England and Wales Court of Appeal (Civil Division) Decisions

Case No: A3/1999/1215

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM CHANCERY DIVISION

MR JUSTICE PUMFREY

Royal Courts of Justice

Strand, London, WC2A 2LL

Wednesday 20th December 2000

Mr R. Miller QC and Mr A. Roughton (instructed by Messrs Charles Russell for the Appellants)

Mr Colin Birss (instructed by Messrs Eversheds for the Respondents)

ALDOUS LJ:

1. In 1999 Rocky Mountain Traders Ltd started two actions for infringement of two patents EP (UK) 068353 and (UK) 2305907 granted in respect of an invention for a labelling device. The defendants in the first action were Hewlett Packard GmbH and Westcoast Limited and in the second, Fellowes Manufacturing (UK) Limited. The defendants denied infringement and counterclaimed for revocation of the patents relying upon lack of novelty and obviousness.

2. Both actions came for hearing before Pumfrey J and in his judgment dated 11th October 1999 he held both patents invalid. He would have held that the devices alleged to have infringed did infringe at least one of those patents, if they had been valid. Against that judgment Rocky Mountain appeal.

The Background

3. Although the patents are for an invention of a labelling device, they are essentially directed to a device which enables labels to be attached by consumers to CDs. Such labels only differ from those used on envelopes by their shape. The adhesive side is mounted on silicone backed A4 paper. Thus consumers can, with the use of a computer, print on the label details of the matter recorded on their CDs. The label can then be detached and applied to the CD.

The Patents

4. The patents both claim priority from the same priority document. It is therefore not surprising that their specifications provide a similar disclosure. The only material difference is in the ambit of the claims.

5. For convenience I shall concentrate upon the specification of the European Patent which I will refer to as 353 so as to differentiate it from the UK patent which I will refer to as 907.

6. Patent 353 - The specification of this patent opens with a description of the background. It refers to traditional methods of marking a CD using ink. The alternative is described in this way:

"An alternative to using an ink marker directly on the disc is to use a label, usually a self-adhesive label, which is subsequently attached to the disc. While in theory this seems a simple task, because of the high speed at which the disc must be spun, it is essential that the label be affixed in such a way that the overall balance of the disc is not adversely affected. In particular, it is necessary that the centre of balance of the disc remains about its geometric centre. Labels which are not concentrically affixed to the discs, for example, "half-moon" or semicircular labels have previously caused malfunctions and often rendered the discs virtually useless."

7. The specification continues with an acknowledgement of the patent relied on as rendering the patent invalid. It is referred to in 353 as WO9605057. At trial it was called Casillo, the name of one of its inventors. I am indebted to the judge for this description of Casillo and his explanation of the way it is dealt with in the specification.

"6. ... This application, which was called "Casillo" at the trial, is relied on as rendering the invention of the patent in suit obvious. A physical embodiment of the Casillo invention was exhibit PM-2 and was referred to as the Neato Classic, Neato being its manufacturer. The specification says that the Casillo device

"comprises a first member comprising a cylinder closed at one end by a slightly convex exterior face having a central aperture corresponding approximately to the size of the central aperture in a label and a second member comprising a plunger including a first portion having a diameter approximating to the diameter of the aperture of the first member, and a second portion having a diameter corresponding approximately to the diameter of the central aperture of the compact disc and the first and second portions together forming a shoulder against which the compact disc is seated."

Figure A is a reproduction of Figure 1 of the Casillo specification. The way in which the device is used can be shortly described. The operator puts the label sticky side up on the flat surface 510 with the central aperture in the label approximately aligned with the central aperture in the surface 510. The CD-ROM is placed top surface down against the shoulder 320 with the spigot 310 passing through the central hole of the CD ROM. The conical portion is then inserted in the central hole in the label, and as it descends it aligns the label with the axis of the spigot and then permits the CD to be brought into contact with the label so aligned, with the result that the label, properly aligned, sticks to the CD which can then be removed from the spigot 310.

7. The patent in suit describes the difficulties confronting the operator of the Casillo device in the following way.

[0009] In use, the operator must initially position an adhesive label on the first member so that its adhesive surface is uppermost and the label aperture is aligned with the central aperture of the end face of the cylinder. This step alone can be difficult because of the tendency of the label to stick to the operators fingers and hence move off-centre when the operator attempts to withdraw his fingers ready for the compact disc to be pressed onto the label. Also, there is a tendency for the label to curl upwards when the operator is not holding the label down.

[0010] Once the label is in its desired position on the first member, the compact disc which is retained against the shoulder portion of the plunger can be pressed down onto the label. In order to achieve the desired concentric alignment between the label and the disc, it is necessary to firmly press the disc against the shoulder portion while pushing the first portion of the plunger through the aligned apertures of the first member and the label.

[0011] Since the surface of the first member against which the label and compact disc are pressed is not planar, further care has to be taken to ensure that no air bubbles are trapped between the label and the disc as such bubbles are not only unsightly but may also cause balancing problems in the CD ROM reader.

[0012] It will be appreciated that this known device therefore relies upon the skill and manual dexterity of the operator in order to achieve correct alignment of the label and compact disc. Moreover, the device is reliant upon the operator being sufficiently well-organized to keep the two components in close proximity ready for use.

[0013] Accordingly it is an object of the present invention to provide a device which is inexpensive to produce and manually operable yet which overcomes the aforementioned problems permitting reliable alignment of the label and compact disc and substantially eliminating the opportunity for operator error.

8. A number of observations must be made about these passages in the specification. First, the surface against which the label and compact disc are pressed are planar so far as the disclosure of Casillo is concerned. It was established before me that a version of the Neato Classic did have a concave face, but I was not shown a Neato Classic with a convex face. Paragraph 0011 is therefore inaccurate as it applies to the disclosure of Casillo. Second, the propensity of labels to curl is a result of the manner in which they are removed from the backing paper. If the label is peeled off the backing paper, the backing paper will be flat and a curl will be put in the label. If the backing paper is peeled off the label, the label will remain more or less flat. That much is made clear by Casillo (page 3 line 15).

"When separated from the backing, the labels tend to curl, especially if the backing is held flat and the label pulled back at an angle, bending the label. Therefore, it is preferred that the label be held flat during backing removal and the backing flexed.""

8. After setting out the consistory clauses, the specification describes the specific embodiment with the aid of the following two figures.

9. The figures show a top cover plate (7) onto which a label, adhesive side up is placed. The top plate is supported by a cylinder (8). Within the cylinder, the spring (11) resiliently supports the piston (5) and the rods (4) and (3). Its method of use is described in column 7 lines 4 to 27.

"(0038) Illustrated by figure 2, the present invention is used to apply labels to CD ROMs as follows: a label (2) is placed onto the top cover (7) with its adhesive side facing upwardly such the rods (3), (4) are protruding through the centre hole of the label (2). The centre hole of the CD ROM (1) is then placed onto the rod (3) with its side to be labelled facing downwardly toward the adhesive side of the label (2) which is resting on the top cover plate (7). The CD ROM (1) is prevented from coming into casual contact with the adhesive side of the label (2) because the rod (4) has an intermediate diameter which is greater than the diameter of the centre hole of the CD ROM (1).

(0039) Gentle downward pressure is then applied to the rod (3) to depress the piston (5) within the enclosure assembly (21) against the action of compression spring (11). The piston (5) is gently deflected inwardly until the point at which the rod (4) is fully retracted into the assembly housing (21). At this point the CD ROM (1) comes into contact with the adhesive side of the label (2). The downward pressure is then gradually removed allowing the spring (11) to return the piston (5) to its resting, extremely upwardly, position making it easy for the user to remove the now labelled CD ROM (1)."

10. There follow ten claims. It is only necessary to refer to claims 1 to 3 as the other claims are not relied on as having independent validity.

"1. A device for applying a first substantially planar member, (2), having a central aperture of a first diameter to a second substantially planar member (1) having a central aperture of a second diameter, the device comprising

(i) an assembly including a circumferential flange (7) having an upper flange surface capable of supporting said first claim or member (2) characterised in that the device further comprises:

(ii) a piston member (5) having an upper surface;

(iii) a first rod (4) having a diameter slightly less than said first diameter extending from the upper surface of said piston member (5); and

(iv) a second rod (3) having a diameter slightly less than said second diameter, extending from said first rod (4); wherein the first diameter is greater than the second diameter, and wherein said piston member (5) is adapted to move from the first position in which said second rod (3) and at least a portion of said rod (4) extends above said upper flange surface to a second position in which at least said first rod (4) is entirely below or is level with said upper flange surface.

