Fabio Perini SPA v LPC Group Plc and Others (No 1)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Hughes,Lord Justice Jackson |
| Judgment Date | 14 May 2010 |
| Neutral Citation | [2010] EWCA Civ 525 |
| Docket Number | Case Nos: A3/2009/2287, 2288 and 2342 |
| Court | Court of Appeal (Civil Division) |
| Date | 14 May 2010 |
[2010] EWCA Civ 525
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON. MR. JUSTICE FLOYD
Case No HC 08 COO958
Royal Courts of Justice
Strand, London, WC2A 2LL
The Master of the Rolls
Lord Justice Hughes
and
Lord Justice Jackson
Case Nos: A3/2009/2287, 2288 and 2342
Mr Antony Watson QC and Mr Thomas Hinchliffe (instructed by SJ Berwin LLP) for the 2nd and 3rd appellants and (instructed by Harvey Ingram LLP) for the 1st and 4 th appellants
Mr Colin Birss QC and Mr Miles Copeland (instructed by Collyer Bristow LLP) for the respondents
Hearing dates: 27 th and 28 th April 2010
Lord Neuberger MR:
Introductory
This is an appeal and a cross-appeal against a decision of Floyd J, [2009] EWHC 1929 (Pat), in which he determined a substantial number of issues in a patent dispute. The case centred on two patents, EP (UK) 0481929 and EP (UK) 0699168 ("the 929 Patent" and "the 168 Patent" respectively), both registered in the name of the claimant, Fabio Perini SpA ("Perini"). The patents are concerned with machinery and methods for sealing the tail ends of rolls of paper, such as lavatory rolls and kitchen towel, so that they remain rolled up.
The paper is supplied to such machinery in the form of very large "parent" rolls, some three metres in length and about the same in diameter. These rolls are passed to an unwind stand at the beginning of a converting line of the machinery, from which they are rewound by a rewinder onto a cardboard tube to produce smaller diameter rolls called "logs". These logs have the same diameter as the finished product, about 100mm in the case of a lavatory roll, but they still have the same axial length as the parent roll.
The logs have loose ends or "tails" where the tissue has been cut. If steps are not taken to seal this end to the log, the end could unwind, thereby interfering with subsequent converting steps. So the logs are passed to a tail sealer, which must be designed to keep pace with the flow of logs from the rewinder: otherwise it will hold up the overall speed of the plant. After the tail has been sealed, the log is cut into smaller axial lengths by a log saw, and the individual pieces are packaged.
Perini is one of the two major entities in the field of paper converting machinery of this type, and it brought the present proceedings against four defendants, claiming that certain machines, sold and marketed under the name Rotoseal, infringed the two patents. The second and third defendants, Paper Converting Machine Company Italia ("PCMC Italia") and Paper Converting Machine Company Ltd ("PCMC UK"), are members of a group of companies which represents Perini's major competitor in the field, PCMC Italia being the manufacturer of the Rotoseal machines. The fourth defendant, LPC (UK) Limited ("LPC UK"), is a customer of PCMC, who purchased and used two Rotoseal machines, and the first defendant, LPC Group PLC ("LPC Group"), is its parent company.
The defendants denied that the Rotoseal machines infringed either of the two patents, and contended that each of the two patents was invalid on grounds of lack of novelty, obviousness and insufficiency. The Judge concluded that the 929 Patent was valid and that it was infringed by two of the three Rotoseal machines ("the Original Rotoseal" and "the Proposed Rotoseal"), the 168 Patent was invalid on the ground of obviousness, but similarly infringed, and that PCMC Italia, but not PCMC UK or LPC Group, was liable for the infringement as a result of LPC UK's infringing use of the Rotoseal machines.
In the notice of appeal, notice of cross-appeal, and respondents' notices, the parties resurrected most, albeit not all, of the points which were taken below, but, as matters progressed, various of those points fell away. I propose to deal only with those points which were live by the end of the hearing. Given that there is no appeal by Perini against the dismissal of its claim against LPC Group, and that LPC UK takes no point on this appeal other than those taken by PCMC, I shall follow the Judge in referring to PCMC Italia, PCMC UK and LPC UK together as "PCMC".
