Patents - J C Bamford Excavators Ltd v Manitou UK Ltd
 |
| Author Abhishekptlbbk Licence CC BY-SA 4.0 Source Wikimedia Commons |
Patents Court (HH Judge Hacon) JC Bamford Excavators Ltd v Manitou UK Ltd and another [2022] EWHC 1724 (Pat) (4 July 2022)
This was a claim by J C Bamford Excavators ("JCB") against Manitou UK Ltd and its French holding company Manitou BF SA ("Manitou") for patent infringement and a counterclaim by Manitou for revocation of the patents in suit. Those patents were EP 1 532 065 B2 for a Control system for a load handling apparatus (“EP 065”), EP 2 263 965 B9 for a Method of Operating a Working Machine (“EP 965”), EP 2 616 382 B3 for a Controller for use with a machine, machine including said controller, and method for controlling a machine (“EP 382”) and UK Patent No. GB 2 390 595 B for a Control system for a machine (“GB 595”). The action and counterclaim came on for trial before His Honour Judge Hacon between 15 and 18 and 24 and 25 Nov 2021. At para [174] of his judgment, which he handed down on 4 July 2021, His Honour held that EP 382 was valid and infringed. He also held that the other patents were invalid for obviousness but would have been infringed had they been valid (see JC Bamford Excavators Ltd v Manitou UK Ltd and another [2022] EWHC 1724 (Pat) (4 July 2022).
The Issues
JCB alleged that Manitou had infringed its patents by marketing certain types of telehandler. His Honour described telehandlers as follows at para [2] of his judgment:
"Telehandlers have a four-wheel chassis, a cab for the operator and a longitudinal arm which can be raised or lowered and extended beyond the front of the chassis. The arm is used to lift and move loads. Telehandlers have become versatile workhorses in the agricultural and construction industries. In the construction industry they are typically used to move palletised loads, loose material such as soil or aggregate, or to carry hanging loads on a hook. They have a longer reach than a forklift truck and can be used in terrain that would be inaccessible to a conventional forklift truck. They have largely superseded tractor mounted hydraulic loaders for agricultural use such as stacking bales and the loading and shovelling of grain, silage and manure, being more flexible and having greater lift capacity and reach."
"Telehandlers have a four-wheel chassis, a cab for the operator and a longitudinal arm which can be raised or lowered and extended beyond the front of the chassis. The arm is used to lift and move loads. Telehandlers have become versatile workhorses in the agricultural and construction industries. In the construction industry they are typically used to move palletised loads, loose material such as soil or aggregate, or to carry hanging loads on a hook. They have a longer reach than a forklift truck and can be used in terrain that would be inaccessible to a conventional forklift truck. They have largely superseded tractor mounted hydraulic loaders for agricultural use such as stacking bales and the loading and shovelling of grain, silage and manure, being more flexible and having greater lift capacity and reach."
The following is a photo of a telehandler sold by Komatsu Ltd., a competitor to both parties in the dispute:
Invalidity
The learned judge considered the validity of the patents first.
Obviousness
S.72 (1) (a) of the Patents Act 1977 enables the Patents Court to revoke a patent if the invention for which the patent was granted is not a patentable invention. S.1 (1) (a) of the Act sets out a number of conditions for the grant of a patent one of which is that it involves an inventive step. S.3 provides:
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."
Lord Justice Jacob discussed those provisions between para [14] and para [23] of his judgment in Pozzoli SpA v BDMO SA [2007] FSR 37, [2007] BusLR D117, [2007] Bus LR D117, [2007] EWCA Civ 588:
“[14] The place of ‘inventive concept’ in relation to obviousness also calls for some discussion. It will be recalled that it forms the first step of the well-known Windsurfing test of Oliver L.J. [1985] R.P.C. 593 at 73. The test provides a structured approach to the problem and is often useful. I set it out adding my own numbering:
(1) The first step is to identify the inventive concept embodied in the patent in suit.
(2) Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question.
(3) The third step is to identify what, if any, differences exist between the matter cited as being ‘known or used’ and the alleged invention.
(4) Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
[15] I think the test requires some restatement and elaboration. First one must actually conduct the first two operations in the opposite order - mantle first, then concept. For it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept.
[16] Next, that first step actually involves two steps, identification of the attributes of the notional ‘person skilled in the art’ (the statutory term) and second identification of the common general knowledge ("CGK") of such a person.
[17] What now becomes stage (2), identifying the inventive concept, also needs some elaboration. As I pointed out in Unilever Plc v Chefaro Proprietaries Ltd [1994] R.P.C. 567 at 580.
‘It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage - the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise.’
[18] So what one is seeking to do is to strip out unnecessary verbiage, to do what Mummery L.J. described as make a précis.
[19] In some cases the parties cannot agree on what the concept is. If one is not careful such a disagreement can develop into an unnecessary satellite debate. In the end what matters is/are the difference(s) between what is claimed and the prior art. It is those differences which form the ‘step’ to be considered at stage (4). So if a disagreement about the inventive concept of a claim starts getting too involved, the sensible way to proceed is to forget it and simply to work on the features of the claim.
[20] In other cases, however, one need not get into finer points of construction - even without them the concept is fairly apparent - in Windsurfing, for instance, it was the ‘free sail’ concept. In yet other cases it is not even practical to try to identify a concept - a chemical class claim would often be a good example of this.
