Jushi Group Co, Ltd v OCV Intellectual Capital, LLC
Decision date: 6 February 2017
Neutral citation: [2017] EWHC 171 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This case concerned the validity of European Patent 1 831 118 in light of prior art Neely and whether two imported fibreglass products infringed it. The court rejected Jushi’s attacks that claim 1 (and dependent claims) lacked novelty or inventive step over Neely (examples, Table IV and Table VI) and concluded that part of the claimed subject-matter is a valid selection invention. The Patent was held valid and infringement was threatened in respect of Product 2 (Product 1 conceded to fall outside the Patent).
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
Where a patent specification expressly identifies a piece of prior art as a comparative example, a skilled reader will treat that as signalling that the patentee did not intend the claims to cover that prior art example, which is relevant to claim construction and novelty. Also, a party alleging lack of novelty from overlapping numerical ranges under the TBA "serious contemplation" test bears the evidential burden to specify the overall overlap and prove that the skilled person would have seriously contemplated practising the teaching in that overlap.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment warns against treating the TBA "serious contemplation" approach as collapsing novelty into obviousness, particularly where multiple interdependent compositional ranges are involved. It also notes that patentees risk broad claim drafting that extrapolates from a single example, but that unpleaded insufficiency arguments cannot be introduced as a substitute for a pleaded insufficiency attack.