2. A device according to claim 1, further comprising a tube (8) having an upper end and a lower end, wherein said circumferential flange (7) extends from said upper end of said tube (8), and wherein said piston member (5) is slideably received in said tube (8).

3. A device according to claim 2, wherein movement of the piston member (5) from the second position to the first position is spring-assisted."

11. Patent 907 - As I have said it is accepted that the disclosure in this patent is essentially the same as in 353. The only material difference resides in claim 1 which reads as follows:

"1. A unitary device for applying a first substantially planar member having a central aperture of a first diameter to a second a substantially planar member having a central aperture of a second diameter, the device comprising;

(i) an assembly including a circumferential flange having an upper flange surface capable of supporting said first planar member

(ii) a piston member having an upper surface;

(iii) a first rod extending from the upper surface of said piston member and having a diameter slightly less than said first diameter for retaining said first planar member supported on said upper flange surface through its central aperture;

(iv) a second rod extending from said first rod and having a diameter slightly less than said second diameter for retaining said second planar member through its central aperture in concentric alignment with a central aperture of said first planar member retained on said first rod;

wherein the first diameter is greater than the second diameter, and

wherein said piston member is adapted to move from a first position in which said second rod and at least a portion of said first rod extend above said upper flange surface through the inner diameter of said circumferential flange to a second position in which at least said first rod is entirely below, or is level with said upper flange surface, thereby to apply said second planar member to said first planar member with their respective central apertures concentrically aligned."

Infringement

12. Four devices were alleged to have infringed: the HP Mark IA, the HP Mark IB, the HP Mark II and the Neato 2000. The judge held that they all infringed 353, but the Mark IB did not infringe 907. The respondents supported that last conclusion of the judge, but submitted that the judge should have held that the other devices did not infringe. The appellants took a contrary view. The correctness of those submissions depend upon the construction of the claims.

13. Having regard to section 125 of the Patents Act of 1977, the claims of patents have to be interpreted in the light of the specification as a whole. However the Protocol on Interpretation on Article 69 of the EPC applies. That requires purposive construction to seek fair protection for the patentee with a reasonable degree of certainty for third parties. That is normally achieved, as such cases as Kastner v Rizla [1995] RPC 585 and Wheatley & ors v Drillsafe Ltd & ors [2000] IP&T 1076 make clear, by using the "protocol questions" set out in Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181.

14. Infringement - 353 - The respondents pointed out that claim 1 required the piston member to have an upper surface, with the first rod extending from that upper surface. They submitted that the alleged infringing devices did not have such a surface. Their submission is best understood by comparing Figure B with the drawing (Figure C) produced by the judge, which diagrammatically illustrates the essential parts of the alleged infringements.

15. In Figure B the piston (5) is of larger diameter than the diameter of the first rod (4). In contrast the part labelled "piston" in Figure C is of the same diameter throughout until formation of the second rod which supports the CDs. In Figure B the change from piston to first rod is indicated by an upper surface, but no such surface exists in the alleged infringements. It follows, the respondents submitted, that in the alleged infringements there are no pistons with upper surfaces and no infringement.

16. Mr Birss who appeared for the Respondents contended that upon a literal construction of claim 1 there was no infringement. He accepted that that was not conclusive having regard to the Protocol. He also accepted that the judge was right to answer the first two Protocol questions as he did in paragraph 22 of his judgment.

"22. There is no doubt that the use of a first rod of diameter equal to that of the piston can have no effect on the way the invention works, and it was not contended before me that this would not have been obvious to the skilled man at the date of the patent. In my judgment, therefore, a device in which there is no distinction between the first rod and the piston will infringe if the other features of the claim are present."