The scheme of this judgment is as follows. I shall first set out relevant details of the 929 Patent; I shall then consider issues of interpretation relating to claim 16 of that patent; I shall then turn to the validity of the 929 Patent; I shall next discuss whether the Original or Proposed Rotoseals infringe the 929 Patent. I shall then set out the relevant details of the 168 Patent, and then turn to the issue of its validity. Then there is the question whether PCMC UK and/or PCMC Italia are liable for infringement of the 929 Patent. Finally, there is an issue about costs.
The 929 Patent
The 929 Patent has a priority date of 17 th October 1990, and much of the summary which follows is taken from the judgment below, [2009] EWHC 1929 (Pat) paragraphs 29–35.
The specification of the 929 Patent
The specification is entitled "Apparatus for glueing the tail of a web to a log formed of the web material". The specification acknowledges that apparatus "of this general type" is known from US 4,475,974, which describes a machine in which the logs are moved by a chain system between three stations on pairs of bearing rollers supported on a chain conveyor. At the first station, the tail is unwound and laid onto a flat surface; at the second station, glue is applied to the tail by a nozzle which moves longitudinally along the axis of the log; and at the third station, the log is rotated so as to wind the tail back up. The specification states that, while this system can achieve high outputs, the type of glue applicator has "a rather complex and costly structure". One of the stated objects of the 929 Patent is "to reach high outputs per hour with an extremely simple construction and with a limited number of moveable parts".
The first paragraph describing the claimed invention (column 1, lines 42–50) begins by referring to "the apparatus of the present invention", in which "the means for applying the glue includes a dispenser device having means forming an upwardly orientated slit from which the glue is delivered by overflowing." The paragraph then goes on to explain that "[t]he log transferring means discharges said log, with the tail unwound therefrom, causing it to roll over the slit while said tail is unwrapped from the log. …". The specification then turns to describe various "particularly" or "distinctively advantageous" embodiments of the apparatus.
During the course of describing the first of those embodiments, the specification indicates that:
"The glueing occurs … extremely swiftly and without the need for dispensing nozzles moving longitudinally along the log as in prior art machines. In fact by the simple rolling of the log over the slit, the glue is applied along the entire length of the log. Gravity, which causes the rolling of the log, causes the subsequent re-wrapping of the tail. … To transfer the log … a flexible conveyor may be provided, which includes a bearing means [which] may be made … to discharge the log … onto an inclined table which has an opening aligned with the slit of the glue dispenser" (column 2 lines 4–18).
When discussing another preferred embodiment, the specification teaches that:
"This type of supply has the advantage of not requiring a controlled dispensing means, such as a pump and nozzle and, moreover, it allows a continuous and easily adjustable flow for glue from the reservoir to the slit, while the excess of glue overflowing from the slit, which is not picked up by the logs rolling over the same slit, is collected in the underlying tank from which it can be easily recovered and made to flow back into the upper reservoir. This avoids the drawbacks exhibited by the nozzle-type dispensing means which, when the apparatus is stopped even for short periods, are clogged up by the drying of the glue, thus making it difficult to re-start the apparatus." (column 2 line 53 to column 3 line 10).
Having described various preferred embodiments, the specification (column 3, lines 25–27) goes on to explain that "[t]he invention also refers to a method for glueing the tail of a log formed of web material onto the log itself, according to claim 16." After mentioning that there are also method claims relating to "[f]urther advantageous features", the specification explains the invention by reference to figures, which are said to represent a "feasible, not limiting, embodiment of the … invention" (column 3, lines 28–34).
Figure 1 shows the path of the log marked with a broad dashed line:
The log is delivered onto rolls 9 and 11. The tail is then unwound onto surface 15, and conveyed to the gluing area (region 45) where it is discharged from the vertical conveyor and rolls across a guide surface. During rolling, the log passes over a slit from which glue is supplied from underneath. As the log continues to roll, the tail is automatically rewound over the log and pressed against the log where the glue has been applied.
A more detailed view of the gluing area is shown in Figure 3, where the tail is marked with the letter L:
The slit (63) is formed by the pair of inclined plates (61). Glue overflows from the nozzle and returns to the tank below.
The relevant claims of the 929 Patent
The two claims which are said by...
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