Case No. IP-2017-000156

34.The foregoing principle in Markem would seem to be particularly applicable to a s.12 case. There is even less reason for the tribunal to engage in an inquiry as to validity since it has no power to refuse the patent application even where the claims are obviously invalid. 35.However, in the present instance there was a difficulty. Both sides argued that the inventive concept advanced by the opposing side could not qualify as such because it was obvious at the priority date. Argent argued that BDI’s inventive concept was not even novel. I therefore had two rival inventive concepts, each said by the opposing side to be an uninventive concept. 36.This was not apparent at the case management conference. Neither side had by that stage pinned down its case on the inventive concept. I directed that this should be done and gave the parties permission to return to the court if difficulties emerged. I was told by Mr Johnson that after the exchange of inventive concepts BDI floated in correspondence the idea of returning to the court to seek an order for expert evidence, which Argent opposed. For whatever reason BDI took this no further. I cannot say now whether I would have allowed expert evidence to deal with each side’s allegation that the other was relying on an uninventive concept had an application been made, and if so how restricted it would have been, given Jacob LJ’s ruling in Markem. By the time of the trial this was water under the bridge. 37.Fortunately, Mr Davis and Mr Johnson were agreed as to how I should deal with the conflicting views on the inventive concept. I should decide what the inventive concept is by reading the Application through the eyes of the skilled person. That is the approach I have taken. 38.This approach had consequences. As was common ground the skilled person would read the Application with his (hereafter alternatively her) common general knowledge in mind. I could take into account common general knowledge agreed between the parties but there was no evidential basis for adding anything. 39.Mr Davis occasionally referred to the evidence of the witnesses in support of his contentions as to what was or was not obvious at the priority date. As I reminded him, these were witnesses of fact and neither side was entitled to draw from the evidence opinions which had a bearing on obviousness, no matter how well informed the witness might be. Their role was to state who had done what; once I had identified the inventive concept, their evidence would help me decide who had devised it. 40.That said, where both sides’ witnesses stated that some technical matter would be known to the skilled person, I have treated it as an agreed fact.