London Court Strikes Down Halliburton Patents

by Robin Pilgrim, LawAndTax-News.com, London

27 July 2005

Last week in the London High Court Mr Justice Pumfrey in an 84-page judgement ruled invalid two disputed patents belonging to Halliburton covering the design and use of drill bits for drilling in rock.

Halliburton Energy Services Inc v Smith International (North Sea) Ltd and another [2005] EWHC 1623 (Pat) was the first case to be argued between two parties in the UK which addressed the patentability of computer-implemented inventions. Other such cases have been heard only on appeal from the Patent Office. Pumfrey found there was invalid or insufficient disclosure in Halliburton's patents. "Both patents are invalid in their entirety for insufficiency," he wrote.

The first patent was for ‘roller cone bits, systems, drilling methods and design methods with optimisation of tooth orientation’, while the second, related patent was for ‘roller cone drill bit, method of designing the same and rotary drilling system’. The patents included reference to the computer software used in the design process. Halliburton sued Smith for infringement. Smith denied infringement and said Halliburton's patents were invalid because they had insufficiently disclosed the subject-matter of their respective inventions, an assertion which was upheld by the judge, who said:

'Sufficiency of a specification, being a question of fact, necessarily depended upon the nature of the invention and the attributes of the hypothtical person skilled in the art to whom it was addressed. In striking a balance between the interest of the public in being informed and the interest of the patent owner in disclosing only what was necessary, the court should not in principle impose too high a standard of disclosure just because the subject matter was inherently complex. On the evidence, however, Smith's objections of insufficiency were made out, because the skilled person would have been unable to have performed the inventions with the information provided in the patents.'

"This is a very detailed, technical judgment," said Morag McDonald, of Bird & Bird, who represented Smith International. "The judge has gone through a lot of the disclosure in the patents and whether or not it is sufficient to enable the skilled man in the art to put the invention in effect. He answered this with no."

The judge said that a computer-implemented invention can become valuable if the scope of the claim is restricted to its proper industrial field: "The objection, in my view, is to width of claim alone when the method has potential industrial utility, that is, a potential technical effect. The objection to the claims in this case are to the form of the claim, not to the substance of the invention."

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