17. Mr Birss attacked the conclusion reached by the judge because he submitted that the third protocol question should be answered in the affirmative. The skilled reader of the specification would have understood that the patentee intended that the requirement of a distinct upper surface on the piston was an essential requirement of the invention. Relying upon paragraph 008 of the specification, he submitted that the limitation, requiring the piston to have an upper surface, would be understood to be an essential feature of claim 1 for the purpose of distinguishing Casillo. That was emphasised in the claim because it was the only feature of the piston explicitly stated.

18. I disagree. There is nothing in the specification requiring strict compliance with this feature. Casillo has a plunger and nothing in the specification suggests that a distinct upper surface, instead of a piston and first rod of the same diameter, formed any part of the invention.

19. Infringement - 907 - The issue turns upon the construction of the word "unitary" in claim 1.

20. The Mark 1B has two parts, a base and a cap. The base is the same as shown in Figure C without the rod marked "CD support". Instead of that rod, there is a cylindrical hole in the middle of the first rod. In use, the label is peeled off its backing strip and placed as shown in Figure C. The CD is then mounted on the cap which is mushroom-shaped with the stalk (centering pin) passing through the hole in the CD. The cap with the CD are then combined with the base by inserting the centering pin in the hole in the top of the piston/rod and applying downward pressure.

21. The judge held that such a construction was not a unitary device as required by claim 1 of 907. He said:

"27. The position of the UK claim is different. This requires the device to be unitary. I have already referred to the body of the specification, in which one of the disadvantages of the Casillo construction is said to be that it depends upon the operator being sufficiently well-organised to keep the two components in close proximity ready for use. In use, the device is of course unitary, but the word means that the device does not come in two pieces both of which have to be found before it can be used. The Mark IB is not unitary, and does not infringe any claim of the UK specification."

22. The appellants submitted that the conclusion reached by the judge was contrary to the evidence of the witnesses. The word "unitary" excluded a two-piece device, such as the Casillo device illustrated in Figure A above. However it did not exclude a simple kit of two parts which had to be assembled into a unit in order to apply the label to the CD. Such a kit fell within the words of the claim. That was made clear from the passage at page 7 lines 4-7 of the patent which taught that the piston member could be withdrawn from the tube in use although, ideally, the arrangement was such that it could not be withdrawn. That showed that the inventor had in mind that such a device was still a unitary device. It followed that the Mark 1B was a unitary device because in use it was a unit.

23. In my view the judge was right. The passage at page 7 lines 4-7 does not suggest that the device need not be assembled as a one-piece device. The word "unitary" is used in the claim to differentiate the known Casillo device from that shown and described in the specification. The Casillo device was one which required relative movement of separate parts to bring the label and the CD together. The word "unitary" distinguishes such a construction. It requires the device to be in one piece. The Mark IB is not. The cap is separate from the base, and the label and the CD are mounted on separate parts before being combined by relative movement between the two parts. Such a construction has a material effect on the way that the invention of 907 works in that it requires more mechanical dexterity than the device claimed in claim 1 and described in the specification. The skilled reader would have understood that the patentee intended to exclude from the ambit of his claim a construction which required relative movement between two separate parts to achieve labelling. The specification points out that Casillo requires skill and manual dexterity of operation and that the device is reliant upon the operator being sufficiently well-organised to keep the two components of Casillo in close proximity ready for use. It continues by telling the reader that it is an object of the invention to overcome such disadvantages. That is not achieved by the Mark IB which is of two-part construction.

24. In their written submission, the appellants put forward an alternative submission. They submitted that Mark IB infringed having regard to the terms of section 60(2) of the Patents Act 1977. That submission has obvious difficulties and was not ultimately pressed in oral argument.

Validity

25. Novelty - The judge held that claims 1 and 2 of 353 were invalid as they were not new (see section 72(1)(a) and sections 1(1)(a) and 2 of the 1977 Act). The appellants submitted that he was wrong. The judge also held that the allegation that 907 lacked novelty failed. The respondents do not challenge that finding.

26. The test for novelty is that set out by this Court in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457 at page 485:

"The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed. We have already described the composite entity deemed to constitute the notional skilled addressee.

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 for the purposes of section 32(1)(e) 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, 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.

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 unmistakable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd v. Carr & Co Ltd. ((1908) 25 RPC 428 at 457 line 34, approved in B.T.H. Co. Ltd v Metropolitan Vickers Electrical Co. Ltd (1928) 45 RPC 1 at 24, line 1). 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."

