Ferag Ag v Muller Martini Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Lewison |
| Judgment Date | 22 February 2006 |
| Neutral Citation | [2006] EWHC 225 (Ch) |
| Date | 22 February 2006 |
| Docket Number | Case No: HC04C03993 |
| Court | Chancery Division |
[2006] EWHC 225 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Mr Justice Lewison
Case No: HC04C03993
Mr James Mellor and Mr James Abrahams (instructed by Simmons & Simmons) for the Claimant
Mr Christopher Floyd QC and Mr Iain Purvis (instructed by Bristows) for the Defendant
Hearing dates: February 6 th 7 th 8 th 9 th 10 th
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.
Introduction 3
Some terminology 3
The experts 4
The skilled addressee 5
General 5
Types of cut 5
Trimming process 7
Approach to interpretation 8
Amendment 10
Grounds of objection 10
Lack of clarity 11
Additional matter 11
Anticipation 12
Two requirements 12
Disclosure 12
Enablement 12
Obviousness 12
Previous machines 14
In general 14
European Patent 17878 14
Rösner 15
Stobb 15
The Patent in Suit 18
Introduction: the prior art and the deficiency 18
The figures 19
The claim and the amended claim 21
The disputed phrases 23
"knife part" 23
"jointly associated with" 23
"moved past" 24
"fixed knife part" 24
"at least cut along an intended cutting edge" 25
The amendment application 26
Does Stobb anticipate? 28
Does Stobb disclose a counterknife? 28
Does Stobb cut along an intended cutting edge? 30
Are the cuts displaced in Stobb? 30
Result on anticipation 30
Does Rösner anticipate? 30
Is the top knife in Rösner fixed? 30
Do the lower knife and the book block move past the upper knife? 30
Result on anticipation 30
Is the invention described in the patent in suit obvious? 31
Introduction 31
What is the inventive concept in the patent? 31
Common general knowledge 32
What are the differences between Stobb and the patent? 32
Are those differences obvious, or do they require invention? 32
Does "NewsTrim" infringe? 34
How "NewsTrim" works 34
Infringement 36
Result 37
Introduction
This case concerns methods for cutting or trimming printed products. The patent in suit is EP 0 367 715 entitled "Method and Apparatus for Cutting/Trimming Printed Products". Its priority date is 31 October 1988. The original is in German, but the arguments have revolved around an agreed English translation. The technology in issue relates to machinery for trimming printed products such as magazines and newspapers. After the pages have been printed, collated and joined together, it is desirable to trim the product to create smooth, accurate edges. Ideally, one wants such edges to be produced at maximum speeds; but in reality there has to be a compromise between these desiderata. Trimming is one stage in the "finishing" process: i.e. the processing which occurs downstream from the printing processes.
The patentee, Ferag AG ("Ferag"), is a Swiss company and one of the leaders in print finishing and mail room machinery used in the printing industry. Ferag's parent and holding company is WRH Walter Reist Holding AG. The Defendant, Müller Martini Limited ("MM"), is the UK arm of Müller Martini AG, also a Swiss group of companies, and one of Ferag's major competitors.
Ferag alleges that MM has infringed the patent. The allegedly infringing machine is MM's "NewsTrim" machine, which was launched in 2004. MM denies infringement and says that, anyway, the patent is invalid. It says that:
i) The invention described in the patent is anticipated by two pieces of prior art (US Patent 4 496 140 and GDR Patent 112 380; called, respectively, "Stobb" and "Rösner");
ii) Alternatively the invention is obvious in the light of Stobb.
Some terminology
The experts (Professor Fritsch for Ferag and Professor Lüthi for MM) agreed the basic terminology. A "web" is a roll of paper, used in a continuous printing process.
