Patents: A Ward Attachments Ltd v Fabcon Engineering Ltd
Intellectual Property Enterprise Court (HH Judge Melissa Clarke) A-Ward Attachments Ltd v Fabcon Engineering Ltd [2021] EWHC 2145 (IPEC) (29 July 2021)
This was an action for the infringement of European patent (UK) number EP 2 021 268 B1 ("268") for freight container tilting apparatus and European patent (UK) number EP 2 128 053 B1 ("053") for container tilting apparatus and a counterclaim for the revocation of both patents on grounds of obviousness and insufficiency and the revocation of 053 on the additional ground of added matter. The defendant also contended that the claimant was estopped from obtaining relief for any infringement on the basis of acquiescence. The action and counterclaim came on for trial before Her Honour Judge Melissa Clarke on 29 and 30 April 2021. By her judgment of 29 July 2921, Her Honour held that 268 was valid and infringed, 053 was invalid but would have been infringed had it been valid and that the claimant was not estopped from obtaining relief for infringement on the basis of acquiescence.
The Parties
The claimant was a New Zealand company known as "A-Ward". Its website states:
"Since founding A-Ward in 1999, Simon Ward and his team have never let up in their pursuit to invent better, faster, safer ways to manage bulk material handling."
The defendant ("Fabcon") is a Northern Ireland company that makes and markets light and heavy engineering equipment, including container tilting machines that were alleged to infringe A-Ward's patents.
The Patents
Patent number 053 is a divisional of 268. Both patents share a priority date of 25 May 2007. In her judgment, Judge Clarke refers to 268 as "the parent" and 053 as "the divisional".
The Issues
The issues before Her Honour were:
"infringement
i) Whether D’s apparatus infringes Claim 1 of the Parent Patent by equivalence;
ii) Whether D’s apparatus infringes Claim 1 of the Divisional;
Invalidity
iii) Whether the Patents are invalid for obviousness over two pieces of prior art, being BE 1014698A6 (“Van Eeckhoutte”) and DE 87 04 299U1 (“UKH”)
iv) Whether the Patents are invalid for insufficiency;
v) Whether the Divisional is invalid for added matter over the Parent Patent;
Estoppel
vi) Whether the Claimant is estopped from obtaining relief for any infringement on the basis of acquiescence."
The Skilled Addressee
S,14 (3) of the Patents Act 1977 requires a patent specification of to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. At para [51] of her judgment, Judge Clarke held that "the person skilled in the art," in this case, would be
"an engineer either: (i) in the field of equipment used for handling bulk materials, who has some experience in the field of container handling or who would consult someone with that experience; or (ii) in the field of container handling, who either has some experience in the field of handling bulk materials or who would consult someone with that experience."
S.125 (1) of the Act provides:
"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
In order to determine whether a patent has been infringed the court must construe the claims that are alleged to have been infringed. S.125 (3) further provides:
"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."
The Protocol now consists of two articles. Art 1 provides:
"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."
Art 2 was added by the Act revising the EPC of 29 Nov 2000:
In Eli Lilly v Actavis UK Ltd. and others [2017] UKSC 48, [2017] Bus LR 1731, [2017] RPC 21, Lord Kitchin said at para [54] of his judgment:
"a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention."
"a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention."
I discussed that case in The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important on 13 July 2017.
A-Ward alleged that the manufacture, marketing sale of Fabcon's equipment infringed claim t of 268 because that equipment varied from the invention in a way or ways that are immaterial. The claimant company also alleged that such manufacturing, marketing and sale infringed claim 1 of 063 on a normal construction.