27. The judge relied heavily on this passage of cross-examination of Mr McKie, the expert called by the appellants:

"MR. BIRSS: Yes, I think so. It [Casillo] is drawing attention, as I understand it, and maybe Mr. McKie you can help us with this, my reading of this is it is telling you two things. The first thing it is telling you is that the height of the space has to be enough to let the whole of the central cone get all the way to touch the bottom, which obviously will lead to the CD now touching the label at the top. It has to let you do that; yes? A. Yes, I think that is the inference.

Q. Obviously you have to make sure that the 640 is big enough sideways to let the cone go in at all. A. Yes.

Q. Do you agree? A. I agree with that, yes.

Q. What I would like to imagine is that I want to make a Casillo device out of wood, all right? I would like to just imagine it broadly, in other words. I am not too concerned about any of the bits in this PCT document other than the specific direction that tells you to make it out of wood, all right? Would you agree with this, that if you were going to apply this document, in other words someone were to give it to you And say, "Please make me one" and they said, what is more, "I notice that it refers to wood so please make me one from wood" the way to make it out of wood would be to take a round piece of wood, a bit of a tree, and to drill a hole in it in order to fit the cone. A. Yes.

Q. And obviously put a flat top on it. A. Yes.

Q. That would give you a hole which the cone could go through and would have a flat top. I should have kept going, that makes the base; yes? A. Yes.

Q. You then obviously have to make the central post. For now you could obviously make this out of wood quite easily, it would be a turned object on a lathe; yes? A. Yes.

MR. JUSTICE PUMFREY: Use a plug cutter and use the plug.

MR. BIRSS: You could even use the plug if you have a circular cutter. The difference, for what it is worth, between the device we have just constructed and the actual exhibit PM2 that I am holding obviously one is made of wood and PM2 is made of plastic, but the other difference is that the one we have made out of wood has this ---- A. Guidance.

Q. ---- solidness and a central hole running all the way through. Do you understand what I mean? A. Yes, I understand what you mean."

28. After citing that passage of cross-examination, the judge said:

"35. A document may contain clear and unmistakable directions to a number of things, or it may contain a number of alternatives between which the reader chooses by exercising his own judgment. It seems to me that Casillo does indeed contain clear and unmistakable directions to make a hole in the manner described in the cross-examination, but it gives no directions as to the size of the hole other than as to its minimum size. Making a device with a minimum size hole provides a tube, and makes the cone-shaped portion a piston in the sense in which I have construed that word. As a matter of common sense, there are clear and unmistakable directions at least to make a hole of the prescribed minimum size, and thus to provide a piston.

36. Is such an article within the claims? In my judgment, it is not within the UK claim because it is not unitary. The European claim presents a greater difficulty. The final feature of the claim requires only that the piston move between first and second positions defined by reference to the extent to which the first rod extends above the flange. I think that this feature of the claim merely prescribes the extremes of the reciprocation which I have held to be implicit in the use of the word "piston". I have come to the conclusion that claim 1 of the European patent does not require the piston to be captive within the tube. In reaching this conclusion, I have ignored the presence of the word "unitary" in the UK claim since that cannot affect the construction of the European claim, but I have taken into account the fact that an inability to withdraw the piston is described in paragraph 0020 of the specification as a feature which is "ideally" possessed by the apparatus, and by the fact that means for preventing its withdrawal are claimed only in claim 8. It follows that claims 1 and 2 (but not 3) of the European patent are anticipated."

29. Mr Miller QC, counsel for the patentees, submitted that the judge should not have reached that conclusion because it was contrary to the views of the experts expressed in their evidence. For my part I would reject that criticism. This is a specification which does not contain any difficult technical words and therefore it was for the judge to construe the claim and then to compare it with the disclosure in Casillo. He was in my view in a better position to do that than the witnesses.

30. Mr Miller put forward more formidable arguments. First he submitted that the evidence did not support the conclusion that there were clear and unmistakable directions to make the plate (500) and the cylindrical base (600) of Casillo as a single solid piece of wood, let alone to drill it to produce a tube. Casillo contains a drawing of the preferred embodiment. It shows a plate (500) and a separate cylindrical base (600); self-evidently those two pieces could be made in wood as shown. In so far as Casillo gave "clear and unmistakable directions" to make the device in wood, the plate and the base device would be as shown in the drawings. Such a device would have a hollow space beneath the plate and would not provide the piston necessary to produce a device falling within the claim 1.

