviousness, the judge held that the attack relied on the skilled person chancing on a combination of conditions with no explanation for why the skilled person would arrive at those variables.  The attack was a step-by-step analysis infected with hindsight.  As to the Patent’s technical contribution, the judge held that the data in the patent made the claimed invention plausible.

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