ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION, PATENTS COURT
John Baldwin QC
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE FLOYD
| ICESCAPE LIMITED
|- and -
|ICE-WORLD INTERNATIONAL BV & ORS
Douglas Campbell QC (instructed by Clarke Willmott LLP) for the Respondent
Hearing dates: 26th- 27th June 2018
Crown Copyright ©
i) whether the patent was entitled to priority;
ii) whether the mobile ice rink made by Icescape fell within the scope of the patent;
iii) whether, on the assumption the patent was invalid but, had it been valid, would have been infringed, Ice-World had a defence to the claim for unjustified threats under s.70(2A) of the 1977 Act.
The technical background
"16.1 Ice rinks are created by the distribution of and flow of coolant through an array of pipes embedded within a water surround.
16.2 In operation, coolant is distributed through the system using a pump and a cold feed line. Once the coolant arrives at the ice field it is distributed via a number of manifolds arranged in series, each of which contains a number of branches. For transport to and from site purposes, each manifold is limited in length to about 6m. These manifolds are also known as headers or collectors and when connected together they are laid one after the other down the width of the ice field.
16.3 The manifolds are connected to one another with an industry standard fluid tight connector, either a flange or other mechanical coupler.
16.4 Branches off the manifolds are connected to longitudinal pipes which are perpendicular to the axis of the manifold and travel across the length of the ice field.
16.5 These longitudinal pipes are laid by alternating a flow line next to a discharge (return) line in pairs. At the opposite end of the ice field from the manifold, a return connection is made between each pipe in a given pair using either a secondary manifold (with a series of branches) or an individual "u-shaped" coupling - either of which joins the flow and discharge pipes to each other to form a loop.
16.6 The coolant passes through the feed manifold, through the "out" longitudinal pipes, back through the associated "return" longitudinal pipes, back into the discharge manifold and then to the refrigeration unit for re-cooling and further circulation.
16.7 The lengths of the manifolds and longitudinal pipes are chosen based on convenience of transport and the size of rink required.
16.8 The individual lengths of the longitudinal pipes are connected and disconnected from each other on assembly and disassembly of the system.
16.9 Trucks for transporting mobile ice rinks and components thereof can typically deal with items several metres (say up to 7m) in length but not much longer."
"Cooling member (21, 40) for a mobile ice rink provided with:
a feed manifold (43, 45) extending in a transverse direction and a discharge manifold (44, 46), and
a number of longitudinal pipes (50, 51) which extend transversely to the manifolds and can be connected at a first end (53, 54) to a manifold (43, 44, 45, 46), two longitudinal pipes (50, 51) in each case being in fluid communication with one another at a second end (60, 61) via a connector (27, 63), so that a fluid path is formed from the feed manifold (43, 45) to the discharge manifold (44, 46) via the two connected longitudinal pipes (50, 51),
characterised in that
A. the cooling member comprises at least two elements (41, 42), each with a feed manifold (43, 45) and discharge manifold (44, 46) and a number of longitudinal pipes (50, 51) connected thereto,
B. wherein each longitudinal pipe comprises at least two rigid pipe sections (3, 12, 16, 24, 68, 69) that are connected to one another via a joint member (4, 13, 17, 25, 70, 132, 133) such that they are fluid-tight, and
C. wherein by moving the joint members (4, 13, 17, 25, 70, 132, 133) a first series of parallel pipe sections (68, 68', 68") can be placed in a transport position with respect to a second series of parallel pipe sections (69, 69', 69") connected thereto, in which transport position the two series of pipe sections (68, 68', 68"; 69, 69', 69") are at an angle with respect to one another or are positioned on top of one another, and can be placed in an operational position in which the two series of pipe sections (68, 68', 68"; 69, 69', 69") extend in the extension of one another,
D. wherein the first and the second element (41, 42) can be placed in the operational position alongside one another such that the feed and discharge manifolds (43, 44, 45, 46) of the elements extend in the extension of one another in the transverse direction,
E. wherein the feed and discharge manifolds of the two elements are provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element."
"… at least one assembly of at least two generally rigid pipes for transport of a first medium, and a coupling element which interconnects the two pipes, and feed means and discharge means connected to the assembly for feeding and discharging of the first medium, respectively, the first medium being adapted for heating or cooling of a second medium surrounding the assembly. The invention also relates to an assembly for use in such a mobile heat exchanger. The invention furthermore relates to a system for providing a skating rink having such a mobile heat exchanger."
"Mobile heat exchanger, comprising:
- at least one assembly of
- at least two generally rigid pipes for transport of a first medium, and
- a coupling element which interconnects the two pipes, and
- feed means and discharge means connected to the assembly for feeding and discharging of the first medium, respectively, the first medium being adapted for heating or cooling of a second medium surrounding the assembly, characterised in that, the coupling element can pivot, the pipes being connected in such a way to the pivoting coupling element that the pipes can be hinged with respect to one another between an active operating position in which the assembly has a relatively extended configuration and a non-operative transport position wherein the assembly has a relatively compact configuration."
i) the feed and discharge manifolds (43, 44, 45, 46) of the elements "extend in the extension of one another in the transverse direction", and
ii) the feed and discharge manifolds of the two elements "are provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and second element".
"(1) A person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."
