Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLORD JUSTICE OLIVER
Judgment Date31 Jan 1984
Judgment citation (vLex)[1984] EWCA Civ J0131-3
Docket Number84/0031

[1984] EWCA Civ J0131-3

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

(MR. JUSTICE WHITFORD)

Royal Courts of Justice

Before:

Lord Justice Oliver

Lord Justice O'connor

Lord Justice Slade

84/0031

Windsurfing International Inc.
Appellants
and
Tabur Marine (Great Britain) Limited
Respondents

MR. N. R. PUMFREY and MR. HENRY CARR (instructed by Messrs. S. J. Berwin & Co.) appeared for the Appellants.

MR. D. E. M. YOUNG Q.C. and MR. S. J. THORLEY (instructed by Messrs. Bird & Bird) appeared for the Respondents.

LORD JUSTICE OLIVER
1

This is the judgment of the court.

2

This is the plaintiffs' appeal from an order made by Whitford J. in the Patents Court on 7th April 1982 dismissing their action against the defendants for infringement of the plaintiffs' Patent No. 1258317 and ordering, upon the defendants' counterclaim, that the patent be revoked.

3

The patent in suit ("the Schweitzer patent") relates to the basic equipment employed in what has, in the past few years, become an increasingly popular international sport, that of windsurfing, but, on the face of it, it covers also a very much wider field, namely that of wind-propelled vehicles generally. The plaintiffs, as their name suggests, are an American Corporation and the patent in suit results from a Convention Application with a priority date of 27th March 1968. The specification is headed "Wind-propelled Vehicle" and the statement begins by defining the field of art to which the invention relates as including "the field of ships, particularly sailboats and iceboats, and the field of land vehicles with sail propulsion". Sail propulsion, it continues (page 1 line 17):

"has been suggested as a motive means not only for boats and ice-boats, but also for such watercraft as surfboards and landcraft such as sleds, i.e. generally any lightweight small craft. Typically, a sail is provided on a mast that is rigidly secured to the craft in a vertical position and additionally the sail and mast can be entwined in a network of riggings and control mechanisms."

4

It goes on to identify two problems, first that the effect of providing a sail on a normally sail-free vehicle such as a surfboard is to "denature" the vehicle and convert it substantially into a sailboat and secondly that, when a sail is fitted to a vehicle which does not have high roll stability, there is a danger of its being overturned by sudden or excessive winds.

"A need therefore exists for safely providing wind-propulsion means for a vehicle not normally so equipped but which means preserves the original ride and control characteristics of the vehicle."

The consistory clause, which is reproduced in claim 1 of the claims, is in these terms:

"In accordance with the present invention there is provided a wind-propelled vehicle comprising body means, an unstayed spar connected to said body means through a joint which will provide universal-type movement of the spar in the absence of support thereof by a user of the vehicle, a sail attached along one edge thereof to the spar, and a pair of arcuate booms, first ends of the booms being connected together and laterally connected on said spar, second ends of the booms being connected together and having means thereon connected to the sail such that said sail is held taut between the booms".

The specification goes on to expand upon the method of connection of the spar to the body by means of a universal joint to describe the purpose of the arcuate booms and to explain the method of operation of the invention. It is easier to read the relevant passages in full than to summarise them. Starting from line 63 on page 1 the specification continues:

"In particular embodiments, the spar is connected to the vehicle body by means of a universal joint, i.e. a joint having three axes of rotation.

"The pair of arcuate booms are provided laterally disposed on the spar to hold the sail taut and provide a hand hold for the user.

"The invention can be used on water-craft, iceboats and land-craft. It can be used on small yachts, runabouts, canoes, row-boats, and other such craft, but is most advantageously used on small and lightweight vehicles such as surfboards, iceboats, and sleds. Leeboards can be provided for a water-craft of low roll stability such as a surfboard. The term 'leeboard' used in the specification and claims is meant to include centre boards and dagger-boards, as these terms are known in the sailing art, as well as other projections from the body of the craft, planar or otherwise, extending into or onto the water for stabilization.

