Boegli-Gravures SA v Darsail-Asp Ltd and Another
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE ARNOLD,MR JUSTICE ARNOLD |
| Judgment Date | 29 October 2009 |
| Neutral Citation | [2009] EWHC 2690 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC07C02417 |
| Date | 29 October 2009 |
[2009] EWHC 2690 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Hon Mr Justice Arnold
Case No: HC07C02417
Michael Hicks (instructed by Redd Solicitors LLP) for the Claimant
Thomas Moody-Stuart (instructed by Streathers Solicitors LLP) for the Defendants
Hearing dates: 5–8 October 2009
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.
………………………..
MR JUSTICE ARNOLD:
Introduction
Boegli-Gravures SA (“Boegli”) is the proprietor of European Patent (UK) No. 1 324 877 (“the Patent”). Boegli claims that the Patent has been infringed by Darsail-ASP Ltd (“Darsail”) and that Andrei Pyzhov, a director of and shareholder in Darsail, is jointly liable for such infringements. The Defendants deny that they have infringed the Patent. The Defendants also counterclaim for revocation of the Patent on the grounds that it lacks novelty, or is obvious, in the light of United Kingdom Letters Patent No. 1 312 359 (“Nielsen”).
The background to the Patent
It has been common for many years for various products to be packaged in packs that comprise thin metal foils or metallised paper foils produced by either laminating a metal layer with a paper layer or vapour-depositing a metal layer on a paper substrate. I shall refer to such foils in this judgment as “packaging foils”. Equally, it has been common for many years for packaging foils to be embossed by passing them through a pair of rolls or rollers (the terms are used interchangeably, but I shall use the term roller except when quoting from the Patent), one or both of which has a set of fine teeth on its surface. The effect of the embossing is to give the foil a “satinized” appearance and texture. An important use for embossed packaging foils is in cigarette packs, but they are also used for packaging foodstuffs and other types of products. Since the 1950s it has been common for embossed packaging foils for use in cigarette packaging to bear words (e.g. “pull”) and/or logos produced by removing the teeth from the surface of the roller(s), thus leaving part of the surface of the foil unembossed. I shall refer to such words and logos as “signs”. It appears from the evidence that signs have also been placed on embossed packaging foils in this way for applications other than cigarette packaging, but my impression is that this is less common.
The Patent
The specification of the Patent is in German. The Defendants have not challenged the accuracy of the English translation which Boegli filed with the UK Intellectual Property Office. Nevertheless, the translation suffers from two obvious defects. First, it is not idiomatic and is rather stilted in places. Secondly, it uses the terms “embossed” and “embossing” both in a conventional manner and in a different way to the manner in which they are used in the art. The second defect may, of course, derive from the original German. There is no challenge to the claimed priority date of 13 October 2000.
Somewhat unusually, the specification begins with a consistory clause. It then describes the background to the invention at page 1 lines 11–23 as follows:
“A device according to the preamble of claim 1 is e.g. known from US-A-5 007 271 or EP-B-925 911 to the applicant of the present invention. The device for satinizing a foil described therein comprises two embossing rolls that are arranged mutually displaceably such that a self-stabilizing effect results when the teeth of the embossing rolls interpenetrate, thereby achieving a high processing speed, on one hand, and a high precision, on the other hand. First of all, this provides a uniform satinizing, and when teeth are removed in a corresponding manner, a highly precise embossing of foils is obtained while the surface of the packaging foil remains untreated in those locations, however.”
After acknowledging another item of prior art, the specification identifies the object of the invention at page 1 line 32 – page 2 line 7 as follows:
“The advanced prior art according to US-A-5 007 271 or EP-B-925 911 with regard to the embossing and satinizing quality and the remaining prior art have resulted in the desire and the need and thus the object of the present invention to provide a device for producing embossed structures that allows embossing the packaging foil with signs including optical effects that are dependent on the viewing position and/or the light source, thereby also allowing to produce security features that are very difficult to copy.”