31. Second, even if the device was made out of wood by drilling a hole which could provide guidance for a piston, it would not necessarily provide a member that reciprocated within limits, namely a piston. Indeed there would not necessarily be an identifiable first position nor reciprocation between limits.

32. Mr Birss supported the conclusion reached by the judge. He drew attention to page 14 lines 26 to 30 of Casillo which stated:

"Hollow space 640 must merely be large enough to allow positioning cone 300 to fit within the hollow space 640, if the positioning cone 300 were to enter with tapered terminus 340 first, except for elongated stock 310, were to fit below the level of flat lip member 610."

That passage, he submitted, provided clear and unmistakable directions to produce at least a tube. If that was not correct, there were clear and unmistakable directions to make Casillo out of wood and, if so the resulting device would fall within claim 1 as Mr McKie had agreed in his cross-examination.

33. Mr Birss also challenged Mr Miller's submission that there was a requirement in claim 1 that the piston member should have limited movement. I have not found it necessary to decide whether the words "piston member" as used in the claim imports such a limitation.

34. In my view Mr Miller is correct in his submission that claim 1 of 353 is not anticipated by Casillo. I am prepared to accept that there are clear and unmistakable directions to make a Casillo device out of wood. But that direction is capable of being carried out in a variety of ways. The most obvious is to construct a device essentially in the form shown in Figure A above. The direction to use wood may be a signpost upon the road to the invention claimed in claim 1, but will not suffice to invalidate the claim for lack of novelty. The passage in Casillo on page 14 does not have the meaning suggested by Mr Birss. All it is suggesting is that the hollow space must be big enough. An embodiment meeting the requirements of that passage is depicted in Figure A. Casillo therefore does not contain clear and unmistakable directions to provide any guide for the part 330.

35. Obviousness - 353 - The judge approached the task of deciding whether the patent was invalid on the grounds of obviousness having regard to the disclosure in Casillo using the structured approach advocated in Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] RPC 59 at 73. Both parties accepted that he was right to do so.

36. Having decided that the inventive concept of 353 was the device of claim 1 (alternatively claims 2 and 3), the judge came to identify the differences between the inventive concept and Casillo. They were "(1) the use of a piston rather than a comparatively unguided plunger and (2) providing predetermined positions between which the piston moves when attaching a label to a disc. So far as claim 2 is concerned, the difference is the provision of a tube for the piston to move in; and for claim 3 a spring (which must, in the UK claim, bear on the lower surface of the piston)". The parties accepted that the judge had properly identified the differences.

37. The judge went on to review the evidence consisting of the evidence of Mr Thring, the expert called by the respondents, Mr McKie, Mr Nalbandian, Mr Cecchi and Mr Parkman. The last three witnesses gave evidence about devices that they had produced having seen a Casillo device, but not knowing of the invention. As the judge held, each of them arrived independently at very similar ideas to that of the patent.

38. The judge's conclusion on obviousness was summarised in paragraph 43 of his judgment.

"43. These three witnesses had all seen the prior art relied on, and all had produced devices with spring-loaded pistons over which the label was placed and on which the CD was positioned before being pressed into position on the label as improvements over it. All were conscious of the problem of label hold-down. All thought their ideas were good ones. It seems to me that this kind of evidence is very secondary evidence of obviousness. Of course, the more people have the idea the more likely it is to be obvious, but considering what numbers of others have done in the light of the prior art can never be determinative. It does, however, provide me with some comfort in the conclusion which I have reached, which is that the invention of claims 1, 2 and 3 was obvious. I agree with the answers which Mr McKie gave under cross-examination, and I think that something like Mr Nalbandian's device was an obvious one to make if one wished to improve on Casillo by making a device which was more easy to manipulate. The springs alone provide the two positions between which the piston moves, and all the features of the claim are present."

