Fabio Perini SPA v LPC Group Plc and Others (No 1)
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 31 July 2009 |
| Neutral Citation | [2009] EWHC 1929 (Pat) |
| Docket Number | Case No: HC 08 C00958 |
| Court | Chancery Division (Patents Court) |
| Date | 31 July 2009 |
[2009] EWHC 1929 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Hon Mr Justice Floyd
Case No: HC 08 C00958
Colin Birss QC and Miles Copeland (instructed by Collyer Bristow LLP) for the Claimant
Antony Watson QC and Thomas Hinchliffe (instructed by Harvey Ingram LLP and SJ Berwin LLP) for the 1 st & 4 th Defendants and 2 nd & 3 rd Defendants respectively
Hearing dates: July 14 th-17 th, 20 th and 21 st 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 Floyd:
Introduction and parties
This judgment is divided as follows:
|
| Paragraph numbers |
| Introduction and parties | 1–6 |
| Technical background | 7–9 |
| The witnesses | 10–17 |
| The person skilled in the art | 18–19 |
| Common general knowledge | 20–28 |
| The 929 Patent | 29–57 |
| The claims of 929 | 36–39 |
| Principles of construction | 40–42 |
| Claim 16: the characterising portion | 43–57 |
| Infringement of 929 | 58–78 |
| The Original Rotoseal | 58–69 |
| The Modified Rotoseal | 70–74 |
| The Proposed Rotoseal | 75–78 |
| Validity of 929 | 79 |
| Lack of Novelty of 929 | 80–101 |
| Novelty over JP 50–35562 (“JP 562”) | 82–90 |
| Novelty over GB 1 495 445 (“GB 445”) | 91–101 |
| Obviousness of 929 | 102–118 |
| Obviousness over JP 562 | 106–114 |
| Obviousness over GB 445 | 115–118 |
| Insufficiency of 929 | 119–120 |
| The 168 Patent | 121–128 |
| The claims of 168 | 123–125 |
| Construction of 168 | 126–128 |
| Infringement of 168 | 129–138 |
| The Original Rotoseal | 130–131 |
| The Modified Rotoseal | 132–133 |
| The Proposed Rotoseal | 134–138 |
| Validity of 168 | 139–161 |
| Obviousness over JP 562 and GB 445 | 140–143 |
| Obviousness over 929A and US 525 | 144–148 |
| Obviousness over Casper disclosure | 149–161 |
| Insufficiency of 168 | 162–168 |
| Liability for infringing acts | 169–181 |
| PCMC (UK) | 171–173 |
| PCMC Italia | 174–179 |
| LPC Group | 180–181 |
| Conclusions | 182 |
In this action Fabio Perini SPA (“Perini”) sue the four defendants for infringement of two European Patents (UK). The two patents are numbers 0481929 and 0699168. I shall refer to them by the last three numbers: “929” and “168”. The patents are for machinery and methods for sealing the tail ends of rolls of paper (such as toilet tissue or kitchen towel), so that they stay rolled up. Perini are one of the two major players in the field of paper converting machinery of this type.
The second and third defendants, Paper Converting Machine Company Italia and Paper Converting Machine Company Limited are the Italian and UK arms of the other major player in the field. I will refer to them as PCMC Italia and PCMC (UK) respectively. PCMC Italia manufacture the machinery alleged to infringe the Perini patents, called the Rotoseal.
LPC Group PLC and LPC (UK) Limited are sued as a customer of PCMC for the Rotoseal. I will call them LPC Group and LPC Limited respectively.
Except where it is necessary to distinguish between the defendants, I will refer to them collectively as PCMC. Mr Antony Watson QC and Mr Thomas Hinchliffe argued the case for PCMC. Mr Colin Birss QC and Mr Miles Copeland argued the case for Perini.
PCMC deny infringement and contend that the Perini patents are invalid. They counterclaim for revocation on the grounds of lack of novelty, obviousness and insufficiency. There are also issues about the liability of PCMC Italia, PCMC (UK) and LPC Group for infringement if infringement is established against LPC Limited.
