Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group

JurisdictionEngland & Wales
JudgeLord Justice Jacob,Lord Justice Patten,Mr Justice Kitchin,Lady Justice Smith
Judgment Date23 February 2011
Neutral Citation[2011] EWCA Civ 163,[2009] EWCA Civ 1062,[2009] EWCA Civ 1513
Docket NumberCase No: A3/2009/0389(A),Case No: A3/2009/0389
CourtCourt of Appeal (Civil Division)
Date23 February 2011
Between
Virgin Atlantic Airways Limited
Appellant
and
Premium Aircraft Interiors Uk Limited
Respondent

[2009] EWCA Civ 1062

Before: The Rt Hon Lord Justice Jacob

The Rt Hon Lord Justice Patten and

The Hon Mr Justice Kitchin

Case No: A3/2009/0389

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE CHANCERY DIVISION

(PATENTS COURT)

The Hon Mr Justice Lewison

HC07 C1905

Richard Meade QC and Henry Ward (instructed by DLA Piper UK LLP) for the Appellant

Mark Vanhegan QC and Miss Kathryn Pickard (instructed by Wragge & Co LLP) for the Respondent

Hearing dates: 5/6/7 October 2009

Lord Justice Jacob

Lord Justice Jacob:

Setting the Scene

1

This is the judgment of the court to which all members have contributed.

2

Virgin (whose case was argued by Mr Richard Meade QC) appeals that part of the judgment of Lewison J ( [2009] EWHC 26 (Pat)) whereby he held that Contour's (as the respondent is known) aircraft seating system does not infringe its EP (UK) 1,495,908 patent (“the Patent”). Contour (whose case was argued by Mr Vanhegan QC) cross-appeals for revocation of the Patent, but only contingently so. It says that if the Patent is wide enough to cover its system then, and only then, it is invalid. Lewison J held that if the Patent had been wide enough to cover the Contour system it would have been invalid for added matter. He rejected all other attacks on the Patent, even on that contingent basis.

3

Contour's denial of infringement and its contingent cross-appeal are based on more limited grounds than those advanced before the judge. Moreover what was a major issue before the judge – whether Contour had infringed design right, is not raised on appeal.

4

The upshot is that the issues we have to decide are much more limited than those before the judge. What is left in play are the following:

i) Is the scope of claim 1 of the Patent limited to systems which employ “flip-over” seats (see below for what this means)?

If it is not so limited:

ii) Is the Patent invalid for adding matter not disclosed in the original application (“the Parent”)?

iii) Does claim 1 include within it what is disclosed in British Airways (“BA”) patent application GB 2,326,824A (“the BA Application”)? If so it is invalid for want of novelty.

iv) Does claim 1 cover systems which use rotatable seat/beds? If so, it will be invalid for want of novelty over a prior art patent application called Airbus (EP 1,211,176).

v) If not, is claim 1 nonetheless obvious over Airbus or the BA Application or common general knowledge (“cgk”)?

vi) If Claim 1 is obvious, is claim 9 also obvious?

Principles of claim construction

5

One might have thought there was nothing more to say on this topic after Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9. The judge accurately set out the position, save that he used the old language of Art 69 EPC rather than that of the EPC 2000, a Convention now in force. The new language omits the terms of from Art. 69. No one suggested the amendment changes the meaning. We set out what the judge said, but using the language of the EPC 2000:

[182] The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 137 and refined by Pumfrey J in Halliburton v Smith International [2005] EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9. An abbreviated version of them is as follows:

(i) The first overarching principle is that contained in Article 69 of the European Patent Convention;

(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.

(iii) It follows that the claims are to be construed purposively—the inventor's purpose being ascertained from the description and drawings.

(iv) It further follows that the claims must not be construed as if they stood alone—the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.

(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.

(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.

(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.

(vii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.

(vii) It further follows that there is no general “doctrine of equivalents.”

(viii) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.

(ix) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.

6

So far so good. Those are the general principles. But as stated they do not explicitly cover three matters with which we are concerned. They are related and involve this question: how much of the law and practice of the patent system is the skilled reader supposed to know and thus take into account when he is trying to work out what, by the words of his claim, the patentee was intending to mean?

7

The first matter relates to the use of numerals in a patent claim. Rule 29 (7) of the Implementing Regulations to the EPC provides that if the application contains drawings:

“… the technical features mentioned in the claim shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim.”

8

So the question is this: does the skilled reader take into account that the patentee, when putting numerals into his claim, knew that they would not be used by the skilled reader to limit his claim? Must he be taken to know this rule?

9

The next matter follows from the use of a two-part claim, the so-called “pre-characterising” and “characterising” parts. Again the question arises because of a rule of the Implementing Regulations. Rule 29(1) says:

“The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain:

(a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art;

(b) a characterising portion – preceded by the expression “characterised in that” or “characterised by”– stating the technical features which, in combination with the features stated in sub-paragraph (a), it is desired to protect.”

Does the skilled reader when he sees such a two-part claim take this rule into account so that he at least expects the pre-characterising portion to describe matter which is part of the prior art?

10

Finally there is a somewhat more general question (because there is no express rule about drafting or construction involved) of whether the skilled reader will know about the practice of divisional applications. It arises because the Patent is a divisional and says so. If the skilled reader does know about the divisional system (provided for by Art. 76 of the EPC, implemented by Art 25 of the Implementing Regulations) that may affect his understanding of a claim because he will know that there are, or may be, aspects of what is described in the patent which are actually claimed in some other patent or patents divided out from the original application.

11

We think the answers to these questions follow from Kirin-Amgen itself. The notional skilled reader is to be taken as knowing these matters and bringing them to bear when he considers the scope of the claim. We say that for the following reasons:

12

First in Kirin-Amgen itself Lord Hoffmann said that the skilled reader:

[33] … reads the specification on the assumption that its purpose is to both describe and demarcate an invention – a practical idea which the patentee has had for a new product or process.

And:

[34] … it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new..

13

So the skilled reader is taken to suppose that the patentee knew some patent law – that his claim is for...

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