Another Decision on Equivalents - Marflow Engineering Ltd v Cassellie Ltd
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| Jane Lambert |
Intellectual Property Enterprise Court (HH Judge Hacon) Marflow Engineering Ltd v Cassellie Ltd [2019] EWHC 410 (IPEC) (26 Feb 2019)
This was another decision by his Honour Judge Hacon on the construction of claims in accordance with art 2 of the Protocol on the Interpretation of art 69 of the European Patent Convention. It follows his judgments in Regen Lab SA v Estar Medical Ltd and others [2019] EWHC 63 (Pat) and Technetix BV and others v Teleste Ltd. [2019] EWHC 126 (IPEC) which I discussed in Patents - Regen Lab SA v Estar Medical Ltd. 24 Jan 2019 and Patents - Technetix BV and others v Teleste Ltd 19 Feb 2019.
The Invention
The patent in suit was for a method of installing a fluid-using appliance such as a shower.
The invention addressed problems arising when an appliance is connected to pipework extending from the wall against which the appliance is installed. The judge observed that the invention can be used with any fluid-using appliance and the fluid could be a gas, but it is easier to discuss the invention by reference to a shower. He explained at paragraph [6] that "the method employs a plate, commonly a metal plate, with apertures which receive through them one or more water pipes extending out of the wall. The plate is fixed to the wall. Locking members secure the pipes to the plate so that there is no movement of the pipes relative to the plate or, therefore, the wall. The ends of the pipes are then joined to the inlet fittings of the shower."
The abstract is as follows:
According to the judge, the claimant's expert had explained that "at the priority date care was taken by the plumber to ensure that the water pipes emerging from the wall were in the correct position to be joined later to the inlets of the shower. Once the pipes were in place the wall was finished, probably by another tradesperson such as a plasterer or a tiler. It was important that during the plastering and tiling the pipes remained in position. There were alternative means to do this such as using plastic clips around the pipes which were screwed to the wall. When the plasterer or tiler had completed their job the plumber returned to attach the pipes to the shower inlets."
Plumbers on the continent tended to use "a mounting plate which includes integral fittings which are joined to pipe parts which terminate in the fittings. Thus an appliance may be installed later by joining the pair of inlet fittings of the appliance to the fittings integrally provided by the mounting plate." However, that had its own disadvantages as the judge noted at para [17]: "....... the integral fittings of the mounting plate each provide a female connecting part for receiving a pipe part end, and a male or female connecting part for joining with an inlet fitting of the appliance. The female connecting part faces inwardly of the wall on which it is desired to install the appliance, and thus the joints between fittings and pipe parts have to be made prior to securing the mounting plate on the wall. After the pipe parts and integral fittings have been joined, and the mounting plate is secured relative to the wall, the joint is inaccessible."
Plumbers on the continent tended to use "a mounting plate which includes integral fittings which are joined to pipe parts which terminate in the fittings. Thus an appliance may be installed later by joining the pair of inlet fittings of the appliance to the fittings integrally provided by the mounting plate." However, that had its own disadvantages as the judge noted at para [17]: "....... the integral fittings of the mounting plate each provide a female connecting part for receiving a pipe part end, and a male or female connecting part for joining with an inlet fitting of the appliance. The female connecting part faces inwardly of the wall on which it is desired to install the appliance, and thus the joints between fittings and pipe parts have to be made prior to securing the mounting plate on the wall. After the pipe parts and integral fittings have been joined, and the mounting plate is secured relative to the wall, the joint is inaccessible."
The solution was to use a mounting plate but to enable connections to be made off the wall. Thus "...... the pipe part or parts is/are prevented from moving axially and thus the making of joints between the pipe part or parts and the inlet fitting or fittings can be made less difficult. Moreover there is no inaccessible joint with the pipe part."
The Patent
A patent was granted for the invention to Marflow Engineering Ltd ("Marflow") under GB 2 368 888 with effect from 8 Nov 2000.
