Bapco Closures Research Ltd and Another v Selpac Europe Ltd
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell |
| Judgment Date | 18 March 2016 |
| Neutral Citation | [2016] EWHC 550 (IPEC) |
| Date | 18 March 2016 |
| Docket Number | Case No: IP-2015-000065 |
| Court | Intellectual Property Enterprise Court |
[2016] EWHC 550 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Douglas Campbell QC
Sitting as a Deputy High Court Judge (IPEC)
Case No: IP-2015-000065
Barbara Cookson of Filemot Technology Law Ltd for the Claimants
Keith Beresford of Beresford & Co for the Defendant
Hearing date: 5 th February 2016
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.
Douglas C ampbell QC sitting as a Deputy High Court Judge (IPEC):
Introduction
This is an action for infringement of European Patent (UK) No. 1 656 306 entitled "Opening devices for foil closures". The First Claimant is the proprietor and the Second Claimant is its exclusive licensee. It is not necessary to distinguish between them. The Defendant is a UK company and the alleged infringement consists of various acts done by it in the UK in relation to foil closures which are made by Seal & Pack Co Ltd of Korea. There were no fewer than 8 different versions of these closures ("the Defendant's closures"), which were referred to in argument as Marks 1 to 8. Both sides agreed that I should consider all 8 of them. The Claimants were represented by Miss Barbara Cookson, Solicitor/Patent Attorney Advocate of Filemot Technology Law Ltd, and the Defendant was represented by Mr Keith Beresford, Patent Attorney Advocate of Beresford & Co.
At no stage did the Defendant dispute the validity of the patent in suit. The only issue is whether the acts complained of amount to infringement. Formally claims 1, 2, 8, 11, 13 and 14 are in issue although by the time of trial this had reduced to claims 1 and 14, the two independent claims. The main arguments, which I explain in more detail below, have always related to the construction of these claims and in particular as regards the terms "spout", "frangible region", and "peninsula" which are used therein.
The case management conference was held before HHJ Hacon on 26 th May 2015, and I was shown a transcript of that hearing. I should draw attention to two points about that hearing.
i) The first concerns the details which were pleaded in the Defence about the Defendant's closures and the manufacturing process used to produce them. At that time the Defence was not signed with the Statement of Truth by an appropriate officer of the Korean manufacturer, but HHJ Hacon granted permission to the Defendant to re-serve the same once it had been so signed. HHJ Hacon also explained to the Claimant that if the Claimants were not satisfied that the manufacturer's officer was telling the truth, the Claimants would have to apply to cross-examine him. No such application was ever made.
ii) The second concerns the Claimants' application for permission to serve expert evidence as regards the meaning of "spout" as a term of art amongst persons skilled in the art. HHJ Hacon granted permission for such evidence provided that it was served by a date well in advance of trial. The Claimants did serve expert evidence in purported compliance with this permission, but on 3 December 2015 the Court ruled that the said evidence failed to establish that the word "spout" had a special meaning in the art; and ordered that neither side could rely on expert evidence at trial. There was no appeal against this further Order.
The upshot was that there was no expert evidence or any cross-examination at the trial. Instead, the trial was restricted to submissions made by each side in relation to the patent, the 8 alleged infringing products, and certain prior art documents which were referred to in the patent and which were relied on for purposes of construction. The trial took just over half a day.
The person skilled in the art and the common general knowledge
It was held at the case management conference that the person skilled in the art to whom the patent is addressed is someone familiar with the manufacture of closures: see the case management conference order at [11].
Neither party specifically referred to any particular matters of common general knowledge in their respective statements of case. It followed that no provision for evidence as to common general knowledge was ordered at the case management conference.
Construction
Legal context
Both sides agreed that I should direct myself generally in accordance with the principles set out by the Court of Appeal in Virgin Atlantic Airways v Premium Aircraft Interiors [2009] EWCA Civ 1062, [2010] RPC 8 at [5]–[22]. I have done so. In addition there were three specific points of law which I have taken into account, as follows.