39. Mr Miller reminded us of the warnings against hindsight reasoning expressed in British Westinghouse Electric and Manufacturing Company Limited v Braulik [1910] 27 RPC 209 and in Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd [1972] RPC 346. He also referred us to the judgment of this Court in Hallen Co v Brabantia (UK) Ltd [1991] RPC 195 in which it was pointed out that the notional skilled addressee was not expected to try all combinations unless he had a problem in mind. However the Court has, in the words of Oliver LJ in Windsurfing at page 73:

"to assume a man skilled in the relevant art who is at least sufficiently interested to address his mind to the subject and to consider the practical application of the information which he is deemed to have ..."

40. Mr Miller took us to much of the evidence of the witnesses. As to the evidence of Mr Thring, he submitted he was not a relevant expert and his evidence amounted to hindsight reasoning moving relentlessly towards the known goal without identifying any need to do so. As Mr Miller put it - Mr Thring's evidence raises the stark question: why change Casillo at all? The skilled person is not expected to make changes for change's sake.

41. As to that last submission, it is important to bear in mind this statement by Laddie J in Brugger v Medic-Aid Ltd [1996] RPC 635 at 655:

"On the basis of this they say there is no reason why it should have been obvious to modify the prior art in any particular direction. That, it appears to me, is a non sequitur. The fact, if it be one, that existing commercial products are highly successful and satisfactory does not indicate there are no obvious modifications to make to them. It merely demonstrates that there may be little incentive to those already making those products to change the design - a quite different matter."

42. As to Mr McKie's evidence, Mr Miller submitted that his cross-examination was not addressed to whether the invention was obvious at the priority date. The questions put to him represented a classic example of a cross-examination that Lord Diplock rejected in Technograph. The cross-examiner knew the destination, the invention, and therefore could devise a route by which the witness could by steps, seeming obvious, would arrive at that destination. The correct approach was to determine whether the invention was obvious, not whether the steps to it were obvious once the destination was known.

43. Mr Miller also submitted that the judge had placed too much weight upon the three witnesses who gave evidence of independent design. He also submitted that the judge was wrong to arrive at the conclusion that he did having regard to evidence or lack of it . The respondents had not established that claim 1, let alone claims 2 and 3, were obvious.

44. Mr Birss supported the conclusion reached by the judge. He submitted that when the evidence was read and considered as a whole, it established that the invention was obvious. Further, there was no evidence to support the appellant's case. With those submissions in mind, I turn to the evidence.

45. Mr Thring is a consulting engineer. He is therefore the sort of person who could have been approached to undertake the design of a labelling device. Thus he practised in the relevant field, but as the judge pointed out (judgment paragraph 13) he was of an inventive turn of mind. It followed that his evidence had, as the judge said, to be approached with care.

46. Mr Thring explained in his witness statement how he was instructed. He was sent a Casillo device and was asked to consider it with a view to improvement. He quickly jotted down his ideas. He concluded it was a well-made, neat product which was well packaged. It was "a little awkward in use, but still achieved its function reliably and with sufficient accuracy." He suggested three improvements. The relevant one was "Performance could be made less awkward if the two components were assembled together with an integral guide for the downward movement."

47. Mr Miller drew to our attention passages in Mr Thring's cross-examination where he accepted that he did not have any difficulty using the Casillo device. He never encountered the problem, mentioned in the patent, of the labels sticking to fingers. From that, Mr Miller submitted that his evidence that it was obvious to modify Casillo by incorporating a tube, a spring and a piston was the result of hindsight reasoning.

48. I, like the judge, do not believe Mr Thring's evidence can be dismissed as Mr Miller suggests. Any member of the public is entitled, without fear of patent infringement, to take a prior art device and improve it in an obvious way. Mr Thring believed that his initial suggestion of improvement was obvious. He explained that it needed to be worked-up into a design. In his witness statement he explained that he had had in mind to improve Casillo by making it unitary and providing an integral guide for downward movement. His idea followed from the slight awkwardness that arose in use. If so, the plunger would need to be extended and a return spring used to push the piston up to a limited extent. He said that he did not believe that that required innovation or was particularly clever.

49. Mr Thring did not depart from his evidence-in-chief during cross-examination to any material extent. I realise that he accepted that the Casillo worked satisfactorily without a tube or a spring. But that cannot be decisive. As I have pointed out, a product can be satisfactory, but that does not mean that a modification of that product was not obvious.

