Pioneer Electronics Capital Inc. and Another (Plaintiffs/Appellants) v Warner Music Manufacturing Europe Gmbh and Another
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE NOURSE,LORD JUSTICE LEGGATT,LORD JUSTICE SCHIEMANN |
| Judgment Date | 28 November 1996 |
| Judgment citation (vLex) | [1996] EWCA Civ J1128-3 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | CHPCI 95/0289/B |
| Date | 28 November 1996 |
[1996] EWCA Civ J1128-3
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
(Mr. Justice Aldous)
Royal Courts of Justice
Lord Justice Nourse
Lord Justice Leggatt
Lord Justice Schiemann
CHPCI 95/0289/B
CHPCI 95/0290/B
MR. A. WATSON QC and MR. G. BURKILL (instructed by Messrs. Lovell White Durrant, London EC1) appeared on behalf of the Appellant Plaintiffs.
MR. P. PRESCOTT QC and MR. M. HOWE (instructed by Messrs. Gouldens, London EC4) appeared on behalf of the Respondent Defendants.
Thursday, 28th November 1996
Introduction
The question on these appeals is whether compact discs which have been imported into the United Kingdom and then sold here are obtained "directly" by means of a patented process within section 60(1)(c) of the Patents Act 1977. That provision is one of those which, by section 130(7) of the Act, is declared to have, as nearly as practicable, the same effect as the corresponding provisions in European patent law. So the question, which has not previously been a subject of decision here, must be answered by reference to decisions in other European countries, most of them in Germany.
The question arises in two infringement actions relating to four European (UK) patents, in which the writs and statements of claim were struck out by Mr Justice Aldous (as he then was) as disclosing no reasonable cause of action under section 60(1)(c). In other words, he held that the products complained of could not be said to have been obtained directly by means of the patented processes. With the leave of the judge, the plaintiffs now appeal to this court.
The judgment of Mr Justice Aldous
The reserved judgment of Mr Justice Aldous delivered on 24th January 1995 is reported at [1995] RPC 487. Between p.489, l.15, and p.492, l.20, the background to the actions, the parties' contentions and the nature of the process and the products are described, and material extracts from the patents in suit are set out. That section of the judgment not having been criticised in any respect, it is gratefully adopted. Except for the judge's account of how, in general, optical discs are made, it need not be repeated.
His account starts at p.490, l.9:
"The first step in producing a disc is called mastering. This involves coating a carefully prepared glass disc with a layer of photoresist. After curing, the master glass plate is placed on a lathe and exposed to a cutting laser to produce the spiral track. The master glass plate is then developed with the result that the exposed areas of photoresist are washed away leaving what can be thought of as an engraved track. Thereafter a metal coating, usually silver, is evaporated onto the photoresist layer.
The second step is called electroforming. The metallised master disc is transferred to an electroplating room for the plating process. The process imparts a nickel coating onto the glass master which is then separated from the master. The new disc is called the father. Using the same process, the father is used to produce a number of positive impressions, perhaps 10, called mothers. The process is repeated using the mothers to produce a number of negative impressions, perhaps 20 per mother, called sons or stampers. It is these stampers which are used in the stamping or pressing process.
Stamping or pressing is the process by which discs are mass produced. Normally this is an injection moulding process using a polycarbonate material to produce a plastic disc. The plastic disc is then covered with a thin layer of metal such as aluminium, silver or gold which in turn is protected by an acrylic layer."
In this court the argument has come to be focused on European Patent (UK) 0081649 ("649"), which is expressed to relate to an invention entitled "Method for forming optical discs". As appears from the judge's judgment at p.490, l.35, the single claim of this patent relates to a method for forming "a stamper for use in moulding optical disc replicas" which, in terms of the electroforming process described by the judge, is not a "son" (the object usually referred to as the "stamper") but a "father". This was explained by the judge at p.490, l.50:
"The opening part of that claim refers to the well known steps from mastering to the production of a stamper. The inventive step is contained in the last few words of the claim. The process claimed is a method of producing a stamper, with the claim setting out the necessary steps with the initial vapour deposit of metal being carried out at a particular pressure. The claimed process does not contain steps concerned with the subsequent steps of producing a mother nor sons nor pressing. Thus the patent will be infringed by a person who carries out the claimed process and thereby produces a father."
In each of the other three cases the process claimed is one which can be broadly described as ending with the production of the master. So in 649 the process is more "downstream", as it was put, than in the other three cases. It was recognised in argument that if the plaintiffs could not succeed in relation to 649, they would be unable to succeed in any of the other three cases. However, in the interests of simplicity it is convenient to treat all four processes as ending with the production of the master.
The judge's general approach and his particular decision in regard to 649 are stated at p.499, l.3:
"In essence, the product to be 'directly obtained' must be the product of the claimed invention not an intermediate. It is only where the product is produced by the patented process can there be infringement. Of course that requires the court to construe the claim of the patent and to do that the court must have in mind the Protocol. In that way fair protection will be afforded to the patentee and reasonable certainty to the public. Thus I believe that the correct approach is to construe the process claim alleged to be infringed and then decide whether the alleged infringing product is the product of that process in the sense that it is the immediate or direct product of that process. That gives effect to the meaning of words in section 60(1)(c) of the 1977 Act and is consistent with the EPC and its legislative history.
Patent 649 has one claim which claims a method for producing an intermediate, i.e. a stamper. Upon the assumptions that are necessary, the defendants' compact discs use the claimed method to produce stampers. From those stampers, they go on to produce mothers, sons and discs by injection moulding. It is those discs which are alleged to be infringements. I have no doubt that the process used by the defendants differs widely from that claimed and that their discs are not the immediate or direct product obtained by the claimed process. The defendants' discs differ in material to that which would be the result of using the claimed process and are the result of three further steps of production. All those steps of production are material and important steps in arriving at the end product. I conclude that the allegation of infringement cannot succeed."
The Patents Act 1977
So far as material, section 60 of the 1977 Act provides:
"(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say —
…
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise."
So far material, section 130(7) provides:
"Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (amongst other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections … 60 …, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply."
The European Patent Conventions
The Patent Co-operation Treaty having no provision corresponding to section 60, the clear effect of section 130(7) is that section 60(1)(c) must be taken to have brought English patent law into conformity with the corresponding provisions of the European Patent Convention ("EPC") and the Community Patent Convention ("CPC") and to be so framed as to have, as nearly as practicable, the same effects as those provisions have in the territories to which the EPC and the CPC apply.
The provisions of the EPC and CPC corresponding with section 60(1)(c) are articles 64(2) and 25(c) respectively. Article 64(2) provides:
"If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process."
So far as material, article 25 provides:
"A...
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