Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice McCombe |
| Judgment Date | 30 March 2017 |
| Neutral Citation | [2017] EWCA Civ 199 |
| Date | 30 March 2017 |
| Docket Number | Case No: A3 2016 0533 |
| Court | Court of Appeal (Civil Division) |
[2017] EWCA Civ 199
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Mr Justice Henry Carr
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice McCombe
and
Lord Justice Floyd
Case No: A3 2016 0533
Guy Burkill QC and Geoffrey Pritchard (instructed by Shoosmith LLP) for the Appellant
Nicholas Caddick QC and Andrew Norris (instructed by Potter Clarkson LLP) for the Respondent
Hearing date: 21 March 2017
Judgment Approved
This is an appeal from the decision of Henry Carr J of 20 November 2015 in which he found that the defendant and appellant ("H&M") had breached the terms of a settlement agreement ("the Settlement Agreement") entered into by H&M and the claimant and respondent ("Stretchline"). The appeal, in substance, raises a question of construction of UK patent number 2 309 038 ("the patent") which underlay the Settlement Agreement. The patent is concerned with tubular fabric, particularly for use in underwired garments such as bras.
The Settlement Agreement came about as a result of proceedings which Stretchline had brought against H&M in 2010 for infringement of the patent. We are not concerned with the detailed terms of the Settlement Agreement. The judge summarised their effect, so far as relevant for our purposes, at paragraph 8 of his judgment:
"So, in summary, H&M agreed not to deal in any product which fell within any of the claims of the Patent and paid an agreed sum by way of costs to Stretchline. … On this basis, the parties settled their differences and entered into the Settlement Agreement."
The present proceedings were commenced on 28 March 2013. Stretchline alleged that H&M were again selling bras which fell within the claims of the patent. It was, accordingly, asserted that H&M was in breach of the Settlement Agreement or that it had infringed the patent. In addition, H&M asserted that the patent was invalid and counterclaimed for its revocation. In October 2014, H&M's invalidity defence and counterclaim were struck out by Sales J (as he then was) because the Settlement Agreement precluded H&M from raising the issue of validity in these proceedings. That decision was confirmed on appeal: [2015] EWCA Civ 516. Although Stretchline's infringement claim was not struck out (as H&M had not asked that it should be), following the Court of Appeal's judgment, Stretchline discontinued its infringement claim and thenceforth relied only on breach of the Settlement Agreement.
The issue between the parties
The patent is concerned, in particular, with tubular fabric used to encase underwires in garments such as bras. The patent states that there was a known problem with such fabric tubing at the priority date (page 1 lines 12–19):
"A considerable problem with known fabric tubing for underwires is that the ends of the underwires can penetrate the tubing, either during the course of garment manufacture or in use by a wearer.
At present, a significant proportion of brassiere (bra) manufacturers (sic) products are returned because of protrusion of the underwire through the fabric tubing."
Claim 1 of the patent is a process claim which, it should be noted, is in broader terms. It specifies:
"a method for making a tubular fabric comprising providing a support yarn and an elastomeric yarn; characterised in that a fusible yarn is also provided and in that the yarns are formed into a tubular fabric whereby the fusible yarn is arranged within the fabric tube so that it is capable of forming a penetration barrier."
The dispute between the parties concerns the correct interpretation of the final words of this claim. Stretchline contends that the patent is claiming a structure which, by reason of bonding of the fibres, is better able to resist penetration (for example by wire) than would be the case if the fusible yarn had not been used. This can be achieved if the fusible yarn simply spreads itself over surrounding fibres to form points of adhesion or bonding between those fibres. H&M contends that the patent requires that the fusible yarn must create an identifiable, substantially continuous layer-like barrier or lining. On this basis, points of adhesion are not sufficient. The layer created must form a substantially continuous liner which provides the required penetration barrier. It is common ground that if H&M's construction is the correct one, there is no infringement. If the judge's construction is correct, there is.