50. Mr McKie said in his witness statement that he did not believe that at the priority date the idea of a piston member below the first rod which reciprocated between two positions was obvious in the light of the disclosure in Casillo.

51. In cross-examination Mr McKie accepted (evidence 1/pages 122 and 123) that one of the problems with Casillo was that there was a tendency for the post of the plunger to wiggle. He maintained that view in re-examination (evidence 1/145). He went on to accept that the obvious solution to that problem was to use a tube. He also accepted (evidence 1/pages 118, 119 and 132) that insertion of a return spring was another obvious development. In fact he seemed to accept that the steps from Casillo to the invention claimed were obvious both starting from the idea of making the product in wood, as referred to by the judge in the part of Mr McKie's evidence he cited, and if starting from a need to deal with the difficulty caused by wiggling.

52. As I have said Mr Miller submitted that Mr McKie's evidence was not directed to whether the invention was obvious at the relevant date. I reject that submission. Mr McKie knew that obviousness had to be judged as of the priority date. The questions were directed to modifications of Casillo alone and the judge who heard him give his evidence was entitled to conclude that he understood the questions to be directed to whether a step was obvious at the priority date and that he had answered upon that basis.

53. It is unusual for an expert called by the patentee to agree in cross-examination that the differences from the prior art to the invention were obvious. That being so, I believe his evidence must be approached with caution as it may have been the result of the type of cross-examination referred to in Technograph.

54. The three witnesses who gave evidence of independent design support the conclusion that hindsight reasoning was not needed to move from Casillo to the invention claimed in 353. Their evidence was summarised by the judge in this way:

"41. In further support of this contention, he relied on three instances of independent invention. These developments were made by Mr Nalbandian, Mr Cecchi and Mr Parkman. Each of these gentlemen may, of course, have made an invention: but each arrived independently at very similar ideas having been exposed to the Neato Classic, that is, to the embodiment of Figure 1 of Casillo. Briefly, Mr Parkman's idea is substantially identical to the Neato 2000. When he made his design, he was employed by Neato. Mr Cecchi's wife is employed by Neato as chief operating officer. Mr Cecchi's device has a piston, but the first and second rods are replace by a cone. The CD sits on the cone, while the label is placed over the cone and held in position by a vacuum device, which is mentioned as an option in Casillo. The evidence of both these witnesses must, therefore, be approached with caution. However, cross-examination of both failed to demonstrate that they were not telling the truth, and I accept that both arrived at the ideas which they record in their witness statements without having seen the PressIT, the claimant's device which is substantially the preferred embodiment of the patents in suit.

42. Mr Nalbandian was in a somewhat different position. He manages a manufacturing facility which provides opportunities for people with disabilities. Mr Tracy of Neato approached him to carry out a labelling operation using the Neato labeller. Mr Nalbandian decided that the Neato labeller was slow and designed his own. He produced a device in plastic substantially identical to the wooden embodiment of Casillo which Mr Birss hypothesised in the cross-examination I have quoted, but with the additional feature of a vacuum hold-down, and with springs (three of them) in the base of the piston. He then made three more, without the vacuum hold-down. His picture and text describing his device are exhibited to his statement. The piston of his device is not captive."

55. The judge rightly approached the evidence of those three witnesses with caution as they all thought their ideas good and, I suspect, inventive. All three went from Casillo to a device which essentially fell within the claims. They got there without knowing of the invention, thereby demonstrating that the change did not depend upon hindsight. It followed that their process of thought did not involve hindsight reasoning. In that respect their evidence supports the conclusion that the evidence of Mr Thring and Mr McKie should be relied on.

56. I conclude that, on the evidence, the judge was correct to hold claims 1, 2 and 3 were obvious. I can find no error in his approach nor in the conclusion that he reached.

57. Obviousness 957 - No separate submission was made in respect of this patent. Upon the evidence, this patent stands or falls with 353. The judge was correct to decide that it was invalid for obviousness.

58. For the reasons that I have given this appeal should be dismissed.

LORD JUSTICE MAY:

59. I agree.

SIR CHRISTOPHER SLADE:

60. I also agree.