"The present invention allows essentially all of the steering and control to be accomplished through the sail: i.e. no rudder or other steering mechanism is needed, although such need not be excluded. One may accelerate, turn and tack merely by manipulating the sail. However, because the sail spar is free to move in any direction, the sail must be held by the user with the user relying on his skill with the vehicle for balance. In the event of sudden or excessive winds, the user need only release the sail and it will immediately fall in any direction, freeing the vehicle from the propulsive force".

There follows a detailed description of a particular embodiment of the invention illustrated by drawings accompanying the specification. There is no need to refer to these in detail—the essential features of the embodiment can be seen in Figure 1 which is described as

"a perspective view of a wind propelled apparatus according to an embodiment of this invention, obtained by modifying a surfboard with a sail, spar and booms the refor and leeboard".

What is illustrated is what we have been told is a conventional surfboard of the type known as a "Californian surfboard" (10) fitted with a leeboard, and having mounted on its upper surface immediately above the leeboard and approximately in the centre of the surfboard a block carrying a universal joint to which is attached a spar (12). Attached to the spar by its leading edge is a triangular sail (14) which is held taut by two arcuate booms (16 and 18) connected together at each end and connected at their forward ends to the spar.

The method of operation is described at page 2 line 122 et seq as follows:

"In operation, the user stands on the top…of the surfboard 10 behind the point where the spar 12 is attached by the universal joint…and grips one or the other of the booms 16 or 18. If he were going before the wind and wished to make a turn, he would tilt the sail 14, forwardly and downwardly, thus applying the force of the wind to the nose of the surfboard 10 and causing the board 10 to turn to the left or right depending on which side of the sail 14 was to windward. On the other hand, if he wanted to tack, he would pull the sail 14 back-wardly and downwardly to apply the force of the wind to the rear of the board 10 to move so as to come into the wind. As he is into the wind, he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other side and setting the sail 14 so that the wind captures it and the board 10 is then on its new course. The sail may be tilted forward or backward for speed control.

"In the event that a sudden surge of wind threatens to capsize the surfboard 10, the user may merely release the sail 14 and it will fall free into the water, completely removing the danger. The sail 14 is provided at its spar 12 end with a rope 10 so that the user can readily pull the sail 14 back into sailing position".

Turning now to the claims, claim 1 has already been read, and claims 2 to 6 inclusive are merely variants of claim 1 by the addition or subtraction of individual features. It is accepted that they must stand or fall with claim 1. Claim 7 is the "picture claim"—

"A wind-propelled vehicle substantially as hereinbefore described with reference to the accompanying drawings".

It merits separate mention because, although it was relied on in the pleadings as one of the claims alleged to have been infringed by the defendants, and although it was distinctly challenged by the defendants in their pleadings, counsel then appearing for the plaintiffs, in opening the case before the learned judge, disclaimed any allegation of infringement of this claim so that, in the event, no evidence was directed to this particular embodiment as opposed to the general concept embodied in claims 1 to 6.

That then is the specification and it starts, as it must, from the proposition which is acknowledged on page 1(lines 13 to 26) that there is nothing whatever novel in the concept of sail propulsion, whether applied to land or to watercraft. It is, therefore, important at the outset to isolate and identify what is the inventive concept for which the patentee is claiming monopoly protection. Mr. Young Q.C. for the defendants describes it as "the free-sail concept". Mr. Pumfrey for the plaintiffs, on the other hand, says that it is the combination of the unstayed spar (i.e. "the free-sail concept")the sail attached to the spar along one edge and the connected arcuate booms. In the sense that what is claimed in the claims is protection for the combination of features described, Mr. Pumfrey is, of course, right. As the learned judge observed at page 7 of the transcript of his judgment:

"…for present purposes it is sufficient to direct my attention to claim 1, a claim to a wind-propelled vehicle having in combination the features I have already enumerated. Although the claims, other than claim 7, cover any wind-propelled vehicle, the only wind-propelled vehicle which, as far as I can tell on the evidence, would be of interest to the plaintiffs, certainly the only one which is apparently of interest to...

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