First, I was reminded of what the Court of Appeal had said in Virgin itself about the two-part claim structure commonly used in patent drafting: see Virgin at [9], [18]–[21]. The Court concluded as follows:
21 … Even without a two-part claim structure, because the skilled reader knows that the patentee is trying to claim something which he, the patentee, considers to be new, he will be strongly averse to ascribe to the claim a meaning which covers that which the patentee acknowledges is old. And if the patentee not only acknowledges that a particular piece of prior art is old but then has a pre-characterising clause which is fairly obviously based on it, the skilled reader will be even more strongly inclined to read that clause as intended to describe that old art.
In Boegli-Gravures SA v Darsail-ASP Ltd [2009] EWHC 2690 (Pat), Arnold J cited the above and added as follows:
43. Counsel for Boegli submitted that, where the specification expressly states that the preamble of the claim describes certain prior art, then a construction of the preamble which excludes that prior art should be avoided unless it is clear that is what the claim means. I accept that submission.
The upshot is that where a pre-characterising clause (or "preamble") is expressly stated to be based on a particular item of prior art, or is fairly obviously based on it, then the skilled reader will be strongly inclined to read that clause as intended to describe that prior art. However this principle is subject to limits, in particular where it is clear that the meaning of the claim excludes that prior art.
Secondly there was a dispute as to how far it was legitimate to refer to the file history as an aid to claim construction. In Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46, [2005] RPC 9 at Lord Hoffmann said at [35] that "the Courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction". The topic was reconsidered by Arnold J in Actavis UK v Eli Lilly [2015] RPC 6 at [108]–[112], and by the Court of Appeal in the same case ( [2015] EWCA Civ 555) at [54]–[60], [163]–[164]. However, it should be noted that in Actavis it was common ground that the prosecution history was not inadmissible as a guide to construction. Floyd LJ, with whom Kitchin and Longmore LJJ agreed, said this at [56]:
"I have to say that a rule which merely discourages reference to material, as opposed to treating it as inadmissible, has obvious practical disadvantages, as in the absence of an exclusionary rule the cost and expense associated with its deployment will almost invariably be incurred. However, as we are not asked to decide that the material is altogether inadmissible, I will, somewhat reluctantly, leave it at that."
Floyd LJ also thought it would be a "very rare case indeed" where the story told by the prosecution history of how the claims came to be drafted as they were would assist the Court in preventing abuse of the system: see [58]. One specific difficulty he identified is the issue as to "whether the applicant needed to accept" any given restriction identified during prosecution (emphasis in original).
In addition, this Court applies a cost-benefit test when permitting parties to rely on material. The rules set this out expressly in relation to the case management conference at Part 63.23 and Part 63 PD paragraph 29.1, but this Court applies this approach more generally: see Temple Island Collection v New English Teas [2011] EWPCC 019 at [29]. It will in my judgment be not just a very rare case but an exceptional case where it will be appropriate for this Court to permit reference to the file history as an aid to claim construction. In the event, the Defendant wisely refrained from spending any of its Court time on this issue and I shall say no more about it.
Thirdly, the Defendant pointed out that in some cases a claim can be so unclear that it results in the patentee being unable to establish infringement: see Scanvaegt v Pelcombe [1998] FSR 786, 797. I accept this, but as the Claimants pointed out a patent "must be read by a mind willing to understand not by a mind desirous of misunderstanding": see Chitty J in Lister v Norton (1886) 3 RPC 199, cited by Birss J in Lizzanno Partitions (UK) v Interiors Manufacturing [2013] EWPCC 12 at [46].
The patent in suit
Paragraphs [0001]–[0002] of the patent introduce the background of the invention as follows:
[0001] The present invention relates to opening devices for closures that use a ring pull or tab to tear a foil seal.
[0002] The present invention addresses the technical problem of minimising the effort needed to open a container closure....
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