Schlumberger Holdings Ltd v Electromagnetic Geoservices [2009] EWHC 58 (Pat) (19 January 2009)

Schlumberger Holdings Ltd v Electromagnetic Geoservices [2009] EWHC 58 (Pat) (19 January 2009)

The patents in suit are invalid for lack of inventive step (obviousness) and insufficiency. The specification does not provide enough information for a skilled addressee, absent CSEM expertise, to perform the invention without undue burden. The inventive concept is not novel in light of the prior art, and the amendments do not cure the defects. The skilled addressee must include a CSEM expert, and the patent does not sufficiently enable such a person to carry out the invention as claimed.

Citation
[2009] EWHC 58 (Pat)
Parties
Claimant: Schlumberger Holdings Limited; Defendant: Electromagnetic Geoservices AS
Jurisdiction
England and Wales
Judgment Date
19 January 2009
Procedural Posture
Patent Revocation and Validity Proceedings / First Instance Judgment
Outcome
Patents revoked
Legal Topics
Patent Validity, Obviousness, Anticipation, Sufficiency, Amendment of Claims
Intellectual Property Patents Patent Validity Obviousness Anticipation Sufficiency Amendment of Claims

Case Brief

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Parties

Schlumberger Holdings Limited

Claimant

Electromagnetic Geoservices AS

Defendant

Procedural Posture

Patent Revocation and Validity Proceedings / First Instance Judgment

Legal Issues

  1. 1 Whether the patents in suit (019, 887, 640) are invalid for anticipation and/or obviousness
  2. 2 Whether the specification is sufficient to enable the invention to be performed by a person skilled in the art
  3. 3 Whether the proposed amendments to the claims are allowable

Ratio Decidendi

The patents in suit are invalid for lack of inventive step (obviousness) and insufficiency. The specification does not provide enough information for a skilled addressee, absent CSEM expertise, to perform the invention without undue burden. The inventive concept is not novel in light of the prior art, and the amendments do not cure the defects. The skilled addressee must include a CSEM expert, and the patent does not sufficiently enable such a person to carry out the invention as claimed.

Court Disposition

Patents revoked

Orders

  • All three patents (019, 887, 640) are revoked for invalidity on grounds of obviousness and insufficiency.
  • Proposed amendments to the claims are refused as they do not result in valid claims.