Arrow declarations – a step towards obviousness?

The Court of Appeal handed down a judgment in Mexichem UK Ltd v Honeywell International Inc [2020] EWCA Civ 473 upholding the decision of Hacon J refusing to strike out Arrow declarations in a claim relating to a revocation of a number of Honeywell’s patents. The decision confirms that there is no threshold or level of particularity at which an Arrow declaration ought to be formulated. The Court also recognised that, although the question of obviousness cannot be sliced up into a number of individual steps, there may be instances where such step-by-step analysis was appropriate, following the Supreme Court judgment in Actavis v ICOS.

The Arrow declarations sought by Mexichem in this case were unusual in that they did not directly relate to the features of Mexichem’s product. Instead, the declaratory relief sought aimed at establishing that the mere idea of using refrigerants ze and yf in a mobile air-conditioning unit was obvious at particular dates. For the exact wording of the declarations sought and our analysis of the first instance decision see our commentary here.

Hacon J at first instance held that the declarations sought in more general terms could still serve useful purpose in that “they are aimed at providing a finding of obviousness which can serve as an unchallenged foundation for argument on the inventive step of inventions claimed in patents which may be granted to the defendant sin the future”.

One of the Honeywell’s arguments on appeal was to question the appropriateness of the approach taken by Hacon J whereby an Arrow declaration could provide a platform or a step towards a future finding of obviousness. According to Honeywell, that approach would “positively distort the exercise which the Court was required to perform” which is to analyse whether the invention as a whole was obvious rather than deciding on the obviousness of the intermediate steps leading up to the invention.

The Court of Appeal recognised the force in this argument, but reiterated that there is a class of cases where such step-by-step obviousness analysis may be relevant, for example if the steps which the notional skilled person would take could readily be ascertained without the taint of hindsight, echoing Lord Hodge in the Supreme Court judgment in Actavis v ICOS. Secondly, on the facts of this case the declaration might have utility because Honeywell is seeking to protect an inventive concept which is in similarly broad terms, as could be seen from the proceedings before the German court where Honeywell asserted its broad inventive concept against a competitor.

On the issue of clarity, Floyd LJ reiterated the position from Glaxo Group whereby the declaration to be sufficiently clear must identify the combination of features of the products and processes in question on which the assessment of obviousness is to take place. However, there is no threshold requirement for the party to fully formulate a product description or have a product in actual production. The level of generality of the Arrow declaration sought may affect its utility but it is a matter of degree and for the trial judge to assess.

The decision can be found here.

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