The specification then describes certain specific embodiments by reference to a number of figures. After introducing the figures, the specification states at p. 3 lines 8–31:
“As to the fundamental structure of a satinizing device, reference will be made to US-A-5 007 271 to the applicant of the present invention. A foil band is passed between two toothed satinizing rolls of hardened steel or another hard material of which one is fixedly supported and driven while the other one is freely rotatably journalled on an axle and is capable of being resiliently pressed against the driven roll with an adjustable pressure by spring force or by pneumatic or other means.
In the device according to EP-B-925 911, which also makes reference to US-A-5 007 271, both satinizing rolls are provided with a superficial toothing of the same kind which is schematically shown in Fig. 1 in a developed view. The latter is composed of pyramidal teeth that are arranged in rows extending in the circumferential direction, i.e. in the direction of rotation indicated by the arrow, and perpendicularly thereto in the axial direction. According to Fig. 2, the tips of the teeth are flattened, i.e. shortened in practice by at least 2%, preferably by up to 25% of the theoretical geometric tooth height. Furthermore, the edges of the pyramidal resp. frustropyramidal teeth are preferably chamfered. Instead of pyramidal teeth, it is also possible to use conical resp. frustroconical teeth.”
At page 4 lines 7–16 the specification introduces the invention as follows:
“ While these satinizing rolls of the prior art are provided with toothings of the same kind, it has been found that providing at least one roll with teeth of a different design, more particularly with respect to the tooth height and the tooth surface, allows producing embossed structures that may e.g. be designated as shadow embossings, where the intensity of the signs embossed within the satinized background varies according to the viewing angle of the observer and/or the direction and the kind of the lighting source, thereby producing a shadow-like effect.”
The specification explains this further at page 4 line 29 – page 5 line 20:
“In the embodiment of Fig. 4, two teeth T1 are shown which are designed as the teeth according to Figs. 1 to 3 and all of which have the same geometric dimensions and produce a normal satinizing, as well as the teeth T2 at the left of Fig. 4, having e.g. a smaller tooth height, or alternatively different tooth flanks or surfaces. In the embossing process of the prior art, the teeth are completely eroded in the locations where the signs are to appear on the foil.
In principle, the teeth T2 of different height, shape, or surface than T1 may be arranged in any way, but the teeth T2 are advantageously arranged in a specific manner to produce patterns, letters, or other signs. Fig. 4 shows a simple arrangement forming e.g. the letter L. By arranging the teeth T2 in such a configuration, the letter is produced such that according to the viewing angle, a higher or lower contrast, resp. a higher or lower intensity is obtained while it is assumed here that the lighting source is constant and stationary. Alternatively, the position and/or the wavelength of the lighting source may be varied while the viewer is viewing the sign from the same angle, or both the viewing angle and the light source may change. Basically, the result always remains the same, i.e. the appearance of the sign changes as one or both or all parameters vary.”
At page 6 lines 13–14 the specification states:
“This procedure is very useful in the production of codes resp. security features…“
At page 7 lines 4–18 the specification states:
“Such signs may be provided on packages for tobacco products, cigarettes, foods, chocolates, drugs or the like. Such packaging bands or foils are preponderantly composed of aluminium or of preponderantly easily foldable paper. … Today, multilayered foils with a paper substrate and a metal layer, and foils provided with a thin vapour-deposited metallic layer are distinguished.”
At page 8 lines 17–26 the specification states:
“.. a respective tooth of one roll need not necessarily engage between four adjacent teeth of the other roll, as in Fig. 3, which illustrates the case of the so-called pinup-pinup configuration where the teeth of all rolls are directed outwards. On the contrary, in the embossing procedures of the invention, it may be useful to positively synchronise the embossing rolls, in which case it is also possible to use a so-called pinup-pindown configuration where the teeth of one roll are directed outwards and the teeth of a cooperating roll inwards.”
The claims
It is common ground that it is only necessary for me to consider claims 1, 2, 3 and 8.
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