Ferag AG v Muller Martini Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Tuckey,Lord Justice Mummery |
| Judgment Date | 23 January 2007 |
| Neutral Citation | [2007] EWCA Civ 15 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2006/0631 |
| Date | 23 January 2007 |
[2007] EWCA Civ 15
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
PATENTS COURT
MR JUSTICE LEWISON
HC04C03993
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Mummery
Lord Justice Tuckey and
Lord Justice Jacob
Case No: A3/2006/0631
James MELLOR Q.C. and James ABRAHAMS (instructed by Simmons & Simmons) for the Appellant
Christopher FLOYD Q.C. and Iain PURVIS Q.C. (instructed by Bristows) for the Respondent
This appeal is from a decision of Lewison J, [2006] EWHC 225 (Ch). Ferag sued Müller Martini (“MM”) for infringement of its EP (UK) 0 367 715. MM make a machine the “NewsTrim”, which it is alleged carries out the process of the process claims of the patent. The Judge held that the machine is outside the scope of those process claims of the patent, that in any event the patent was invalid and that it could not be saved by the amendment sought by Ferag. Ferag appeal these decisions. MM support the Judge's findings in their favour and, if necessary, support the result on grounds rejected by the Judge. The appeal is with the Judge's permission.
When things like magazines or books are printed, the sheets are put together and then bound (which includes stapled). The bound “signatures” as they are called have three rough edges which need to be trimmed. I shall call the edges “top”, “bottom” and “front”. The patent is for a method and apparatus for trimming signatures. Oddly the method claims are wider than the apparatus claims. There is no claim to “an apparatus for carrying out the method of claim 1”.
The Law
Principles of claim interpretation
The Judge set these out at [24] in the form conveniently summarised by Pumfrey J in Halliburton v Smith [2006] RPC 25 at [68]. There was no dispute about the principles and I need not set them out here.
Anticipation
The word “anticipation” has long been used for the objection to validity that the invention is not “new” (the requirement of Arts. 52 and 54 of the European Patent Convention as implemented by the Patents Act 1977).
There was some dispute, at least as to the application of the principles. Mr James Mellor QC submitted that in relation to a cited document called Stobb the Judge had erred in his appreciation or application of the law as to novelty. I return to this in due course, for the present confining myself to citation of important principles from the two key authorities and some comments about them.
In SKB's Patent [2005] UKHL 59, [2006] RPC 323 Lord Hoffmann said:
“[22]… the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so.
….whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied.”
Note particularly Lord Hoffmann's phrases “necessarily result” and “must result”. This followed his citation of the judgment of the court given by Sachs LJ in General Tire [1972] RPC 457 at 485–486. This includes the following passage:
“To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
Lord Hoffmann later re-emphasised the “necessarily result” test by the familiar test of asking whether, if the prior art were carried out, it would necessarily infringe:
“[24] … anticipation requires prior disclosure of subject-matter which, when performed, must necessarily infringe the patented invention.”
Compliance with the “necessarily result” test is not in itself sufficient for a piece of prior art to be novelty destroying. The prior art must also be “enabling”– it must provide enough information to enable the skilled man to make or do that which is covered by the impugned claim – see per Lord Hoffmann at [26 – 27]. It is in relation to enablement that the skilled man is assumed to:
“be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found”per Buckley LJ in Valensi v British Radio [1973] RPC 337, 377 (quoted with approval by Lord Hoffmann at [27]).
It is important to keep the concepts of disclosure and enablement separate (see Lord Hoffmann at [28]. The distinction between the concepts is well illustrated by the facts of SKB itself. The attacked patent identified and claimed an identified crystalline chemical. The prior art contained both a description of such a product and a recipe for making it. If the skilled man tried to follow the recipe using his ordinary skill and knowledge he would have failed. The recipe as such was not enabling. But even without it, the skilled man would have been able, with a little trial and experiment, to make the described product. So the prior art satisfied both the “necessarily result” and “enablement” requirements.
Note particularly that the permissible “trial and error” concept of enablement is irrelevant to the “necessarily result” concept. To satisfy the latter it is not good enough to show that a skilled man, by making reasonable or sensible adjustments or additions to what is actually described in the prior art, would make or do something within the claim. That would be to move from the objection of anticipation to that of obviousness. This was made clear in General Tire in a passage immediately before the passage I have quoted:
“If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness.”
Sometimes it will not matter which objection applies. Only in the case of co-pending applications where the earlier application has not been published by the time of the later, is the objection of obviousness not available along with that of anticipation (see EPC Art. 56). But even where both objections are available, it is essential to remember that obviousness involves different considerations from novelty. There can be cases where once the novelty test has failed, an invention will not be obvious even though the differences between the prior art and what is claimed are small and would involve only reasonable trial and experiment or workshop modification. Once the differences are identified, it remains to be shown that what is claimed is obvious. It is not always the case that small variants from the prior art would be so.
Obviousness
There was no dispute as to the approach – that of the now familiar Windsurfing case, cited by the Judge at [35]. I need not set it out yet again. It is worth mentioning, however, that once one has identified the difference(s) between the prior art and what is claimed ( Windsurfing step 3), the Court must always guard against any ex post facto analysis in considering whether the claim is obvious. As I said in Technip France's Patent [2004] RPC 919:
“[112] Fletcher-Moulton LJ's judgment in British Westinghouse v Braulik (1910) 27 RPC 209 is as true today as when it was first said:
'I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to inventors'”
Obviousness on appeal
Again there was no dispute – the approach is that laid down in Biogen [1997] RPC 1 at 45. Again I will not set it out. I add however, that if the Judge has made an error in his starting point by wrongly construing the prior art so as to find anticipation, then rather less weight can be placed on any finding of obviousness. This was a point noticed in Technip (where the Judge had made an error as to anticipation):
“[114] Here the Judge was really in a difficult position to decide obviousness. For he had already concluded that the claims were anticipated. So, looking at Windsurfing step (3), he had decided there were no differences. His views on obviousness were therefore inherently conjectural.”
In the nature of things less weight can be placed on a conjectural view than one which was decisive.
The Common General Knowledge (“CGK”)
Mr Mellor did not challenge the Judge's findings as to cgk, though he submitted it was not quite complete and failed to follow through some of its consequences. I borrow with gratitude the Judge's summaries, starting with those about the cgk of cutting:
“[15] Both experts broadly agree that there are three kinds of cut: a knife cut, a shear cut and a burst cut....
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