Patents - Lufthansa Technik AG v Astronics Advanced Electronic Systems

Jane Lambert

Patents Court (Mr Justice Morgan) Lufthansa Technik AG v Astronics Advanced Electronic Systems and another [2020] EWHC 1968 (Pat) (22 July 2020)

These were two actions for the infringement of European Patent (UK) 0 881 145 B1 which were tried together by Mt Justice Morgan.  The claimant was Lufthansa Technik AG in both actions. The defendants in the first were Astronics Advanced Electronic Systems ("Astronics") and Safran Seats GB Ltd ("Safran").  The defendant in the second was Panasonic Avionics Corporation ("Panasonic").  The defendants contended that the patent was invalid for lack of novelty and lack of an inventive step. The actions were heard between 22 and 26 June and on 1 July 2020.  At paragraph [290] of his judgment in Lufthansa Technik AG v Astronics Advanced Electronic Systems and another [2020] EWHC 1968 (Pat) (22 July 2020) Mr Justice Morgan held that the patent was valid and infringed by all three defendants.

The Invention
The judge described the invention as follows at paragraph [2] of his judgment:

"Claim 1 of the Patent described the invention as a voltage supply apparatus for providing a supply voltage for electric devices in an aeroplane cabin. The invention was intended to enable an aeroplane passenger to plug his personal electronic device directly into a socket at his seat. The power supply to the socket was to be high voltage AC and the aim of the invention was to ensure a high level of safety in relation to such a supply to a socket in the seat. Before the invention, some aeroplane seats did have a socket into which a passenger could plug his personal electronic device but the power supply was low voltage DC and it was necessary to use an adapter to plug the device into the socket."

He amplified his description between paragraphs [19] and [44] and discussed the patent claims at paragraph [45].

 Lack of Novelty
S.1 (1) of the Patents Act 1977 provides that a patent may be granted only if certain conditions are satisfied and one of those conditions is that the invention must be new

Before proceeding further, it is important to remember that for the purposes of that Act an invention 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 patent as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent shall be determined accordingly (s.125 (1) of the Patents Act 1977).  S.14 (5) of the Patents Act 1977 requires a claim to:

"(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept."

S.14 (2) (b) stipulates that the claim or claims must appear in the specification. 

S.2 (1) of the Act states that an invention shall be taken to be new if it does not form part of the "state of the art."   S.2 (2) defines "the state of the art" in the case of an invention 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."  S.2 (3) adds:

"The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say -
(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention."

S.2 (4) provides an exception which is not relevant to these proceedings.

In General Tire and Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457, the Court of Appeal said at page 485:

"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim … If the earlier publication … discloses the same device as the device which the patentee by his claim … asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. …

When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new … falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty … The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's claim were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

In Synthon BV v SmithKline Beecham plc (No 2)  [2006] 1 All ER 685, [2005] UKHL 59, [2006] RPC 10, Lord Hoffmann and the other members of the House of Lords described the above passage as authoritative and added at paragraph [22]:

". … the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing: "whether or not a person is working [an] … invention is an objective fact independent of what he knows or thinks about what he is doing": Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76, 90. It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so."

To determine whether a patent lacks novelty it is first necessary to construe the claims that are said to have been anticipated and then consider whether any of prior art relied on by a defendant would have infringed any of those claims.

Claim Construction
The patent has 7 claims which gave rise to the following issues of construction:

"i) in Claim 1, do the words 'the plug in the socket' refer only to a plug which has been fully inserted, or can they refer also to a plug which has been partially inserted, in the socket?
ii) in Claim 1, what is meant by 'remotely' in the phrase 'a supply device being provided remotely from the socket'?
iii) in Claim 1, does 'a voltage supply apparatus' which comprises the following components, a supply device, a socket, a signal line and a supply line, refer only to the position when the components are connected to each other?
iv) in Claim 7, what is meant by 'a central voltage supply'?"