[21] There is one other point to note. Identification of the concept is not the place where one takes into account the prior art. You are not at this point asking what was new. Of course the claim may identify that which was old (often by a pre-characterising clause) and what the patentee thinks is new (if there is characterising clause) but that does not matter at this point.
[22] The third step also requires a little reformulation - Windsurfing was a case under the 1949 Act where the statutory words for the prior art were ‘known or used. The European Patent Convention uses the words ‘state of the art’.
[23] The fourth step needs no restatement, though it is worth making explicit that by invention is meant what is claimed. In the result I would restate the Windsurfing questions thus:
(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 Patents in Suit
Judge Hacon summarized the patents in suit between para [7] and para [11].
Person Skilled in the Art
The judge noted at para [13]:
"The parties were agreed that the addressees of all the patents in suit were designers of hydraulic control systems for telehandlers, and that customarily such persons operated within a team led by a lead engineer. It was common ground that the lead engineer can be taken as a proxy for the team as a whole, so I will refer to the skilled person, singular. He or she would have experience extending beyond the vehicles’ hydraulic systems to include their control systems generally."
Common General Knowledge
He identified the common general knowledge between para [14] and para [18].
EP 065
- Inventive Concept
The judge quoted claim 1 of EP065 in full at para [27]. He noted at para [29] that the parties' experts appeared to have agreed that “the key point of the patent is that it is automating the skilled operator’s soft-stop ability.” He also mentioned claims 6, 7 and 8 which were said to have independent validity.
The judge quoted claim 1 of EP065 in full at para [27]. He noted at para [29] that the parties' experts appeared to have agreed that “the key point of the patent is that it is automating the skilled operator’s soft-stop ability.” He also mentioned claims 6, 7 and 8 which were said to have independent validity.
- Prior Art
Manitou pleaded the following prior art:
- US Patent No. 4,006,347 for a System for a crane boom ( “Kruger”), and
- Japanese Patent No. 3,252,006 for a Control device for work vehicle with boom ("Tadano").
The learned judge considered the differences between Kruger and the inventive concept of claim 1 of EP065 between para [39] and para [58] of his judgment. He concluded that claim 1 had no inventive step over Kruger and added that JCB did not press any case for other claims having independent validity.
He compared Tadano and the inventive concept and agreed that the obviousness of EP 065 was much the same in the light of Tadano as it had been with regard to Kruger.
EP 965
- Claims
Judge Hacon referred to the description of the invention. He quoted claim 1 in full and then summarized claims 10 and 13. He construed those claims between [68] and [70].
- Prior Art
Manitou relied on Japanese patent application number JP 2000-329073 ("Aichi 1"). The judge compared the invention to the prior art between paras [72] and [76]. He considered the parties' contentions between [77] and [80]. He concluded at [95] that claim 1 lacked an inventive step over Aichi 1 and that claim 10 also lacked an inventive step at para [09].
EP382
His Honour outlined the patent in paras [99] to [101].
- Claims
He noted at [104] that independent validity was asserted for claims 1, 2, 3, 6, 7 and 8.
He broke claim 1 into integers at para [104] and summarized it at [105]. He identified the inventive concept at [133] as:
- Prior Art
Manitou relied on GB 595 and Tadano.
After hearing the parties' arguments he held that none of the claims of EP 382 lacked an inventive step over GB 595.
After hearing the parties' arguments he held that none of the claims of EP 382 lacked an inventive step over GB 595.
Judge Judge Hacon mentioned para [66] of Lord Neuberger's judgment in Actavis UK Ltd v Eli Lilly and Company [2018] 2 All ER (Comm) 1, [2017] Bus LR 1731, (2017) 157 BMLR 96, [2018] 1 All ER 171, [2017] RPC 21, [2017] UKSC 48:
“[66] In these circumstances, given the weight that has been given by courts in this jurisdiction (and indeed in some other jurisdictions) to the three ‘Improver questions’, I think it must be right for this court to express in our own words our reformulated version of those questions. In doing so, it is right to emphasise, as Lord Hoffmann did in Kirin-Amgen [2005] RPC 9, at [52], that these questions are guidelines, not strict rules (as indeed the Oberlandesgericht indicated in Case No. 6 U 3039/16, when saying that it was ‘generally’ true that ‘three requirements must be met’). While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows:
(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?
In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was ‘yes’ and that the answer to the third question was ‘no’.”
His Honour also referred to para [99] of his own judgment in Kwikbolt Limited v Airbus Operations Limited [2021] EWHC 732 (IPEC):
“[99] The doctrine of equivalents as explained in Actavis requires the variant to be specified. This will be the invention of one of the claims of the patent in suit with one or more integers missing or modified. In the simplest case one integer of the claim is missing in the variant - this will be the integer in issue. The parties will know what that integer is and each may tend to tailor its inventive concept accordingly. If so, the integer in issue is liable to be irrelevant to the inventive concept advanced by the patentee but central to the inventive concept advanced by the alleged infringer.”
“[99] The doctrine of equivalents as explained in Actavis requires the variant to be specified. This will be the invention of one of the claims of the patent in suit with one or more integers missing or modified. In the simplest case one integer of the claim is missing in the variant - this will be the integer in issue. The parties will know what that integer is and each may tend to tailor its inventive concept accordingly. If so, the integer in issue is liable to be irrelevant to the inventive concept advanced by the patentee but central to the inventive concept advanced by the alleged infringer.”
Further Information
Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.
Comments