Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 (28 July 2010)

Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 (28 July 2010)

The correct approach is to assess obviousness by asking whether it would have been obvious to either the notional exploration geophysicist or the CSEM expert, considering their knowledge and whether it would be obvious to bring in the other expertise. If the invention is not obvious to either, and the marriage of skills is itself non-obvious, the patent is valid. The law does not require the notional skilled person to be the same for all purposes; the relevant team depends on the context and the nature of the invention.

Citation
[2010] EWCA Civ 819
Parties
Claimant/respondent: Schlumberger Holdings Limited; Defendant/appellant: Electromagnetic Geoservices AS
Jurisdiction
England and Wales
Judgment Date
28 July 2010
Procedural Posture
Patent Appeal / Court of Appeal (civil Division) on Appeal From High Court (patents Court)
Outcome
Appeal dismissed; patent held valid.
Legal Topics
Obviousness, Inventive Step, Person Skilled in the Art, Patent Validity, Secondary Evidence
Intellectual Property Patent Law Obviousness Inventive Step Person Skilled in the Art Patent Validity Secondary Evidence

Case Brief

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Parties

Schlumberger Holdings Limited

Claimant/respondent

Electromagnetic Geoservices AS

Defendant/appellant

Procedural Posture

Patent Appeal / Court of Appeal (civil Division) on Appeal From High Court (patents Court)

Legal Issues

  1. 1 Whether the patent in suit (EP 1,256,019) is invalid for obviousness over cited prior art (Chave, MacGregor, Srnka)
  2. 2 Whether the 'person skilled in the art' for the purposes of obviousness is the same as for sufficiency and claim construction
  3. 3 The role of secondary evidence in assessing inventive step

Ratio Decidendi

The correct approach is to assess obviousness by asking whether it would have been obvious to either the notional exploration geophysicist or the CSEM expert, considering their knowledge and whether it would be obvious to bring in the other expertise. If the invention is not obvious to either, and the marriage of skills is itself non-obvious, the patent is valid. The law does not require the notional skilled person to be the same for all purposes; the relevant team depends on the context and the nature of the invention.

Court Disposition

Appeal dismissed; patent held valid.

Orders

  • Patent not invalid for obviousness; Schlumberger's patent upheld.