Common General Knowledge
Courts attempt to construe patent claims in the way in which they would be understood by the "person skilled in the art" having regard to such persons' common general knowledge when the patent application was filed. The learned judge summarized such common general knowledge at para [54] of her judgment:
"i) Bulk materials were generally transported in specialised bulk carriers and not ISO containers;
ii) The bulk material would be loaded and unloaded either discontinuously (using a crane) or continuously (using belt conveyors or the like);
iii) Standardised containers were well known and are commonly designed, built and tested in compliance with ISO (International Organisation for Standardisation) standards, and formerly in the UK to BS 3951;
iv) The skilled addressee would be familiar with relevant key standards and codes of practice, including ISO 830:1999 (EN) ‘Freight Containers Vocabulary’ (“ISO Vocab Document”) and those documents listed at 3.1.3 and 3.14 of Mr Lister’s report;
v) He would also know about the relevant proprietary container components available on the market, including ISO corner castings, container walls and doors, container floors and roofs;
vi) Such containers were rectangular in shape. Viewing a container from the top, it is convenient to refer to the longer dimension as the ‘sides’ and the shorter dimension as the ‘ends’;
vii) In the container handling world, the ‘rear’ end of the container is normally taken to mean the end with doors, and the ‘front’ is normally taken to mean the closed or blind end of the container opposite the door end. Although it is acknowledged that the Patents are drafted with the reverse terminology which the skilled addressee might find confusing (i.e., describing the container end with doors as the “front”), they would be able to understand what was meant by it;
viii) Containers had eight fittings or castings located at each corner which provide means of supporting, stacking, handling and securing them. These corner castings were the primary means by which they were secured;
ix) These corner castings were themselves standardised, each having three apertures, one in the horizontal plane (top or bottom) and two in the vertical plane (side and end);
x) A ‘twistlock’ was a common term for a standard locating and locking mechanism with a rotating head, used in conjunction with standard matching container corner castings. There were retractable and non-retractable twistlocks. There were also marine twistlocks which are used to secure a container to a deck of a ship, which are not relevant for the purposes of these proceedings;
xi) The most common means of securing a container to either a crane or a trailer was either from the top or from the bottom respectively, by using a ‘twistlock’ in the horizontal plane aperture. These apertures in the horizontal plane were effectively the same and different from apertures on the container sides and ends, i.e. in the vertical planes, which could not be used with standard (i.e. non-marine) twistlocks;
xii) The skilled addressee would have detailed knowledge of a range of other different types of locking mechanism in common usage to engage containers."
"i) Bulk materials were generally transported in specialised bulk carriers and not ISO containers;
ii) The bulk material would be loaded and unloaded either discontinuously (using a crane) or continuously (using belt conveyors or the like);
iii) Standardised containers were well known and are commonly designed, built and tested in compliance with ISO (International Organisation for Standardisation) standards, and formerly in the UK to BS 3951;
iv) The skilled addressee would be familiar with relevant key standards and codes of practice, including ISO 830:1999 (EN) ‘Freight Containers Vocabulary’ (“ISO Vocab Document”) and those documents listed at 3.1.3 and 3.14 of Mr Lister’s report;
v) He would also know about the relevant proprietary container components available on the market, including ISO corner castings, container walls and doors, container floors and roofs;
vi) Such containers were rectangular in shape. Viewing a container from the top, it is convenient to refer to the longer dimension as the ‘sides’ and the shorter dimension as the ‘ends’;
vii) In the container handling world, the ‘rear’ end of the container is normally taken to mean the end with doors, and the ‘front’ is normally taken to mean the closed or blind end of the container opposite the door end. Although it is acknowledged that the Patents are drafted with the reverse terminology which the skilled addressee might find confusing (i.e., describing the container end with doors as the “front”), they would be able to understand what was meant by it;
viii) Containers had eight fittings or castings located at each corner which provide means of supporting, stacking, handling and securing them. These corner castings were the primary means by which they were secured;
ix) These corner castings were themselves standardised, each having three apertures, one in the horizontal plane (top or bottom) and two in the vertical plane (side and end);
x) A ‘twistlock’ was a common term for a standard locating and locking mechanism with a rotating head, used in conjunction with standard matching container corner castings. There were retractable and non-retractable twistlocks. There were also marine twistlocks which are used to secure a container to a deck of a ship, which are not relevant for the purposes of these proceedings;
xi) The most common means of securing a container to either a crane or a trailer was either from the top or from the bottom respectively, by using a ‘twistlock’ in the horizontal plane aperture. These apertures in the horizontal plane were effectively the same and different from apertures on the container sides and ends, i.e. in the vertical planes, which could not be used with standard (i.e. non-marine) twistlocks;
xii) The skilled addressee would have detailed knowledge of a range of other different types of locking mechanism in common usage to engage containers."
