Bird & Bird helps EMGS to get their patents back

28 July 2010

First UK judgment on whether the person skilled in the art can have different attributes for different purposes

International law firm Bird & Bird has won a major patent dispute for the Norwegian oil service company Electromagnetic Geoservices ASA (“EMGS”) against Schlumberger Holdings Limited in the UK Court of Appeal. 

The case concerns the validity of EMGS’ patents on the use of a CSEM (controlled source electromagnetics) technique to find oil and gas reservoirs below the seabed. Since the late 70s, oil exploration geophysicists have been looking for potential hydrocarbon reservoirs in progressively deeper sea, and the standard technique to do so was seismics.  However, seismic techniques have their limitations: while it can reveal the shape and size of a hydrocarbon reservoir, it cannot distinguish whether the reservoir contains hydrocarbon or sea water.  EMGS’ patents provide a solution to this problem.

At first instance the judge revoked the EMGS patents.  The Court of Appeal overturned this and reinstated EMGS’ patents.

One important aspect of EMGS’ argument on appeal was the correct identification of the skilled team for the purposes of assessing obviousness and sufficiency. The Court of Appeal held that the notional skilled team can be different for different purposes where the invention involves the marrying of different arts. They held that the marriage of different skills was not obvious in this case.

Lord Justice Jacob gave the main judgment and explained that “if a patentee says ‘marry the skills of two different arts to solve a problem’, marrying may be obvious or it may not.  If it is not, and doing so results in a real technical advance, then the patentee deserves and ought to have a patent. His vision is out of the ordinary.” 

Another critical issue in this case is the place of secondary evidence. The Court of Appeal found that the contemporaneous evidence of how specialists in the field reacted to news of the invention was of assistance in demonstrating that it was not obvious even to them.

EMGS welcomed the decision.  Their Chief General Counsel, Anette Mellbye, said:

“We were delighted with the effectiveness and diligence of the Bird & Bird team and, in particular, the new insights they brought to the case”.

The Bird & Bird team was led by Morag Macdonald, with assistance from Christine Yiu and Robert Hamblin and Counsel, Simon Thorley QC and Guy Burkill QC of Three New Square.