Sabaf SpA v MFI Furniture Centres Ltd
| Jurisdiction | England & Wales |
| Judge | LORD NICHOLLS OF BIRKENHEAD,LORD BROWN OF EATON-UNDER-HEYWOOD,LORD HOFFMANN,LORD HOPE OF CRAIGHEAD |
| Judgment Date | 14 October 2004 |
| Neutral Citation | [2004] UKHL 45 |
| Date | 14 October 2004 |
| Court | House of Lords |
(a company incorporated under the laws of Italy)
and others
(a company incorporated under the laws of Italy)
and others
(Conjoined Appeals)
[2004] UKHL 45
The Appellate Committee comprised:
Lord Nicholls of Birkenhead
Lord Hoffmann
Lord Hope of Craighead
Baroness Hale of Richmond
Lord Brown of Eaton-under-Heywood
HOUSE OF LORDS
My Lords,
I have had the advantage of reading in draft the speech of my noble and learned friend Lord Hoffmann. For the reasons he gives, with which I agree, I would allow this appeal and dismiss the cross-appeal.
My Lords,
SABAF Spa ("SABAF") was the proprietor of a United Kingdom patent GB 2,100,411 for a burner for gas cookers and hobs. The application was filed on 12 June 1981 and the patent expired on 11 June 2001. In these proceedings it alleges that Meneghetti Spa ("Meneghetti") infringed the patent during its term by importing infringing products into the United Kingdom. Meneghetti counterclaims for a declaration that the patent was invalid because the invention was obvious. Laddie J held that Meneghetti had imported the products but that the patent was invalid. The Court of Appeal (Peter Gibson, Jonathan Parker and Longmore LJJ) [2002] EWCA Civ 976; [2003] RPC 264 held that the patent was valid but that Meneghetti had not imported the products. I shall first address the validity of the patent and then the question of importation.
The invention
During the first half of the last century, gas cookers consisted of a single unit with an oven below and a hob and grill above. The introduction of the eye level oven and work surface hob as separate units made it desirable for the hob and its burners to take up as little vertical space as possible and not intrude into the space below. The problem for designers was how to combine this obviously desirable goal with the functional needs of the burner.
The air surrounding a pure gas flame provides insufficient oxygen to enable it to burn steadily, especially when there is a pot sitting over the flame. It is therefore necessary to mix the gas with air before it is ignited. In addition, its pressure must be sufficient to expel it through the holes in the burner in a steady stream. In an old gas cooker, both of these requirements were met by the use of a tube which passed horizontally below the hob and then turned upwards to connect with the burner. The tube had an inlet for air to be drawn in and entrained by the gas flow. It also had a slight flare, that is to say, the passage along which the mixed gas and air flowed increased in diameter along the direction of flow. This slowed down the stream of gas and therefore, by a conversion of kinetic into potential energy known as the "Venturi effect", increased its pressure.
The pipe was a substantial piece of hardware taking up space beneath the hob. The specification of the patent in suit described the disadvantages of such burners:
"they are relatively tall, for which reason they are not suitable or cannot be used for hobs which must have the most compact and flat structure possible. Furthermore in burners of the known type the channels for the primary air intake always lead downwards, more specifically below the hob, or towards the oven, in the case of cookers provided with an oven, or towards a chamber or in any event towards the intakes provided for the purpose below the hob. In addition to this the fitting and centering of burners of the known type is rather laborious and difficult, and once fitted the burners have little stability and are therefore susceptible to undue movement. Thus they are fitted in such a way that access to and dismantling of the needle and gas injector, when necessary, requires the removal or lifting of the top plate of the appliance or the removal of the front, with the result that the operation is never easy and convenient."
An object of the invention was therefore said to be "to provide a gas burner of very low height which can therefore be used with advantage in hobs which must be flat". This was to be achieved by enabling both the air intake and the Venturi effect to take place above instead of below the hob.
The air was to be?
"drawn from the exterior directly above the cooker top or hob, eliminating the provision of a closed and isolated box or air intakes below the said level as happens when traditional gas burners are used."
The way this was achieved was by bringing the gas into a circular chamber which sat on a support above the hob but left a small gap between its circumference and the hob surface as well as an opening into the chamber itself. Air could enter through this gap and be mixed with gas in the chamber.
The Venturi effect also took place in the burner above the hob. The top of the chamber in which the gas had been mixed with air was in the form of a shallow metal dish with a hole in the middle through which the gas could emerge from the chamber. The dish was covered by a fitting lid with holes around its circumference. The mixture of air and gas was completed in the horizontal disc-shaped space between the dish and the lid. In addition, the sudden increase in the breadth of the passage through which the gas could travel radially from the central pipe to the circumference of the dish produced the Venturi effect which increased the pressure. The device has been conveniently referred to during the hearing as a "radial Venturi".
In addition to having these advantages, the invention was said to consist of "units which can be combined with ease, are conveniently accessible and are easily separable" and which would "provide a gas burner which is easier to locate and centre and is stable when placed directly on the top of a cooker or hob".
The drawings showed an embodiment of the invention as consisting of three parts: first, a circular support unit with a flange to fix it to the hob plate and through the centre of which the combustible gas could enter from below; secondly, the unit which contained the chamber in which the gas could be mixed with air which had entered from above the hob and which had the dish-shaped top in which the mixing was completed and the Venturi effect took place; and thirdly, the lid over the dish, called the flame spreader, with its holes around the circumference.
Obviousness
Section 1(1) of the Patents Act 1977 provides that a patent may be granted only for an invention which, among other things, "involves an inventive step". By section 3, an invention is to be taken to involve an inventive step if:
"it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art…"
Section 2(2) provides that the "state of the art" is to be taken to comprise:
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
Laddie J summarised SABAF's claim, at para 12, to inventiveness by reference to three disadvantages in the prior art which the invention was said to be designed to overcome. They were:
"(i) existing burner units are tall, so that they do not fit into slim hob units, (ii) the primary air which is entrained with the combustible gas comes from underneath the hob unit and (iii) existing burner units are difficult to disassemble. The third of these can be left to one side because, save in one very limited respect, it has not been suggested that there is anything inventive in the specific arrangement or design of parts required for the burners the subject of the patent, other than those arrangements or designs which are included to overcome the first two disadvantages. Therefore it is the first two disadvantages and the way in which they can be overcome which are significant to the issues in this case."
When he came to deal with the question of obviousness, at para 44, he returned to this analysis:
"As I have mentioned already, the two important features of the SABAF burners which are said to constitute an invention are (i) drawing primary air in from above the hob unit and (ii) the use of a flow path under the flame spreader in which the Venturi effect will be present. As I have also mentioned, there is nothing in the specification to suggest, nor has it been seriously argued, that these two features interact with each other."
Meneghetti relied upon certain foreign publications as matter which, if regard to them was had by the skilled man, would make both of these features obvious. It is only necessary to mention four. A design published in 1958 in Energie Technik by a Dresden state enterprise depicted a three-part burner consisting of a base, a mixing chamber and a conical top. The air was drawn in from above the hob. Houdry, a French patent of 1958, depicted a radial Venturi very similar to that of the patent in suit but drew its air from beneath the hob. Alpes-Inox, an actual hob unit on sale before the priority date, had burners which took air from above the hob but no radial Venturi. Zanussi, an Italian patent of 1963, had a radial Venturi but was not in three parts and did not draw air from above the hob.
Laddie J decided, after hearing expert evidence, that both of the inventive features relied upon were obvious in the light of the prior art. Having regard to Houdry and Zanussi, it would have been obvious to the skilled man to use a radial Venturi to attain the desirable goal of a low hob unit for use on a work surface....
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