Claim 1 of 268
Judge Melissa Clarke set out the claim at para [44]:
“A freight container tilting apparatus (1) for tilting a freight container between a horizontal position and a tilted position for loading or unloading the container, the apparatus comprising:
a base section (3),
first and second tilt arms (2), each of the tilt arms being pivotably connected to the base section, and each of the tilt arms being configured or configurable to extend along substantially the whole length of the container to be tilted, first and second ends of each of the first and second tilt arms corresponding to opposite ends of the container,
a container lock (5a, 5b; 15a, 15b, 15c) at the first and second ends of each of the first and second tilt arms, each container lock being configured to engage an end of the tilt arm with a side wall of the container, and
at least one tilt arm drive (9) configured to pivot each tilt arm relative to the base section,
wherein each tilt arm is directly pivotably connected to the base section at a pivot point (4) between the container locks at the first and second ends of the tilt arm and offset from the centre of the tilt arm, and the position of the pivot point relative to the base is fixed while the container is being tilted; and the height of the pivot point above a support surface used to support the base section is greater than the distance between the pivot point and the end of the tilt arm nearest the pivot point”.
“A freight container tilting apparatus (1) for tilting a freight container between a horizontal position and a tilted position for loading or unloading the container, the apparatus comprising:
a base section (3),
first and second tilt arms (2), each of the tilt arms being pivotably connected to the base section, and each of the tilt arms being configured or configurable to extend along substantially the whole length of the container to be tilted, first and second ends of each of the first and second tilt arms corresponding to opposite ends of the container,
a container lock (5a, 5b; 15a, 15b, 15c) at the first and second ends of each of the first and second tilt arms, each container lock being configured to engage an end of the tilt arm with a side wall of the container, and
at least one tilt arm drive (9) configured to pivot each tilt arm relative to the base section,
wherein each tilt arm is directly pivotably connected to the base section at a pivot point (4) between the container locks at the first and second ends of the tilt arm and offset from the centre of the tilt arm, and the position of the pivot point relative to the base is fixed while the container is being tilted; and the height of the pivot point above a support surface used to support the base section is greater than the distance between the pivot point and the end of the tilt arm nearest the pivot point”.
In accordance with s.125 (1), the judge considered the description and drawings between para [27] and para [43] of her judgment.
Whether D’s Apparatus infringes Claim 1 of the Parent Patent by Equivalence;
At para [65], the judge directed herself that the Supreme Court had formulated the following questions when considering whether an allegedly infringing product varies from the invention in a way or ways which is or are immaterial:
"i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?"
"i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?"
She added at [66]:
"To establish infringement by equivalence, it is for the patentee to establish that the answer to the first two Actavis questions is ‘yes’ and the answer to the third question is ‘no’. However in order to answer the first Actavis question, it is necessary to identify the inventive concept of the Parent Patent."She considered those questions between para [100] and para [105] of her judgment and concluded that Fabcon's equipment did infringe claim 1 of 268.
Claim 1 of 053
The judge considered the integers of claim 1 of 053 at para [45] of her judgment:
"A freight container tilting apparatus for tilting a freight container between a horizontal position and a tilted position for loading or unloading the container, the apparatus comprising:
a base section (3),
first and second tilt arms (2), each of the tilt arms being pivotably connected to the base section, and each of the tilt arms being configured or configurable to extend along substantially the whole length of the container to be tilted, respective ends of the first and second tilt arms corresponding to opposite ends of the container;
a front lock at the first [e]nd of each of the first and second tilt arms, a rear lock at the second [e]nd of each of the first [a]nd second tilt arms, wherein the front locks are configured to engage the first end of the first and second tilt arms with the front wall of the container, and the rear locks are configured to engage the second end of the first and second tilt arms with the rear wall of the container;
a tilt arm drive (9) configured to pivot each tilt arm relative to the base section, wherein:
each tilt arm is directly pivotably connected to the base section at a pivot point between the front lock and the rear lock at the respective ends of the tilt arm and offset from the centre of the tilt arm,
the position of the pivot point relative to the base is fixed while the container is being tilted; and
the height of the pivot point above a support surface used to support the base section is greater than the distance between the pivot point and the end of the tilt arm nearest the pivot point."