A page (obviously) has four edges. The edge where the pages are held together is called the "spine". The opposite edge is called the "front". The remaining two edges are called the "head" and "foot" respectively. The three edges that are trimmed are the head, the foot and the front. The terminology in the documents does not always conform to this nomenclature. Mr Mellor helpfully provided a table setting out the different usages, which I reproduce:
| Experts | Patent | MM's PPD |
| Head | Front | Side |
| Front | Top | Front or End |
| Foot | Back | Side |
A diagram (prepared by Professor Lüthi) is as follows:
A folded printed product is sometimes called a "signature". The experts differed over the precise meaning of this word. Professor Fritsch says that it is not used to describe a product after trimming. Once trimmed the product is ready for use and is not trimmed again. Trimming happens after the signatures have been gathered and collated. Professor Lüthi says that a "signature" consists of one or more sheets of printed paper, folded one or more times. It is not called a "signature" until it has been folded. A signature may be bound with other signatures to form a book or magazine. I do not consider that this difference between the experts is of any significance; and I need not resolve it.
Once folded, products are sometimes conveyed in an overlapping relationship on a conveyor. In this relationship they resemble scales or shingles. This is why this method of conveying products is sometimes referred to as "scalar" or "shingle" flow or as "scale-flow".
The experts
Both the experts have had distinguished academic careers, and both have also had practical experience of industry. Professor Lüthi has worked for MM; and since leaving MM in 1997 he has continued to act occasionally as a consultant for MM, in collaboration with colleagues. While he was working for MM he was also closely involved in the design of the NewsTrim machine. Mr Mellor criticised him for not having revealed this in his expert report; and said that his attachment to the machine (on the basis that it was "his baby") meant that he was unable to maintain the required degree of impartiality. Although there is some force in the point that Professor Lüthi ought to have disclosed his involvement with the design of the NewsTrim machine, I do not consider that it had the effect that Mr Mellor ascribed to it. I found Professor Lüthi to be a careful and balanced witness.
Professor Fritsch has had an equally distinguished career. However, I found him a less satisfactory witness than Professor Lüthi. There were times at which he seemed to me to be avoiding giving answers to fair and pertinent questions. I found that Professor Fritsch's discussion of an "example" of the use of the phrase "bed knife" (based on a document that Ferag's solicitors had supplied to him; and without making any independent inquiries of his own) fell below the high standards rightly expected of expert witnesses.
Overall, I place more confidence in the views expressed by Professor Lüthi than in those expressed by Professor Fritsch, where their views conflicted. It is fair to say, however, that there was very little conflict on the questions that matter.
The skilled addressee
General
The target readership of a patent is that of people "likely to have a practical interest in the subject matter of the invention" with "practical knowledge and experience of the kind of work in which the invention was intended to be used" ( Catnic v. Hill & Smith [1982] R.P.C. 183 at 242–3). So in order to interpret a patent, the court must equip itself with the practical knowledge and experience of the target readership. This body of knowledge is called "common general knowledge". This is not "general knowledge" in the sense in which most people understand it, but:
"what would in fact be known to an appropriately skilled addressee —the sort of man, good at his job, that could be found in real life."
General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd [1972] R.P.C. 457 at 482.
It is, therefore, the technical background and mental equipment which it is necessary to have in order to be competent in the field of science or technology in question. It includes not merely what is in the skilled addressee's head, but also what is contained in frequently used text-books or trade literature. The text-books to which the experts referred were, naturally enough, in German; but the skilled addressee is not monoglot.
Since I must interpret the patent as it would be understood by the skilled addressee it is convenient to consider the attributes of the skilled addressee before coming to the patent itself. Professor Fritsch says the skilled addressee is a mechanical engineer with a degree in engineering with about 5 years of experience in designing print finishing machines or who works in production and considers the improvement of finishing machines. Alternatively he thinks it could be a more experienced engineer without formal qualification. Professor Lüthi thinks that in addition to a degree in mechanical engineering the skilled addressee would have a minimum of 3–5 years' industrial experience in the field of paper processing machinery. Experience in machine tool engineering would be an additional benefit. He thinks that a more experienced engineer with work experience in a corresponding field could work on the development of the machines as well. No one suggests that there is any relevant difference between the experts in this respect. The patent has a priority date of October 1988; with the consequence that the common general knowledge must be assessed as at that date.
Types of cut
Both experts broadly agree that...
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Ferag AG v Muller Martini Ltd
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