"9. From the analysis under point 8 supra, it follows that an extensive or broad interpretation of the concept of "the same invention" referred to in Article 87(1) EPC, making a distinction between technical features which are related to the function and effect of the invention and technical features which are not, with the possible consequence that a claimed invention is considered to remain the same even though a feature is modified or deleted, or a further feature is added (cf. point 8.3 supra), is inappropriate and prejudicial to a proper exercise of priority rights. Rather, according to that analysis, a narrow or strict interpretation of the concept of "the same invention", equating it to the concept of "the same subject-matter" referred to in Article 87(4) EPC (cf. point 2 supra), is necessary to ensure a proper exercise of priority rights in full conformity inter alia with the principles of equal treatment of the applicant and third parties (cf. point 8.1 supra) and legal certainty (cf. point 8.3 supra) and with the requirement of consistency with regard to the assessment of novelty and inventive step (cf. point 8.1 supra). Such interpretation is solidly supported by the provisions of the Paris Convention (cf. point 5 supra) and the provisions of the EPC (cf. point 6.8 supra), and is perfectly in keeping with opinion G3/93 (cf. point II.(vi) supra). It means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
"The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
"48. … The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim?"
"49. … The claims (if any—there is no rule that there should be) of the priority document are not determinative. They are just part of its disclosure. For the purposes of priority one just looks at the disclosure as a whole."
"228. So the important thing is not the consistory clause or the claims of the priority document but whether the disclosure as a whole is enabling and effectively gives the skilled person what is in the claim whose priority is in question. I would add that it must "give" it directly and unambiguously. It is not sufficient that it may be an obvious development of what is disclosed."
"65 The skilled person must be able to derive the subject matter of the claim directly and unambiguously from the disclosure of the priority document. Mr Tappin stressed that the question was one of what was disclosed to the skilled person, not what was made obvious to him by the priority document, for example in the light of his common general knowledge. I agree that, as the above passage shows, that is the correct approach. That does not mean, however, that the priority document should be read in a vacuum. The question of what a document discloses to a skilled person takes account of the knowledge and background of that person. A document may mean one thing to an equity lawyer and another to a computer engineer, because each has a different background. The document still only has one meaning because it is only the relevant skilled person's understanding which is relevant. What is not permissible is to go further than eliciting the explicit or implicit disclosure and take account of what a document might lead a skilled person to do or try, or what it might prompt him to think of."
i) Although "the language of the claim is important", consideration of this question does not exclude the specification of the patent and all the knowledge and expertise which the notional addressee is assumed to have.
ii) The fact that the language of the claim does not on any sensible reading cover the variant is certainly not enough to justify holding that the patentee does not satisfy the third question.
iii) It is appropriate to ask whether the component at issue is an "essential" part of the invention, but that that is not the same thing as asking if it is an "essential" part of the overall product or process of which the inventive concept is part. Here regard must be had to the inventive concept or the inventive core of the patent.
iv) When one is considering a variant which would have been obvious at the date of infringement rather than at the priority date, it is necessary to imbue the notional addressee with rather more information than he might have had at the priority date. Here Lord Neuberger had in mind the assumption that the notional addressee knows that the variant works.
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) Does the variant infringe any of the claims as a matter of normal interpretation?
ii) If not, does the variant nevertheless infringe because it varies from the invention in a way or ways which is or are immaterial? This is to be determined by asking these three questions:a) Notwithstanding that it is not within the literal (that is to say, I interpolate, normal) 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?b) 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?c) 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?
"The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide. It is however frequently impossible to know without access, not merely to the file but to the private thoughts of the patentee and his advisors as well, what the reason was for some apparently inexplicable limitation in the extent of the monopoly claimed."
"87. In my judgment, it is appropriate for the UK courts to adopt a sceptical, but not absolutist, attitude to a suggestion that the contents of the prosecution file of a patent should be referred to when considering a question of interpretation or infringement, along substantially the same lines as the German and Dutch courts. It is tempting to exclude the file on the basis that anyone concerned about, or affected by, a patent should be entitled to rely on its contents without searching other records such as the prosecution file, as a matter of both principle and practicality. However, given that the contents of the file are publicly available (by virtue of art.128 EPC 2000) and (at least according to what we were told) are unlikely to be extensive, there will be occasions when justice may fairly be said to require reference to be made to the contents of the file. However, not least in the light of the wording of art.69 EPC 2000, which is discussed above, the circumstances in which a court can rely on the prosecution history to determine the extent of protection or scope of a patent must be limited.
88. While it would be arrogant to exclude the existence of any other circumstances, my current view is that reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. The first type of circumstance is, I hope, self-explanatory; the second would be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes.
"(2A) If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent—
(a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;
(b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect."
"65. … The first is that I was not provided with the instructions upon which Mr Walaski based his opinion. Moreover it appears that Mr Walaski did not consider priority at all, basing his opinion entirely on a prior art search he conducted in the context of novelty and inventiveness. In these circumstances, Mr Walaski's opinion appears to have no value at all.
66. The second problem is that the person responsible for sending the letters did not condescend to reveal whether or not he knew or suspected that the patent was invalid in any material respect. In circumstances where a party chooses not to lead evidence about the state of mind of a particular individual where that state of mind might be highly relevant and there is no explanation offered, the court will be slow to infer a state of mind in his favour. Indeed, it is hard to conceive of a state of affairs where it would do so, there being no reason for it."
Lord Justice Floyd:
"The extent of the protection conferred by a European patent … shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."
"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."
Lord Justice Longmore: