Patents - J C Barmford's Appeal

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Jane Lambert

Court of Appeal (Lord Justice Nugee, Lady Justice Elizabeth Laing and Lord Justice Birss) J C Bamford Excavators Ltd v Manitou UK Ltd and Another [2024] EWCA Civ 276 (22 March 2024)

In JC Bamford Excavators Ltd v Manitou UK Ltd and another [2022] EWHC 1724 (Pat) (04 July 2022), JC Bamford Excavators Ltd  ("JCB") sued Manitou UK Ltd and Manitou BF SA ("Manitou") for patent infringement.  Manitou counterclaimed for revocation of JCB's patents. Manitou.  The action and counterclaim came on before His Honour Judge Hacon who held that one of JCB's patents was valid and infringed but revoked the rest. I discussed His Honour's judgment in Patents - J C Bamford Excavators Ltd v Manitou UK Ltd on 7 March 2023.

The Appeal

JCB appealed against the revocation of European patent 2 263 965 B9 for a Method of Operating a Working Machine (“EP 965”) with Judge Hacon's permission.  Before the appeal could be heard, JCB and Manitou settled their differences.  JCB wished to proceed with its appeal but Manitou no longer wanted to oppose it,  Since a patent confers a monopoly which affects the public Maniou could not consent to an order to restore the patent.  The Court of Appeal had to be persuaded that the revocation had been wrong.  It could only do that after hearing argument. 

A similar situation had arisen in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others [2006] EWCA Civ 185 (21 Feb 2006).  In that case, the Court of Appeal ordered the appeal to be heard as substantive with directions to enable the Comptroller-General of Patents, Designs and Trade Marks to attend the hearing if he so wished.  Para 14.1 (6) (d) of the Part 52 Practice Direction now provides:

"The Comptroller may attend the appeal hearing and oppose the appeal
.............
(b) in any other case (including, in particular, a case where the respondent withdraws his opposition to the appeal during the hearing) if the Court of Appeal so directs or permits."

The Comptroller instructed counsel to attend the appeal as amicus curiae pursuant to this provision.

The appeal came on before Lord Justice Nugee, Lady Justice Elizabeth Laing and Lord Justice Birss on 30 Jan 2024.  Lord Justice Birss delivered the lead judgment to which the other members of the Court agreed.  By para [70] of his judgment in  J C Bamford Excavators Ltd v Manitou UK Ltd and Another [2024] EWCA Civ 276 (22 March 2024) his lordship held that claim of 1 of 965 was not obvious over the prior art. The Court allowed the appeal and overturned the revocation of the patent.    

The Judgment

In my case note on Judge Hacon's judgment of 7 March 2023, I wrote that Manitou had challenged the validity of JCB's patents on grounds of obviousness and I explained the test that had to be applied in some detail.   I also discussed how His Honour had applied that test:

"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]."

The Issue

In para [3] of his judgment, Lord Justice Birss said that the issue on appeal was whether claim 1 of 965 lacked an inventive step in the light of Aichi I which his lordship subsequently called "Aichi".  He added at [5] that the foundation of JCB's appeal was a submission that the control system of Aichi did not fall within the terms of claim 1. The answer in the end would depend on what was disclosed by Aichi and the correct interpretation of the claim

The Invention

Although the word "telehandler" is not mentioned once in the specification for the invention that is protected by patent 965 Lord Justice Birss said in the second sentence of his judgment that the action concerns machines called "telehandlers". That is because it is clear from the features of claim 1 that the patent could not refer to any other type of machine.   Judge Hacon described telehandlers as follows in para [2] of his judgment which I reproduced verbatim in my article:

"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."

As the title of the specification suggests:

"This invention relates to a method of operating a working machine of the kind which is drivable on the ground and which has a working arm carrying at an outermost end, a working implement such as a loading forks or loading bucket for examples."

Telehandlers have devices known as longitudinal load moment indicators which warn drivers if their machine is about to tip over its front wheels because the arm is stretched too far, the load is too heavy or both.  Systems have been developed that prevent telehandlers from reaching those tipping points.  These are known as longitudinal load moment control systems ("LLMCs").  Since 2010 it has been necessary to fit LLMCs to telehandlers.

LLMCs on telehandlers have sensors on the rear axle which measure the load on the rear wheels.  The greater the load to the front the lighter the load to the rear.  When the load to the rear approaches predetermined levels the LLMC will prevent the movement of the arm.  The problem with this device is that it tends to give false readings when the telehandler is driven over rough ground such as a farmer's field or a building site.  As Lord Justice Birss pointed out at para [15]:

"It is not difficult to imagine how, in a system using a load sensor on the back axle, if in effect the machine bounces a little as it moves on uneven ground this could give a false indication of longitudinal instability. Thus if the LLMC remains active, the false indication is liable to cause the safety system to be triggered when it is not required."

