Ap Racing Ltd v Alcon Components Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss |
| Judgment Date | 05 February 2013 |
| Neutral Citation | [2013] EWPCC 3 |
| Date | 05 February 2013 |
| Court | Patents County Court |
| Docket Number | Case No: CC11P3805 |
[2013] EWPCC 3
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
Case No: CC11P3805
Hugo Cuddigan (instructed by Kempner & Partners) for the Claimant
Douglas Campbell (instructed by Withers & Rogers) for the Defendant
Hearing dates: 19th, 20th December 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
His Honour Judge Birss QC:
| Topic | Paragraphs |
| Introduction | 1 |
| Background | 6 |
| The issues | 11 |
| The witnesses | 12 |
| The person skilled in the art | 20 |
| Common general knowledge | 22 |
| The '690 Patent | 39 |
| The claim | 51 |
| Construction | 52 |
| Infringement | 67 |
| Insufficiency | 69 |
| Added matter | 75 |
| Obviousness | 91 |
| Patent EP '999 | 122 |
| Conclusion | 123 |
| Annex A |
Introduction
This is an action for patent infringement about brake calipers used in racing cars. AP Racing and Alcon are rival suppliers to the motorsport industry. AP Racing contends that Alcon has infringed its patent GB 2 451 690 entitled "A disc brake caliper body and a disc brake caliper comprising such a body". The invention is said to be a better brake caliper. It is one which, according to AP Racing, went against the conventional wisdom that a stiffer caliper would be heavier. The calipers according to the invention are said to be stiffer and lighter than hitherto, as a result of their particular shape. Alcon denies infringement and contends that the patent is invalid. Alcon argues that the claimed invention is obvious, insufficient and that the relevant claims of the '690 patent involve added matter.
Mr Hugo Cuddigan appears for AP Racing instructed by Kempner & Partners. Mr Douglas Campbell appears for Alcon instructed by Withers & Rogers.
At the outset AP Racing relied on three claims in GB '690 said to be independently valid — claims 1, 12 and 13. By closing the only claim of GB '690 relied on by AP Racing was claim 1.
Also at the outset AP Racing relied on EP (UK) 2 022 999, which claimed priority from the application for the GB patent '690 and had essentially the same specification but different claims. Alcon contended the claims of EP '999 lacked novelty and were obvious over an item of prior art called the Wilwood STR Caliper. The two claims of EP '999 said to be independently valid were claims 1 and 10. Alcon contended claim 1 lacked novelty over Wilwood and claim 10 was obvious. In its skeleton argument AP Racing stated it would not defend claim 1 and in closing AP Racing ceased to support claim 10. Thus EP '999 will be revoked.
Thus the only claim in issue now is claim 1 of the 690 patent.
Background
A brake caliper is part of the braking system. The brake disc and the road wheel are connected to the rotating hub. The hub rotates in a bearing located on an upright which is mounted on the vehicle chassis.
The caliper is the rigid body in which the brake pads are fitted so that they can be actuated to squeeze inwards onto the brake disc when required. A caliper may be said to have two limbs, which extend on either side of the brake disc, one for each brake pad. Calipers can be fixed or moving. In moving type calipers the limbs are movable relative to each other by a piston or pistons. With fixed calipers the limbs are rigidly connected and a piston or pistons fitted inside the limbs squeeze the pads against the disc. This case is concerned with fixed type calipers. The caliper is mounted on and fixed to the upright and so to the frame of the vehicle. The mounting side of the caliper is the side carrying the mounting to the upright. The non-mounting side is the other side of the caliper. The caliper has a leading edge and a trailing edge. The leading edge is the side of the caliper where the disc enters as it rotates. The trailing edge is the opposite. So the leading edge is towards the back of the car. In the context of calipers the term axial refers to the direction along the axis of the wheel and the brake disc and the term radial refers to a direction along a wheel or disc radius. The bolts mounting the caliper can extend axially or radially.
Calipers can be made of a single piece of metal or made from two pieces fixed together. When made from single piece of metal, the arrangement is called a mono-bloc construction.
Part of the context of this case is that the invention is of most significance in the context of racing cars. That is because the various rules governing motorsport mean that the only braking force allowed is the force of the racing driver's foot on the brake pedal. Technology often found in production cars in order to improve braking, such as servo assistance and anti-lock braking, is not permitted.
As the driver pushes down on the brake pedal, the hydraulic system transfers that pressure onto the brake pads and they squeeze together onto the disc. The reaction force of the disc against the pads tends to splay the two limbs of the caliper outwards. When designing an object like a caliper one can consider various load cases. The pressure load case in this context takes into account the static load of the pressure squeezing the pads onto the disc and the consequent reaction forces. Another load case is the torque load case. Since the caliper is mounted on one side and the disc is rotating from leading edge to trailing edge, braking creates a tendency on the unmounted limb of the caliper to turn or twist with respect to the mounted side. Looking from above, there will be a bending moment tending to push the non-mounted side of the caliper towards the trailing edge. The torque load case addresses this.
The issues
Five Alcon calipers are alleged to infringe claim 1. Infringement is denied for all five. Alcon contends claim 1 is obvious over two publications: JP 2003–65367 (Hatagoshi) and JP 9257063 (Baba) as well as common general knowledge alone. A third publication (JP 2003–65368) was relied on but was not pressed in closing. Alcon's case on added matter relates to feature 6 of claim 1 ("in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan"). Alcon's case on insufficiency is based on alleged ambiguities in two terms in the same feature 6, "asymmetry" and "lateral axis". There was a further point about ambiguity of the term "profile" but that was dropped.
The witnesses
AP Racing relied on the evidence of Mr Carlo Cantoni as an expert. Mr Cantoni graduated with a degree in mechanical engineering from the Polytechnic of Milan in 1990. Since then his major employers have been Brembo and Ferrari. Brembo is one of the four main suppliers of braking systems for racing cars. The parties to this case are two others and the fourth is Akebono. Brembo owns AP Racing but in order to comply with the rules of motor racing, the two organisations are kept separate at a technical level. Mr Cantoni worked on braking systems for Brembo in 1992–94 and as a race engineer for Ferrari's racing team from 1995. In 2002 he returned to Brembo and has worked there ever since. During his career Mr Cantoni has not only worked on braking systems. Mr Cantoni is now Innovation and R&D Director for Brembo. He gave his evidence in English although his mother tongue was Italian.
Mr Campbell submitted that Mr Cantoni's evidence was unsatisfactory because his report did not mention Brembo's interest in this litigation. I do not think that is fair, since the relationship between Brembo and AP Racing was well known to Alcon. Mr Campbell also submitted that Mr Cantoni had no direct experience of caliper design after the work he had done in 1992–94. I do not think that is a strong point, Mr Cantoni explained that he was the technical leader and always followed the design work done by other members of the teams he led. There was more force in Mr Campbell's observation that in his oral evidence Mr Cantoni often focussed on the AP Racing product which is made according to the patent, i.e. the RadiCal caliper, rather than the patented invention as such. I will take that into account.
Alcon relied on Mr Phillip Smith and Mr Joerg Gehrmann.
Mr Smith completed an apprenticeship at British Leyland from 1967 — 71 and holds an ONC and HNC in mechanical engineering. He is technical director and a shareholder in Alcon. He was the sole brake design engineer at Alcon until 1995. After that the company grew and took on more junior design engineers. As the business grew subsequently, Mr Smith retained involvement with engineering, particularly the test procedures for assessing brake calipers.
Mr Cuddigan submitted that Mr Smith's evidence was generally fair and honest but was unsatisfactory on two particular topics. One related to a question about axes of symmetry and the other was about Alcon's knowledge of the RadiCal caliper and the extent to which that knowledge inspired Alcon to make the calipers of which complaint is made in this action. The first point was about the ambiguity in the patent as to the location of the lateral axis. He stuck to that view. The point put in cross-examination was that Alcon seemed to be able to describe their caliper as asymmetric despite the alleged problem with the definition of the axis. The cross-examination undermined the force of the objection but did not show that Mr Smith was being unreasonable to say the axis was undefined. I will deal with the substance of the symmetry issue below but I do not think it is a fair criticism of Mr Smith as a witness.
As for knowledge of the RadiCal, taking the evidence as a whole it is plainly a...
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