Ap Racing Ltd (Claimant/Appellant) v Alcon Components Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Lewison,Lord Justice Longmore |
| Judgment Date | 28 January 2014 |
| Neutral Citation | [2014] EWCA Civ 40 |
| Docket Number | Case No: A3/2013/0569 |
| Court | Court of Appeal (Civil Division) |
| Date | 28 January 2014 |
[2014] EWCA Civ 40
Lord Justice Longmore
Lord Justice Lewison
Lord Justice Floyd
Case No: A3/2013/0569
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY COURT
HIS HONOUR JUDGE BIRSS QC
Royal Courts of Justice
Strand, London, WC2A 2LL
Hugo Cuddigan (instructed by Kempner & Partners LLP) for the Appellant
Douglas Campbell (instructed by Withers & Rogers LLP) for the Respondent
Hearing date: 17 December 2013
Introduction and background
This appeal raises an issue about what patent lawyers call "added matter". Added matter refers to the rule that a patent application or patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed. If it has been so amended, and the added matter is not or cannot be removed, the patent will be invalid. By an order dated 5 February 2013 HHJ Birss QC (as he was then), sitting in the Patents County Court (as it was then) revoked UK Patent No 2 451 690 ("the patent") in the name of the appellant, AP Racing Limited, on the ground that a particular feature of claim 1 of the patent disclosed added matter. Other attacks on the patent, namely insufficiency and obviousness were rejected by the judge. Had the patent been valid he would have found four out of the five products sold by the respondent, Alcon Components Limited, to be infringements of the patent. Kitchin LJ granted permission to appeal on the added matter issue. By a respondent's notice, the respondent challenges, if necessary, one of the judge's findings on obviousness.
The patent relates to disc brake calipers for motor vehicles. Although the claims of the granted patent are not so limited, the invention is particularly directed to brake calipers for racing cars. The parties are involved in designing and making calipers for racing cars.
Disc brakes are so called because they operate on a disc which rotates with the road wheels of the vehicle on a hub carried by the vehicle chassis. The caliper is the body into which brake pads are fitted and in which the brake pads can be actuated to make contact with the disc. When so actuated the pads slow down the disc and, with it, the road wheels. The caliper body straddles the disc at its periphery and can be thought of as comprising two limbs, one on each side of the disc. In the type of caliper with which this case is concerned the limbs are rigidly connected or of "monobloc" construction. The parts which straddle the disc are called the bridging members. At least one piston is mounted within the caliper body and, when actuated, squeezes the pad against the disc.
Calipers are mounted on the fixed uprights. For ease of description, they have a mounting side and a non-mounting side which are on opposite sides of the disc. Rather than describe the forward and rearward parts of the caliper as such, it is conventional to refer to a leading and trailing edge of the caliper by reference to the edges where the disc enters and exits the caliper body respectively when the vehicle is moving forward.
When the brakes are actuated, the pistons apply pressure from each side via the pads onto the disc. When the vehicle is stationary this results in a reaction force which splays the two limbs of the caliper outwardly and away from each other. This is referred to as the "static" or "pressure" load case. It can be thought of as splaying the limbs from a "U" shape into a "V" shape. There is also a "dynamic" or "torque" load case which arises when the vehicle is moving. Because the caliper is mounted on only one side, braking makes the non-mounting side limb of the caliper turn or twist relative to the mounting side limb. If, looking from above, the caliper is seen as a rectangle, the torque or dynamic load will tend to deform it out of its rectangular shape. All this was well known to a disc brake designer at the priority date of the patent.
High performance brake calipers such as those used in motor racing need to be stiff and light. If the caliper is not stiff enough it will flex under load, and if it is heavy the performance of the car will suffer. The forces experienced by calipers in motor racing are particularly high.
Added Matter
The legal framework
Section 72(1) of the Patents Act 1977 provides:
"(1) Subject to the following provisions of this Act, the court or the comptroller may on the application of any person by order revoke a patent for an invention on (but only on) any of the following grounds, that is to say—
…
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, …"
This provision is based on Article 138(1)(c) of the European Patent Convention, which provides so far as material:
"(1) Subject to Article 139, a European patent may be revoked with effect for a Contracting State only on the grounds that:
…
(c) the subject-matter of the European patent extends beyond the content of the application as filed …;
The issue of added matter falls to be determined by reference to a comparison of the application for the patent as filed and the granted patent. As Aldous LJ said in Bonzel v Intervention (No 3) [1991] RPC 553 at 574:
"The task of the Court is threefold:
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly."
In the end the question is the simple one posed by Jacob J (as he then was) in Richardson Vick's Patent [1995] RPC 568 at 576 (approved by him as Jacob LJ in Vector Corporation v Glatt Air Techniques Ltd [2007] EWCA Civ 805; [2008] RPC 10 at [4]):
"I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification."
The policy behind the rule against adding matter was also examined in Vector v Glatt at [5] to [6]. One of the reasons for the rule which was identified is that third parties should be able to look at the application and draw a conclusion as to the subject matter which is available for supporting a claimed monopoly. If subject matter is added subsequently the patentee could obtain a different monopoly to that which the application originally justified.
The parties were agreed that, in all material respects, the published application for the patent was identical to the application as filed and could be used in place thereof. With that introduction I will first summarise the disclosure of the application and the patent.
The application
After some basic introduction about the configuration of brake calipers (along the lines of that which I have set out above) and a description of a known caliper by reference to Figure 1 (reproduced below), the application explains the problem facing the designer in the following terms:
"When the disc brakes are applied, the clamping force applied by the disc pads to the disc is reacted against by the body and results in the limbs … being deflected outwardly away from the disc. This can result in an increased travel of the pistons and hence increased travel of the brake pedal. The caliper body … must have sufficient structural rigidity that these deflections are kept within acceptable tolerances. However, there is also a need to keep the weight of the caliper to a minimum. This is particularly so where the caliper is to be used on a high performance motor vehicle in which weight considerations are of great importance and where the braking forces are particularly high.
There is a need, therefore, for an improved disc brake caliper body which has an increased structural rigidity or which can provide equivalent structural rigidity to that of conventional caliper bodies but using less material."
The application then introduces the notion of a peripheral stiffening band ("PSB"). It explains that there may be at least one PSB extending about an outer lateral surface of the mounting side limb, or there may be two PSBs, one extending about each lateral surface. The initial description of the PSB focuses on the band's relationship with the outer lateral surfaces, but at page 4 lines 23–30 the application explains:
"… the body may comprise a peripheral stiffening band on the mounting side limb which band extends around the leading end of the limb and is connected with a leading one of the bridging members.
.. the body may comprise a peripheral stiffening band on the non-mounting side limb which band extends around the trailing end of the limb and is connected with a trailing one of the bridging members."
What is being described here is, in plan view, a band which is shaped to follow the lateral edges and turn around the corner of the body to follow the leading or trailing edge. This is made clearer by reference to the figures later in the application. Although there was some argument about whether the PSB could, following this description, continue along the periphery beyond the leading edge to the opposite lateral edge to create a C-shaped PSB, this is not described. The application does not say so in terms, but this shape of PSB is necessarily going to be asymmetric about a lateral axis of the caliper body when seen in plan.
The application then goes on to describe embodiments of the invention. In...
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