Claim 1 broken into integers claimed:
"a) A method of installing a fluid-using appliance on a wall at a mounting position where a part of a fluid pipe extends outwardly of the wall, the method including the steps of
(b) securing a mounting member relative to the wall at the mounting position,
(c) the mounting member having a generally plate-like configuration body,
(d) with an aperture to receive the part of the fluid pipe extending outwardly of the wall,
(e) and the body of the mounting member providing in or thereon, a locking member, the method including
(f) passing the outwardly extending pipe part through the aperture provided in the mounting member until the pipe part extends outwardly of the mounting member,
(g) locking the pipe part relative to the mounting member such as to prevent axial movement of the outwardly extending pipe part relative to the mounting member, by means of tightening a locking element on the locking member,
(h) and subsequently joining the outwardly extending pipe part to an inlet fitting of the appliance in fluid tight manner."
"a) A method of installing a fluid-using appliance on a wall at a mounting position where a part of a fluid pipe extends outwardly of the wall, the method including the steps of
(b) securing a mounting member relative to the wall at the mounting position,
(c) the mounting member having a generally plate-like configuration body,
(d) with an aperture to receive the part of the fluid pipe extending outwardly of the wall,
(e) and the body of the mounting member providing in or thereon, a locking member, the method including
(f) passing the outwardly extending pipe part through the aperture provided in the mounting member until the pipe part extends outwardly of the mounting member,
(g) locking the pipe part relative to the mounting member such as to prevent axial movement of the outwardly extending pipe part relative to the mounting member, by means of tightening a locking element on the locking member,
(h) and subsequently joining the outwardly extending pipe part to an inlet fitting of the appliance in fluid tight manner."
The Dispute
Marflow complained that Cassellie Ltd ("Cassellie) had infringed its patent by using a plate with two intermediary pipes one end of which was to be inserted into the wall pipes and the other end to be connected outside the wall as shown in the following diagram.
Marflow sued Cassellie for patent infringement and Cassellie counterclaimed for the revocation of the patent on the ground of obviousness.
Judge Hacon considered first whether the patent was valid and secondly whether it had been infringed.
Obviousness
According to s.1 (1) (b) of the Patents Act 1977, one of the conditions for the grant of a patent is that it involves an inventive step. If it does not, it may be revoked under s.72 (1) (a). S.3 (1) provides that an invention shall 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. The judge noted at paragraph [12] of his judgment that it was common ground that the persons skilled in the art, in this case, would be a plumber. The parties also agreed that the Court of Appeal had set out the relevant law in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and others [2012] EWCA Civ 1234, [2013] RPC 27 and Hospira UK Ltd v Genentech Inc. [2017] RPC 13, [2016] EWCA Civ 780 with reference to Pozzoli SpA v BDMO SA [2007] EWHC 1372 (Ch); [2007] FSR 36. Two previous inventions were cited to the judge who considered them both. He concluded at [43] that the invention was not obvious in the light of those citations and that the patent was valid.
Infringement
In accordance with the Supreme Court's judgment in Actavis UK Ltd v Eli Lilly & Co. : [2017] RPC 21, [2017] UKSC 48, [2017] Bus LR 1731 and the Court of Appeal's in Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219 and his own previous decisions mentioned above he construed claim 1 grammatically and concluded at [58] that "on a normal construction of claim 1 the use of the Cassellie product involves a method that lacks integer (e) and therefore also (g)." He then identified the inventive concept as
"The idea of using a plate (mounting member) to install a fluid-using appliance by securing the plate to the wall, receiving the fluid pipes extending out of the wall through apertures in the plate and then using a locking means to lock the pipes to the plate."
He then considered whether the Cassellie variant in use achieves substantially the same result in substantially the same way as the inventive concept and decided that it did. As Cassellie did not submit that either the second or third reformulated Improver questions assisted its case on the scope of claim 1 if the answer to the first question was yes the judge held that the use of the Cassellie product to install a shower was a variant method falling within the scope of claim 1. It followed that the patent had been infringed.
Further Information
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