Unilin Beheer BV v Berry Floor NV

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLord Justice Jacob,Sir Martin Nourse,Lord Justice Ward,Lady Justice Arden,Lord Justice Mummery
Judgment Date25 April 2007
Neutral Citation[2007] EWCA Civ 364,[2004] EWCA Civ 1021
Docket NumberCase No: A3/2006/1331, 1357 and 1358,Case No: A3/2003/2239A3/2003/2248
Date25 April 2007

[2004] EWCA Civ 1021

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE PATENTS COUNTY COURT

His Honour Judge Fysh QC

PAT 02010/PAT 02014

Royal Courts of Justice

Strand,

London, WC2A 2LL

Before:

Lord Justice Ward

Lord Justice Jacob and

Sir Martin Nourse

Case No: A3/2003/2239A3/2003/2248

Between:
Unilin Beheer Bv
Respondent/Claimant
and
(1) Berry Floor Nv
(2) Information Management Consultancy Design Limited (T/a Responsive Designs)
(3) B&q Plc
Appellants/Defendants

Henry Carr QC and Hugo Cuddigan (instructed by Wilmer Cutler Pickering Hale & Dorr) for the First and Second Appellants

Philip Roberts (instructed by Willoughby & Partners) for the Third Appellants

Michael Tappin and Andrew Lykiardopoulos (instructed by Bristows) for the Respondent

Lord Justice Jacob
1

This is an appeal from a decision of His Honour Judge Fysh QC given on 26 th September 2003. The Judge held that Unilin's EP(UK) No. 1 024 234 was infringed by two distinct categories of flooring product: those manufactured and imported by the first defendant, Berry, and a product called 'Snap-Fit'. He held that the patent was valid.

2

On this appeal Mr Henry Carr QC and Mr Hugo Cuddigan represent the first and second defendants (manufacturers and importers). The third defendants are retailers who sold both kinds of allegedly infringing products. They are separately represented by Mr Philip Roberts who sensibly and simply allied himself completely with the other defendants' arguments. Mr Michael Tappin and Mr Andrew Lykiardopoulos (solicitor advocate) represented the claimant patentees.

3

The Judge resolved all issues in favour of Unilin. Only three are raised by the defendants in this court:

i) Construction of the key claim of the patent, claim 20.

ii) Infringement by one of the two types of flooring in issue (not Snap-Fit).

iii) Whether claim 20 was entitled to the claimed priority date.

It may particularly be noted that the defendants no longer challenge the judge's finding of non-obviousness.

The Patent

4

I begin by setting forth those paragraphs of the patent forming the basis of the debate before us. It begins with a general statement about its field of application:

"[0001] This invention relates to a floor covering consisting of hard floor panels.

[0002] In first instance, the invention is intended for so-called laminated floors, but generally it can also be applied for other kinds of floor covering, consisting of hard floor panels, such as veneer parquet, prefabricated parquet, or other floor panels which can be compared to laminated floor.

5

It then goes on to acknowledge some prior art and to point out difficulties with it:

"[0003] It is known that such floor panels can be applied in various ways.

[0004] According to a first possibility, the floor panels are attached at the underlying floor, either by gluing or by nailing them on. This technique has as a disadvantage that it is rather complicated and that subsequent changes can only be made by breaking out the floor panels.

[0005] According to a second possibility, the floor panels are installed loosely onto the underground, whereby the floor panels mutually match into each other by means of a tongue and groove coupling, whereby mostly they are glued together in the tongue and groove, too. The floor obtained in this manner, also called a floating parquet flooring, has as an advantage that it is easy to install and that the complete floor surface can move which often is convenient in order to receive possible expansion and shrinkage phenomena.

[0006] A disadvantage with a floor covering of the above-mentioned type, above all, if the floor panels are installed loosely onto the underground, consists in that during the expansion of the floor and its subsequent shrinkage, the floor panels themselves can drift apart, as a result of which undesired joints can be formed, for example, if the glue connection breaks.

[0007] In order to remedy this disadvantage, techniques have already been thought of whereby connection elements made of metal are provided between the single floor panels in order to keep them together. Such connection elements, however, are rather expensive in manufacturing them and, furthermore, their provision or the installation thereof is a time-consuming occupation.