At paragraph [64] of his judgment, Mr Justice Morgan said he would apply art 69 of the European Patent Convention ("EPC") and art 1 of the Protocol as to the interpretation of art 69 of the EPC. He observed at paragraph [64] of his judgment that "[t]he purpose of using the description and the drawings in this way is to arrive at a position which combines a fair protection for the patentee with a reasonable degree of legal certainty for third parties." He referred to paragraph [5] of Lord Justice Jacob's judgment in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8, [2009] EWCA Civ 1062 for the proposition that claims are to be construed purposively.  He noted the Supreme Court's decision in Eli Lilly v Actavis UK Ltd and others [2017] UKSC 48, [2017] Bus LR 1731, [2017] RPC 21 and the Court of Appeal's in Icescape Ltd v Ice-World International BV and others  [2018] EWCA Civ 2219,  [2019] FSR 108 but did not see the need to consider equivalents.

Applying these principles, the judge concluded that claim 1 requires the insertion of a plug in a socket to such an extent that the tips of the pins of the socket make contact with the plug detectors at 45 and 46.  As to the second issue, he said at [94] that the concept was quite clear:

"the supply device must be kept away from the socket and, as a result, the supply device will be kept away from the passenger who is intended to have access to the socket. The purpose of keeping the supply device away from the passenger is so that there will not be a risk of something happening to the supply device which would cause a problem, such as a short circuit or an electric shock being administered to the passenger."

With regard to the third issue, he said at [96]:

"Claim 1 refers to 'a supply device being provided remotely from the socket and being connected to the socket via a signal line and via a supply line for the supply voltage' (italics added). The word 'connected' should be given its ordinary meaning which requires the components to be connected to form the apparatus. The word 'connected' in that phrase is to be contrasted with the word 'connectable' which is used, appropriately, elsewhere in claim 1 to describe the possibility of the passenger's electric device being connected to the socket by means of a plug."

The judge construed the reference to "a central voltage source (30)" in claim 7 as " a reference to a voltage source which received the on-board voltage of 115V, 400Hz and converted it to a mains voltage of 110V, 40Hz which it supplied to the supply devices referred to in the patent."

The Defendants relied on 2 US patents, namely "Neuenschwander" for a "Safety Receptacle" which he discussed between paragraphs [112] and [162] and "Sellati" for a "Safety Power Receptacle with Hot Wire Switch-through" between paragraphs [163] and [182].   His lordship held at [186] that claim 1 was novel over Neuenschwander in relation to two features in particular, namely, the requirement of full insertion of the plug and the remoteness of the power supply from the socket. Neuenschwander did not have either of those features.   In view of the judge's finding on claim 1, it followed that claim 2 was also valid.  The learned judge agreed with the claimant's contention that the patent was novel over Sellati in that it required remoteness of the power supply from the socket.  it was also agreed that Sellati did not disclose the timing device in claim 2 of the patent or the microswitches in claim 3.

Lack of Inventive Step
Another of the conditions for the grant of a patent required by s.1 (1) of the Patents Act 1977 is that the invention must 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 s 2 (2) above and disregarding s.2 (3).  This section introduces the "person skilled in the art" who is also referred to as "the skilled addressee" or "notional skilled person".

Mr Justice Morgan referred to the Supreme Court's judgment in Actavis Group PTC EHF and others v ICOS Corporation and another [2019] Bus LR 1318, [2019] UKSC 15 which approves the Court of Appeal's decisions in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd. [1984] 1 WLUK 1218 [1985] R.P.C. 59 and Pozzoli Spa v BDMO SA and another [2007] FSR 37, [2007] Bus LR D117, [2007] BusLR D117, [2007] EWCA Civ 588 requiring the court to identify:

"i) the notional skilled person;
ii) the relevant common general knowledge of that person;
iii) the inventive concept of the claim or, perhaps more directly, the true construction of the claim;
iv) the differences between the matter cited as part of the state of the art and the inventive concept of the claim."

