17 June 2013

Construction of Patents - Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd

You might think that this

would be quite different from that

but if you did you'd be wrong.  The decision of Mr Justice Birss (as he now is) in Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd [2013] EWPCC 12 (11 April 2013) is an object lesson in claim construction.

It is also a text book example of the application of the law on novelty, obviousness, insufficiency, added value and infringement which is why I am going to dissect it at some length now and perhaps use it as a case study in my "Introduction to Intellectual Property" talk on the 26 June 2013.

The Issues
This was a claim by Lizzanno Partitions (UK) Ltd. ("Lizzanno") for a declaration that the product identified in the first diagram did not infringe British patent number GB 2 432 617 for a gasket ("the patent") and revocation of the patent.    The patentee (whom the judge referred to as "Komfort") counterclaimed for injunctive and other relief from infringement.  The claim for revocation was based on anticipation, obviousness, insufficiency and added matter

His Honour, as he then was, had to decide whether the patent was valid and, if so, whether it had been infringed.

As every schoolgirl knows, a patent can be granted for an invention only if it is a new (see s.1 (1) (a) of the Patents Act 1977).

"New" for this purpose means that it does not form part of the "state of the art" according to s.2 (1) of the Act and s.2 (2) helpfully 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."
Actually there is quite a bit more to s. 2 than that but we don't want to complicate the picture, do we.

If it is found that someone has already made the invention for which a patent has been sought or in many cases granted them the invention is said to have been "anticipated."  In deciding whether an invention has been anticipated it is necessary to consider whether the patent would have been infringed had the earlier patent been made after the patent in suit. In General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, the Court of Appeal said:
"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, that is to say, it will have been anticipated. 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 patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated"
Lack of Inventive Step
The "state of the art" is also important when it comes to defining "an inventive step".  S.3 (1) provides:
"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 ..............."
This provision introduces the "person skilled in the art", No, not Katherine Jenkins though she is indeed very skilful, very arty and wears lovely dresses (see my rave about her in "Once in Preston Guild" 8 Sep 2012 IP North West). More typically the "person skilled in the art" is some old buffer in the relevant industry who doesn't have an inventive bone in his body.. In this case the person skilled in the art was someone specializing in glass partitions with experience of glass partition installations and the products used to secure glass sheets.

Now it is one thing to get a patent but quite another thing to keep it, The first thing that happens when a patentee complains of patent infringement is to look for reasons why the patent may not be valid.  Lack of an inventive step (obviousness) and lack of novelty (anticipation) usually come to mind.  That leads to a trawl of the world's patent offices and technical literature to find something like the invention that preceded the application for the patent. It is usually conducted with considerably more zeal and resources than the examiner who granted the application in the first place.

In the Inventor's Bargain 21 Dec 2008 JD Supra I described the bargain that the public makes with inventors:  If an inventor or other owner of an invention teaches the public how to make or use a product or process that did not exist before then that owner will be entitled to a monopoly of the invention for up to 20 years.

The document in which the invention is described is known as "the specification" and s.14 (2) (b) requires it to contain "a description of the invention, a claim or claims and any drawing referred to in the description or any claim".  S.14 (3) of the Patents Act 1977 requires the specification 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.".

If the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. then the patent may be revoked under s.72 (1) (c). Failure to disclose the invention in such a manner is known as "insufficiency".

Added Matter
S.14 (2) (b) is important when it comes to understanding the concept of "added matter" because s.72 (1) (d) provides that an invention may be revoked if the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent.  In Bonzel v Intervention Ltd [1991] R.P.C. 553 Mr. Justice Aldous said at page 574:
"The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold:
(a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(b) To do the same in respect of the patent as granted.
(c) 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 difficulty arises because the specification of the invention in a patent application is not usually the same as  the specification of the invention in the granted patent. In the process in which the Intellectual Property Office decides whether an application for an invention meets the conditions for the grant of a patent known as "prosecution", the applicant or his or her patent attorney may change the wording of the specification to meet the objections of the Intellectual Property Office or some other difficulty. The applicant can claim less than he or she had originally applied for or express his or her claim in different words but he or she cannot claim more.   If he or she does ask for more then, as they were for Oliver Twist,  the consequences can be nasty. Maybe not as nasty as the ire of Mr. Bumble but still pretty bad.

The judge held that the patent was valid and that it had been infringed.

Lizzanmo claimed that US patent application number US20040200167 A1 by Eric Isaac and others ("Isaac") had anticipated the patent.