Technical background
The tissue paper with which this case is concerned is supplied to a paper converting plant in the form of very large “parent” rolls, some 2.5–3 metres in length and about the same in diameter. The rolls are passed to an unwind stand at the beginning of a converting line, from whence they are rewound (by a rewinder) onto a cardboard tube to produce smaller diameter rolls called “logs”. Logs have the same diameter as the finished product – about 100mm in the case of toilet rolls—but 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 roll, the end could unwind and so interfere with subsequent converting steps. Thus the logs are passed to a tail sealer. The tail sealer must be designed to keep pace with the flow of logs from the rewinder, or 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.
The witnesses
Expert witnesses
Perini called Mr Edward Ward. Mr Ward is a consulting electrical and mechanical engineer. Although he had considerable experience in the paper industry, he had no specific or “hands-on” experience of tail sealer machinery or its use. He very fairly accepted that he was not in a good position to assist me as to the common general knowledge of a person or team seeking to design tail sealing machinery. Such knowledge as he had acquired had been acquired in reading up for this case. This consisted largely of reading some patent specifications with which he had been supplied, and a rather limited collection of them at that.
Whilst Mr Ward was a very thorough and careful witness, I did feel that his concession as to the common general knowledge placed him in a difficult position. One of the main functions of an expert in a patent case is to put the judge in possession of the common general knowledge. But Mr Ward's difficulty went further than that. If the expert is not himself in possession of the common general knowledge, then his expert views on what steps might or might not be obvious are likely to be of little value. Sometimes an expert in a related field may read in to the field in question, so as be better able to apply his or her general knowledge to the field in question. Mr Ward's difficulty is illustrated by the following passage from the transcript;
2 Q. So you are quite frankly telling my Lord that you cannot help
3 as to common general knowledge in 1990 or 1993. All you can
4 do is read the patents which indeed my Lord can do without
5 your assistance. Do you have a comment?
6 A. I think that is a fair comment, yes.
7 Q. You said you did some reading around. Can you be a little
8 more specific as to that, please.
9 A. I am afraid I cannot identify particular references.
10 Obviously I read trade literature provided to me and I have
11 done my own reading around as far as I am able through public
12 sources. I have to say, there is not a great deal that I have
13 found in the public sphere that concerns tailsealers, which is
14 a very specialised matter.
I have had these difficulties in mind when deciding what weight to attach to Mr Ward's evidence. For example I have not had regard to his statement that the invention of 929 required “exceptional originality”. Nevertheless, something less than this is often sufficient to amount to an inventive step.
PCMC and LPC called Mr Gerald Buxton. Mr Buxton worked for PCMC in two periods. From 1967 to 1979 he was employed at PCMC in Plymouth, England, rising to Production Manager. Between 1979 and 1994 he worked for another paper converting company in New Zealand, returning to work for PCMC in the United States between 1984 and 1997.
Mr Buxton was obviously highly experienced with machinery of the kind with which this action was concerned, fully aware of the practical difficulties with which the skilled team would be alive to, and the available equipment and techniques for overcoming them. Although Mr Birss suggested that he must have formed his views about infringement of 929 when he was still employed by PCMC, I did not think this undermined his evidence. In any case, infringement in this case turns largely on construction, which is ultimately a matter for the court.
Mr Birss also said that Mr Buxton had not been frank about one aspect of his evidence concerning obviousness. I shall return to this in the appropriate place. Subject to this one point, Mr Buxton was a very fair and entirely non-combative witness.
Fact witnesses
Perini called Mr Guglielmo Biagiotti, Mr Guy Goldstein and Mr Angelo Benvenuti. Mr Biagiotti is the inventor of 929 and 168. He worked for Perini from 1973 to 2003. He gave historical evidence about the development of Perini's tail sealers which touched, amongst other things, on an issue of prior disclosure. Mr Goldstein joined the tissue division of Societe F. Beghin in 1969 in its research and development department, which by then was part of the Kaysersberg Group who were customers for the type of machinery in issue. He gave evidence about developments in the industry. Mr Benvenuti is Patent and Machine Safety manager at Perini who gave evidence about some drawings of Perini machines. Mr Watson did not make any criticism of the way these witnesses gave their evidence.
PCMC called Mr Luca Tagliasacchi to confirm their Product and Process Descriptions and Mr Sigmund Casper to establish the alleged prior disclosure. LPC called Mr Majid Jamie to give evidence about LPC's purchase of the allegedly infringing machine. Again, there was no serious relevant criticism of the way they gave their evidence.
The person skilled in the art
The skilled addressee is a person with practical knowledge and experience of the field in which the invention is...
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