"A freight container tilting apparatus for tilting a freight container between a horizontal position and a tilted position for loading or unloading the container, the apparatus comprising:
a base section (3),
first and second tilt arms (2), each of the tilt arms being pivotably connected to the base section, and each of the tilt arms being configured or configurable to extend along substantially the whole length of the container to be tilted, respective ends of the first and second tilt arms corresponding to opposite ends of the container;
a front lock at the first [e]nd of each of the first and second tilt arms, a rear lock at the second [e]nd of each of the first [a]nd second tilt arms, wherein the front locks are configured to engage the first end of the first and second tilt arms with the front wall of the container, and the rear locks are configured to engage the second end of the first and second tilt arms with the rear wall of the container;
a tilt arm drive (9) configured to pivot each tilt arm relative to the base section, wherein:
each tilt arm is directly pivotably connected to the base section at a pivot point between the front lock and the rear lock at the respective ends of the tilt arm and offset from the centre of the tilt arm,
the position of the pivot point relative to the base is fixed while the container is being tilted; and
the height of the pivot point above a support surface used to support the base section is greater than the distance between the pivot point and the end of the tilt arm nearest the pivot point."
Whether D’s Apparatus infringes Claim 1 of the Divisional
At [116], Her Honour agreed with the claimant's expert that the skilled person would understand all the requirements of Claim 1 of 053 to be present in the defendant’s apparatus, and accordingly found that the defendant’s apparatus infringed that claim.
Whether the Patents are invalid for Obviousness over Van Eeckhoutte and UKH
One of the grounds on which a patent may be revoked under s.72 (1) of the Patents Act 1977 is that the invention is not patentable. S.1 (1) provides that a patent may be granted for an invention if the following conditions are satisfied:
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4Abelow; and references in this Act to a patentable invention shall be construed accordingly."
Fabcon argued that the inventions were not patentable because they did not involve an inventive step.
S.3 states 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 by virtue only of section 2 (2) above. S.2 (2) defines the "state of the art" as "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
In Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15, [2019] Bus LR 1318, the Supreme Court approved the following approach to determining whether an invention involved an inventive step at para [60] of Lord Hodge's judgment:
“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”
In Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15, [2019] Bus LR 1318, the Supreme Court approved the following approach to determining whether an invention involved an inventive step at para [60] of Lord Hodge's judgment:
“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”
The person skilled in the art and his or her common general knowledge have already been discussed. The learned judge identified the inventive concept of the patents in suit at para [85] of her judgment:
"In my judgment the inventive concept, which solves the problem of how to tilt containers to load and unload them with bulk materials simply and easily without having to handle them with a forklift truck or crane, is a container tilting apparatus with at least two pivotably connected tilt arms which allows a container to be: (i) delivered directly to it by a trailer or like delivery mechanism; (ii) secured to the apparatus in the vertical plane; (iii) released from the delivery mechanism (which can then be removed) by using small amounts of rotation around a single offset pivot; and (iv) tilted from horizontal up to 90 degrees to enable gravity-driven loading or unloading; and this process can be reversed once the tilting operation is completed."
"In my judgment the inventive concept, which solves the problem of how to tilt containers to load and unload them with bulk materials simply and easily without having to handle them with a forklift truck or crane, is a container tilting apparatus with at least two pivotably connected tilt arms which allows a container to be: (i) delivered directly to it by a trailer or like delivery mechanism; (ii) secured to the apparatus in the vertical plane; (iii) released from the delivery mechanism (which can then be removed) by using small amounts of rotation around a single offset pivot; and (iv) tilted from horizontal up to 90 degrees to enable gravity-driven loading or unloading; and this process can be reversed once the tilting operation is completed."
The judge said at para [117] of her judgment that the question of obviousness "was barely addressed in the Defendant’s skeleton, not addressed in the Defendant’s oral submissions at trial, and appears to all intents and purposes to be abandoned."
Whether the Divisional is invalid for Added Matter over the Parent Patent
Another ground for the revocation of a patent under s.72 (1) is that
"the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8 (3), 12 or 37 (4) above or as mentioned in section 15( 9) above, in the earlier application, as filed."