Para 0008 of the specification discloses a solution to that problem:

"By virtue of the invention, a machine is provided in which the longitudinal load moment control system is operational to protect against excess longitudinal instability beyond the predetermined instability during loading and unloading operations when the machine is stationary or at least travelling at below the threshold speed, thus to protect the machine against overturning. However when the machine travels at above the threshold speed, the load moment control system is disabled, so that the working arm can be raised or lowered or extended without the operation of any actuator being disabled by the longitudinal load moment control system. Even though the longitudinal load movement control system may be disabled, the load movement indicator will continue to provide a visual indication to the operator of the longitudinal stability status of the machine."

Claim 1

The only claim in dispute was claim 1 which Lord Justice Birss broke down into the following integers at para [17] of his judgment:

"(a) A method of operating a working machine which includes a main structure and a working arm,
(b) the working arm being pivotably mounted on the main structure at one end of the arm, the working arm being raisable and lowerable relative to the main structure by a first actuator device, and being extendible relative to the main structure by a second actuator device and the arm carrying in use at its other end a working implement which in use carries a load,
(c) the machine further including a ground engaging drive structure by which the machine is driveable on the ground,
(d) and the machine having a longitudinal load moment control system
(e) which is functional automatically to disable the operation of the first and/or second actuator device which would increase longitudinal instability
(f) in the event that a predetermined machine longitudinal instability is sensed,
characterised in that
(g) the method includes sensing a parameter relating to the travelling speed of the machine on the ground, and where the machine is determined to be travelling at a speed above a threshold speed, disabling the longitudinal load moment control system."

Lord Justice Birss summarized the claim between paras [18] and [20]:

"[18] Thus the claim is to a method which involves operating a working machine with various components (b) to (d). Put broadly features (b) and (c) limit the claim to a telehandler and thereby distinguish the working machine operating from the machine in Aichi but the details of this do not matter on appeal.
[19] Feature (d) requires the machine to have an LLMC. Feature (e) describes what the LLMC does (disable an operation which would increase instability) and feature (f) defines the criterion which triggers that act – it is triggered "in the event that a predetermined machine longitudinal instability is sensed".
[20] The characterising feature (g) provides that the travelling speed is sensed, and when the speed is above a threshold the LLMC is disabled."

Prior Art

Aichi discloses a control system for a machine known as a "cherrypicker" which Lord Justice Birss described in para [4] of his judgment as "a type of crane".  Like a telehandler it is mobile but unlike a telehandler a cherrypicker, it can rotate around a verticle axis.   The following drawing from patent application number JP 2000-329073 shows the difference.

Lord Justice Birss observed that Aichi works very differently from JCB's invention.   Instead of sensors on the rear axle, there are sensors on the arm and other parts of the vehicle that enable a processor to work out whether there is a risk of tipping over.  There is also a work range limitation device which prevents the machine from tipping over while it is moving.

There was no dispute that it would be obvious to install the Japanese devise on a telehandler but it did not follow that the combination would fall within claim 1.  That is no doubt why Lord Justice Birss said in para [4] that the debate was more like an argument over novelty than whether the invention involved an inventive step.  

The Decision

The case turned on whether Aichi disclosed the disablement of an LLMC when the vehicle was in motion.  Lord Justice Birss's starting point was that there was no basis for reading into the meaning of the term LLMC a requirement that it must use a load sensor on the rear axle.  In Aichi, the system measured the position of the arm and compared it with a predetermined working range value. The control system sensed when the predetermined safety limit had been reached. It was a cruder measure of the risk of instability but it still controlled the same thing.  It followed that the control systems in Aichi were LLMCs and fell within claim 1.  However, Aichi did not involve disabling an LLMC, merely switching off one and using another.  As Lord Justice Birss said at [69]:

"In my judgment, giving the claim a purposive construction having regard to the specification at paragraph [0037], a person skilled in the art would not understand the disablement feature in the claim to be satisfied by a method which involved switching from one LLMC to another. That is because switching would still leave an LLMC in operation thereby restricting the ability of the operator to operate the actuator devices at will."

Consequently, the installation of Aichi's device on a telehandler would fall outside claim 1.

Comment

I have to say that I find the Court of Appeal's decision is a curious one.   The question that it had to decide was whether the method of operating a working machine would have been obvious to a person skilled in the art having regard to Aichi's patent application.  It was not whether the installation of Aichi's device would have anticipated the invention.

Further Information

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