His lordship added:

"[194] Having identified the matters referred to in the last paragraph, the ultimate question is: do the differences which have been identified constitute steps which would have been obvious to the skilled person or do they require any degree of invention? When answering that question, it is of paramount importance that one leaves out of consideration the existence of the patent and one does not use hindsight; this is easier said than done.
[195] The skilled person is deemed to have read and assimilated the particular piece of prior art which is said to be relevant. Not all prior art will be equally interesting to the skilled person. Before he reads the piece of prior art, the skilled person cannot tell whether it will be of interest to him. He has to read it in order to find out if it helps him and, having read it, he forms his own view as to whether it helps and, if so, in what way.
[196] The issue is whether the matter which is said to involve an inventive concept was technically or practically obvious not whether it was obvious that it could be exploited commercially.
[197] The ultimate question as to obviousness must be considered on the particular facts of the case. It has been described as a jury question."

The Person Skilled in the Art
At paragraph [14] the judge adopted the description offered by the defendants' expert which he mentioned at paragraph [12]:

"......... an electrical engineer with an interest in power supply systems on an aeroplane, including those in the cabin. He would have a degree or equivalent qualification in electrical engineering and three to five years' experience working in the aeroplane business, either for an aircraft manufacturer or component manufacturer. He would be assisted by other individuals, for example, a representative from the aeroplane manufacturer (if he was working for a component manufacturer) or a representative from a component manufacturer (if he was working for an aeroplane manufacturer). If the skilled person were in the United States, he would seek the assistance of a FAA DER who would be responsible for ensuring compliance with the relevant FAA regulations and guidelines. If the skilled person were in the United Kingdom, he would make direct contact with the Civil Aviation Authority ("CAA") or the Joint Aviation Authority ("JAA")."

Common General Knowledge
The common general knowledge of persons skilled in the art is limited to the matter comprising s.2 (2) but not including s.2 (3) but it is never expected to extend to the whole of that matter.  His lordship considered the nature and extent of the skilled addressee's knowledge and his or her mindset between paragraphs [199] and [244].

The Inventive Concept
The judge said at [245] that the inventive concept consisted of the features that had been discussed in relation to novelty, namely the requirement of full insertion of the plug and the remoteness of the power supply from the socket in claims 1 and 2, the timing device in claim 2 and switches in claim 3.

Mr Justice Morgan considered whether the above features were obvious over Sellati and Neuenschwander.  He considered whether claim 1 was obvious over Sellati between paragraphs [246] and [260] and whether claim 1 was obvious over Neuenschwander between paragraphs [261] and [264].  He then considered whether claim 2 was obvious over Sellati between paragraphs [265] and [271] and whether that claim was obvious over Neuenschwander at [272].  He found that neither claim was obvious.

The defendants were alleged to have infringed the patent under s.60 (2) of the Patents Act 1977.  That subsection provides:

"Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom."

The "means, relating to an essential element of the invention, for putting the invention into effect" was a product called "the EmPower system".  It consisted of an in-seat power supply system, a socket and power and signal cables and optionally a master control unit and in-use indicators.

Astronics manufactured components for that system in the USA and sold them to airlines and seat and inflight entertainment manufacturers.   It did not dispute that it had supplied components in the UK the knowledge that they would be used to make the "EmPower System".  Safran assembled seats that incorporate the EmPower system.  Panasonic supplied components for inflight entertainment systems which can be and are incorporated into the EmPower system.   It argued that it was not liable under s.60 (1) (a) because it did not make or dispose of a product that infringed the patent and it did not have the liability required for s.60 (2).   However, Panasonic was aware of the use to which its components would be put and that was enough for liability as a joint tortfeasor in the light of the Supreme Court's decision in Fish & Fish Ltd v Sea Shepherd UK  [2015] 1 Lloyd's Rep 593, [2015] 2 All ER (Comm) 867, [2015] UKSC 10, [2015] 4 All ER 247, [2015] 1 AC 1229, [2015] WLR(D) 102, [2015] AC 1229, [2015] 2 WLR 694.

Further Information
Anyone wishing to discuss this article or patents generally may call my clerk on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, VoIP or email.


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