"the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8 (3), 12 or 37 (4) above or as mentioned in section 15( 9) above, in the earlier application, as filed."
Judge Melissa Clarke stated the relevant law at para [119]:
"i) EPC Art. 66 provides:
“A European patent application which has been accorded a date of filing shall, in the designated Contracting States, be equivalent to a regular national filing, where appropriate with the priority claimed for the European patent application.”
ii) Regarding divisional applications, EPC Art. 76(1) provides:
“A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed ...”
iii) EPC Art 100 makes clear that divisional patents are liable to be revoked if they contain subject-matter extending beyond the content of the parent application as filed:
“Opposition may only be filed on the grounds that: ...
(c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application ... beyond the content of the earlier application as filed”
iv) A corresponding provision was contained in Art. 57 of the Community Patent Convention (1976):
“An application for revocation of a Community patent may be filed only on the grounds that: ...
(c) the subject-matter of the patent extends beyond the content of the European patent application as filed, or, if the patent was granted on a European divisional application ... beyond the content of the earlier application as filed”
v) s.77(1) of the Patents Act provides:
“Subject to the provisions of this Act, a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act granted in pursuance of an application made under this Act .... and - ...
(b) references in Parts I and III of this Act to a patent shall be construed accordingly ...”
vi) s.15(9) of the Patents Act (in Part I) makes provision for divisional applications for UK patents.
vii) s.72(1) of the Patents Act (in Part I) provides:
“Subject to the following provisions of this Act, the court ... may ... by order revoke a patent for an invention on the application of any person ... on (but only on) any of the following grounds, that is to say ...
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed ... as mentioned in section 15(9) above, in the earlier application, as filed ...”
viii) s. 76(1) of the Patents Act (in Part I) provides:
“An application for a patent which—
(a) is made in respect of matter disclosed in an earlier application ... and
(b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application, as filed, .... may be filed ... as mentioned in section 15(9) above, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter”
ix) s.130(7) of the Patents Act states
“it is hereby declared that the following provisions of this Act, that is to say, sections ... 72(1) ... , are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Cooperation Treaty have in the territories to which those Conventions apply”
She directed herself at [121]:
"The test for added matter falls to be determined by reference to a comparison of the application for the patent as filed and the granted patent. As Aldous LJ said in Bonzel v Intervention (No 3) [1991] RPC 553 at [574] (which was described as helpful and having stood the test of time in Vector Corp v Glatt)
'The task of the Court is threefold:
i) To ascertain through the eyes of the skilled addressee what is disclosed, explicitly and impliedly in the application.
ii) To do the same in respect of the patent as granted.
iii) To compare the two disclosures and decide whether any subject-matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.'”
"The test for added matter falls to be determined by reference to a comparison of the application for the patent as filed and the granted patent. As Aldous LJ said in Bonzel v Intervention (No 3) [1991] RPC 553 at [574] (which was described as helpful and having stood the test of time in Vector Corp v Glatt)
'The task of the Court is threefold:
i) To ascertain through the eyes of the skilled addressee what is disclosed, explicitly and impliedly in the application.
ii) To do the same in respect of the patent as granted.
iii) To compare the two disclosures and decide whether any subject-matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.'”
Fabcon took the point that
"references to side walls of the container in the Parent Patent application have been substituted by references to the front and rear walls of the container in paragraphs 22, 24, 41, 42, 43 and 44 of the description and claims 1 and 12 (as well as all the other dependent claims by reference) of the Divisional as granted."
The judge said at [127]:
"The question for me, then, when comparing those two disclosures, is whether the Parent Patent as filed discloses what the Divisional teaches, namely that the container can be secured to the tilt arms using the end apertures. If it does, it can now be claimed. If it does not, it is added matter and the Divisional is bad and should be revoked."
"The question for me, then, when comparing those two disclosures, is whether the Parent Patent as filed discloses what the Divisional teaches, namely that the container can be secured to the tilt arms using the end apertures. If it does, it can now be claimed. If it does not, it is added matter and the Divisional is bad and should be revoked."