This was an application for a patent for an extruded connecting profile the abstract of which was as follows:
"An extruded connecting profile for two panels having peripheral edges includes a first frame element having a front side and an opposite rear side, the front side being shaped for engaging a peripheral edge of a first panel of the two panels. A second frame element is also provided having a front side and an opposite rear side the front side being shaped for engaging a peripheral edge of a second panel of the two panels. An elastic structure extending between the first and second frame elements is co-extruded with the first and second frame elements and is comprised of a material having a higher elasticity than the material of the first and second frame elements."
Fig 1 showed the panel when not in use:

Fig 2 when engaged between two panes of glass:


Construction of the Patent
In order to decide whether Isaac had anticipated the patent in accordance with the General Tire & Rubber test and also whether the patent had been infringed for the purposes of the claim for the declaration of non-infringement and the counterclaim, the judge had to construe the patent.

S.125 (1) of the Patents Act 1977 provides that:
"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."
It is therefore necessary to construe the claims by reference to the specifications and drawings. S.125 (3) gives the following further guidance:
"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."
Thus, patent claims have to be interpreted in accordance with the following Protocol:
"Article 1
General principles
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.
Article 2
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."
Guidance on the application of s.125 (1) as interpreted in accordance with the Protocol has been provided by the House of Lords in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ  1062, [2010] RPC 8.  "The key point" that His Honour identified at paragraph [38] of his judgment  "is that construction is concerned with what a skilled person would understand the author to be using the words to mean."

Applying those principles the judge construed each of the claims of the patent.   His findings are to be found between paragraphs [38] and [61] of his judgment.

The judge found two differences between Isaac and the invention as construed above::

  • the materials from which the frame was made; and
  • the shape.
His reasoning appears between paragraphs [97] and [99].  These were enough to put Isaac outside any of the claims.  As none of the claims would have been infringed by Isaac it followed that the invention had not been anticipated by that application and that the patented invention was thus "new".

On the other hand he found that those claims were broad enough to cover Lizzano's product.  Lizzanno had argued that there were differences between its product and the patent in suit.  He rejected that argument between paragraphs [66] and [78].

In Pozzoli Spa v BDMO SA and another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 had provided the following guidance for determining whether an invention lacked an inventive step:
(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?
As I mentioned above, the person skilled in the art in this case was "someone specializing in glass partitions with experience of glass partition installations and the products used to secure glass sheets" rather than Katherine Jenkins. The common general knowledge of such a person included sealing partition joints with silicon and dry joints summarized in paragraphs [4] to [10].  There was also a joint for metal surfaces called Unilock MS3000 which is shown in the following photo:

The judge held that that also formed part of the common general knowledge of persons skilled in the art and that it worked very similarly to the patent. Lizzanno argued that if was part of the common general knowledge of persons skilled in the art and that the use of a similar joint to bind panes of glass would have been obvious.  Indeed, Lizzanno's expert said that he would have done just that.

Judge Birss QC dealt with that point as follows at paragraph [111]::
"Sometimes when one asks the question – if it was obvious why was it not done before – the answer is because the relevant item of prior art, although part of the state of the art, was not well known to the skilled people working in the relevant field at the time. However in this case that answer cannot be given in relation to Unilock because it was part of the common general knowledge. I am not satisfied that there is a good answer to this question in this case. Glass to glass partitions with silicone joints or H joints had been in use for a good number of years before 2005. Since the Unilock gasket was part of the skilled person's common general knowledge, if the invention had been obvious over Unilock then it would have been made years beforehand. The fact that similar gaskets were well known in draught excluders and other contexts does not help. When Mr Clasby explained in answer to Ms Jamal's question that as a designer he looked at everything I am sure he was correctly and fairly explaining what he, as a creative and dare I say it inventive, designer of partitioning systems actually does. But I do not believe it is the activity of the notional, uninventive person skilled in the art. I find that claim 1 is not obvious over the Unilock gasket."
So there you have it.  It is not enough for a clever chap like Lizzanno's expert to have thought of this invention.  It was whether it would have been obvious to the uninventive geezer known as "the person skilled in the art".   In this case, His Honour held that the use of something like the Unilock MS3000 would not have occurred to the person skilled in the art. Thus the invention was not obvious and involved an inventive step.

Other Points
The judge rejected the arguments on insufficiency between paragraphs [112] and [134] and added matter between [82] and [89].  As the arguments on invalidity failed the patent was upheld.

This case shows the operation of the Patents County Court at its best. The case was argued on 12 Feb 2013 and one day was enough for complex arguments on validity and infringement and cross examination of two witnesses. The judge and the two advocates are to be congratulated.  As I said above, I will be using this case to introduce patent law in my talk on 26 June 213 for which there are still some tickets which you can book here, If you don't want to go to my talk you are still welcome to give me a ring on 020 7404 5252 or fill out my contact form to discuss the case or patent law generally. You can also follow me on .Facebook, Linkedin, twitter or Xing.