[0008] Examples of embodiments which apply such metal connection elements are described, among others, in the documents WO 94/ 26999 and WO 93/13280.

[0009] Furthermore, couplings are known which allow to snap floor parts into each other, a.o. from the documents WO 94/1628, WO 96/ 27719 and WO 96/ 27721. The snapping-together effect obtained with these forms of embodiment, however, does not guarantee a 100-percent optimum counteraction against the development of gaps between the floor panels, more particularly, because in fact well-defined plays have to be provided in order to be sure that the snapping-together is possible."

6

Next the patent describes some general advantages of the invention and what it is by reference to claim 1 (of course unamended) :

"[0012] The invention aims at an improved floor covering of the aforementioned type, the floor panels of which can be coupled to each other in an optimum manner and/or the floor panels of which can be manufactured in a smooth manner, whereby preferably one or more of the aforementioned disadvantages are excluded.

[0013] To this aim, the invention relates to a floor covering of the type described in the preamble of enclosed claim 1, which floor covering is further characterized in that it shows the features as described in the characterizing portion of said claim 1.

[0014] The fact that according to the invention a snap-coupling, allowing that the panels can be shifted together, can be realized in one piece out of the MDF/HDF core, in other words out of Medium Density Fibreboard or High Density Fireboard, offers the advantage that, on the one hand, such panels can be coupled in an optimum manner and such snap-coupling offers interesting possibilities when combined with other preferred features, this in contrast to the subject matter disclosed in the prior art documents JP 6–146553, JP 6–200611, JP 6–320510, JP 7–076923, JP 7–300979, JP 7–310426 and JP 8–270193, which documents only disclose the integration of coupling means requiring an angling motion instead of a shifting motion.

[0015] On the other hand, the floor panels of the invention still can be manufactured in a very competitive manner.

[0016] Further, according to the invention, the floor covering described above can show a number of additional features, as described in the detailed description. More particularly these floor coverings may show one or more of the following features:"

7

The patent then goes on to set out no less than 49 of these "additional features." Only the first matters for the purpose of the arguments:

"—that the coupling parts provide in an interlocking, allowing to couple the panels [sic – read this as "interlocking such that the panels are] free from play in respect to each other, according to all directions in the plane which is situated perpendicular to the aforementioned edges"

8

After the 49 features the patent says:

"[0017] Due to the fact that, in a preferred embodiment, the coupling parts provide for an interlocking free from play, as well as due to the fact that these coupling parts are manufactured in one piece, from the basic material of the floor panels, a perfect connection between adjacent floor panels can always be guaranteed, even with repeated expansion and shrinkage of the floor surface."

9

A little later:

"[0021] The surfaces obtained with HDF and MDF also have the advantage that the floor panels mutually can fluently be shifted alongside each other in interlocked condition, even when engaged with a tensioning force.

[0022] The inventor also found out that the aforementioned materials, in particular HDF and MDF, show ideal features in order to realize a connection, such as claimed in the claims, as these materials show the right features in respect to elastic deformation in order to, on the one hand, realize a snap-together effect, and, on the other hand, receive expansion and shrinkage forces in an elastic manner, whereby it is avoided that the floor panels come unlocked or are damaged in an irreparable manner."

10

And the only other passages I need specifically set out are:

"[0065] In order to allow for a smooth assembly, in order to guarantee the necessary stability and firmness and in order to limit the quantity of material to be cut away, the difference E between the upper lip 22–42 and the lower lip 23–43, measured in the plane of the floor panel and perpendicular to the longitudinal direction of the groove 10, should preferably be kept smaller than one time the total thickness F of the floor panel 1. For stability's sake, normally this total thickness F shall never be less than 5 mm."

"[0081] An important characteristic herein consists in that the coupling parts 4–5 are provided with locking means 6 which, in engaged condition, exert a tension force upon each other, as a result of which the engaged floor portions 1 are forced towards each other. As represented, this is realized preferably by providing the coupling parts with an elastically bendable portion, in this case the lip 43, which, in engaged condition, is at least partially bent and in this way creates a tension force which provides for that the engaged floor panels 1 are forced towards each other. The hereby resulting bending V, as well as the tension force K resulting herefrom, are indicated in the enlargement of figure 23."

11

Prior to trial Unilin proposed an amendment on which...

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