Whether the Patents are invalid for Insufficiency
Yet another ground for revocation under s.72 (1) is that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. Fabcon had pleaded that
- “it is not possible for the skilled person to know what is meant by ‘freight’ or by ‘lock’” in the Patents and
- “The specification of the Divisional… does not disclose… how the locks on the tilt arms are configured to engage the tilt arms with the front and rear walls of the container as claimed in its Claims 1 and 12”.
Neither point was pressed at trial and the judge concluded that they had been abandoned.
Whether the Claimant is estopped from obtaining Relief for any Infringement on the Basis of Acquiescence
The judge set out facts that gave rise to that defence between paras [7] and [9] of her judgment:
"[7] On 13 May 2011 the Claimant sent a ‘cease and desist’ letter to the Defendant alleging infringement of several claims of the Parent Patent (“the C&D Letter”). This was sent after the Claimant had applied for the Divisional, but before it was granted. It did not notify the Defendant that it had applied for the Divisional.
[8] The Defendant replied on 20 May 2011 stating that it did not agree that the Defendant’s apparatus fell within the scope of the Parent Patent, giving reasons and offering to arrange for an inspection by the Claimant (the “20 May 2011 Letter”). The letter concluded that if the Defendant had not heard from the Claimant within 14 days, it would consider the matter closed. It is not disputed that the Claimant did not reply to the 20 May 2011 Letter.
[9] It is the Defendant’s case that since no response was received from the Claimant, the Defendant believed that the Claimant had accepted that the Defendant’s apparatus was non-infringing. The Defendant continued to develop its business selling, inter alia, the Defendant’s apparatus."
"[7] On 13 May 2011 the Claimant sent a ‘cease and desist’ letter to the Defendant alleging infringement of several claims of the Parent Patent (“the C&D Letter”). This was sent after the Claimant had applied for the Divisional, but before it was granted. It did not notify the Defendant that it had applied for the Divisional.
[8] The Defendant replied on 20 May 2011 stating that it did not agree that the Defendant’s apparatus fell within the scope of the Parent Patent, giving reasons and offering to arrange for an inspection by the Claimant (the “20 May 2011 Letter”). The letter concluded that if the Defendant had not heard from the Claimant within 14 days, it would consider the matter closed. It is not disputed that the Claimant did not reply to the 20 May 2011 Letter.
[9] It is the Defendant’s case that since no response was received from the Claimant, the Defendant believed that the Claimant had accepted that the Defendant’s apparatus was non-infringing. The Defendant continued to develop its business selling, inter alia, the Defendant’s apparatus."
She discussed Fabcon's pleaded case at [147]:
"i) That the Claimant, by not replying to the Defendant’s 20 May 2011 Letter responding to the letter of claim, allowed and encouraged the Defendant mistakenly to believe that the Claimant accepted that the Defendant’s apparatus did not infringe [presumably, although it is not pleaded, the Parent Patent, as the Divisional did not at this time exist];
ii) Relying on this, the Defendant invested in building up its business in sales of the Defendant’s apparatus [for a further almost 8 years, and for 6 years after the grant of the Divisional];
iii) Accordingly, it would be unconscionable for the Claimant to deny that the manufacture and sale of the Defendant’s apparatus is lawful and does not infringe the Patents; and
iv) In these circumstances the Claimant is estopped from asserting that the Defendant’s apparatus does infringe the Patents."
"i) That the Claimant, by not replying to the Defendant’s 20 May 2011 Letter responding to the letter of claim, allowed and encouraged the Defendant mistakenly to believe that the Claimant accepted that the Defendant’s apparatus did not infringe [presumably, although it is not pleaded, the Parent Patent, as the Divisional did not at this time exist];
ii) Relying on this, the Defendant invested in building up its business in sales of the Defendant’s apparatus [for a further almost 8 years, and for 6 years after the grant of the Divisional];
iii) Accordingly, it would be unconscionable for the Claimant to deny that the manufacture and sale of the Defendant’s apparatus is lawful and does not infringe the Patents; and
iv) In these circumstances the Claimant is estopped from asserting that the Defendant’s apparatus does infringe the Patents."
Her Honour rejected that contention on the ground that there was no evidence that A Ward knew of Fabcon's mistaken belief that A Ward had accepted its argument that there had been no infringement and that the matter had been closed.
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Further Information
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