Approach to construction
The approach to construction of patent specifications is well settled. The object of the exercise is to determine what the skilled person would understand the patentee to be using the language of the claim to mean: see per Lord Hoffmann in Kirin-Amgen Inc. and others v Hoechst Marion Roussel and others [2005] RPC 9. See also the summary of principles in Virgin Atlantic Airways v Premium Aircraft Interiors UK [2010] RPC 8 at [5].
A particular issue which arises in the context of the present case concerns whether one should be persuaded to reject a particular construction because of the legal consequences which that construction has for the validity of the patent. The issue is important because H&M are not entitled to challenge the validity of the patent directly. In Beloit v Valmet (No 2) [1995] RPC 255 at 270, Jacob J, as he then was, explained that it was not normally legitimate to construe claims using the prior art, because there was normally no reason to suppose that the patentee, when he set the limits of his claims, knew of any individual item of prior art. However, he continued:
"Of course the position is different if the prior art is specifically acknowledged in the patent. The purposive construction would lead to a construction of a claim which did not cover that acknowledged prior art: it can hardly have been the inventor's purpose to cover that which he expressly recognises was old."
Jacob J's conclusion that a patentee would not readily be taken to be intending to claim something which he expressly recognised as old is, as Henry Carr J pointed out, no more than an application of the well-known principle referred to by Lord Russell in Electric and Musical Industries v Lissen (1936) 56 RPC 23 at 39:
"… if possible, a specification should be construed so as not to lead to a foolish result or one which the Patentee could not have contemplated."
Mr Burkill QC, who appeared on behalf of H&M with Mr Geoffrey Pritchard, relied on a passage in Terrell on the Law of Patents 18 th Edition at 9–254 which suggests that the same approach may be appropriate where the consequence of a construction would be that the patent would be obvious in the light of common general knowledge. However, in Adaptive Spectrum v British Telecommunications Ltd [2014] EWCA Civ 1462 I had some reservations about that:
"… as soon as one departs from documents specifically acknowledged in the specification, the skilled reader has no basis for assuming that the patentee was aware of the document in question. Still further, where the objection is one of obviousness rather than lack of novelty, a value judgment is involved on which widely differing views are possible. It is true that if the document is said to form part of the common general knowledge, it might be said to be more likely that the patentee is aware of it. But a patentee may have been isolated from the common general knowledge, or may, despite the later finding of obviousness, have genuinely believed that he had made an invention over it."
I remain of the view that the fact that a particular construction may lead to a conclusion that the invention is obvious in the light of the common general knowledge is likely to be a much less potent factor weighing against that construction than a specific acknowledgement of prior art onto which the claim will read directly.
Finally, it is of course well settled that one cannot disregard obviously intentional elements in a claim. Deliberate limitations must have a meaning: see STEP v Emson [1993] RPC at 522 summarised in Virgin Atlantic at paragraph 5(vii).
The patent
I have already explained the problem addressed by the patent. It is the need to provide a tubular fabric which is resistant to penetration by wire, so as to prevent the underwires from protruding as a result of manufacture or use. The principal claims of the patent are, however, not limited to tubular fabric for that purpose, but extend to all tubular fabric having the specified yarns, provided the penetration barrier requirement is met.
At page 2 lines 6–7 the specification states:
"By "fusible yarn" we include the meaning that the yarn can be melted at a predetermined temperature and cooled to adhere to the support yarn."
The specification explains that whilst fusible yarn in the form of monofilaments could be used, a multifilament yarn is preferred " because on melting it spreads more easily on the fabric". A monofilament produces a " less even spread which may be lesscomfortable to a wearer of a finished garment". The specification continues at page 2 line 28 to page 3 line 1:
"Preferably, the fusible yarn is treated by heating whereby it melts and spreads over the interior surface of the tubular fabric. On cooling, the fusible yarn adheres to the other yarns of the fabric to produce a tubular fabric having a durable inner lining of the melted fusible yarn."
The reference to " a durable inner lining" is much relied on by H&M in support of their construction. There is other use of the expression "a durable inner lining", or similar language, in the specification. At page 7 lines 9 to 13, page 8 lines 6 to 8 and...
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