COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE JACOB
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE DYSON
SIR DENIS HENRY
| MENASHE BUSINESS MERCANTILE LIMITED|
|- and -|
|WILLIAM HILL ORGANIZATION LIMITED||Defendant/Appellant|
Peter Prescott QC and Lindsay Lane (instructed by Laytons) for the Respondent
Hearing dates : 5th November 2002
Crown Copyright ©
Lord Justice Aldous:
"Is it a defence to the claim under section 60(2) of the Act, if otherwise good, that the host computer and the part of the communication means of the apparatus claimed in the patent are not present in the United Kingdom, but are connected to the rest of that apparatus?"
"(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say
(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.
(3) Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.
"125(1) For the purposes of this Act an invention for a patent for which an application has been made or for which the patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of specification of the application of the 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 an application for a patent shall be determined accordingly.
(3) The Protocol on 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."
"Article 69 should not be interpreted in the sense 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 claim. Neither should it be interpreted in the sense that the claim serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by persons skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."
Prohibition of direct use of the invention
A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent:
(a) from making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes;
(b) from using a process which is the subject-matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, from offering the process for use within the territories of the Contracting States;
(c) from offering, putting on the market, using or importing or stocking for these purposes the product obtained directly by a process which is the subject-matter of the patent.
Prohibition of direct use of the invention
1. A Community patent shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply within the territories of the Contracting States a person, other than a party entitled to exploit the patented invention, with means relating to an essential element of that invention, for putting into effect therein, when the third party knows, or it is obvious in the circumstances, that these means are suitable and intended for putting that invention into effect.
2. Paragraph 1 shall not apply when the means are staple commercial products, except when the third party induces the person supplied to commit acts prohibited by Article 25.
3. Persons performing the acts referred to in Article 27(a) and (c) shall not be considered to be parties entitled to exploit the invention within the meaning of paragraph 1."
"21. First the double reference to the UK. Mr Carr overlooks the fact that the second reference (into effect in the UK) looks to effect within the UK not use within the UK. The fact that second reference ("therein") was added during the negotiations is understandable but irrelevant. All that did was to identify the territory within which the effect was to [be] identified - to make sure that both the supply of the essential means and its effect were within the same territory. Mr Prescott's second order point is telling - why speak of "putting invention into effect in the UK" if you simply meant "infringe the UK patent." I can see no purposive construction of the Treaty which would make sense in this context."
"Further says Mr Prescott, if he were wrong there would be an enormous hole in the internationally agreed rules for infringement. His skeleton argument demonstrates the hole in the following way:
"Take the case of a someone who installs and sells a telecommunications apparatus which straddles the French-German border. Suppose the patent claim calls for integers A + B. Both are essential integers. But A is in France and B is in Germany. If WH are right, no infringement. We respectfully submit it obviously would be infringement else it would offend common sense. That cannot be what the framers of the Convention intended. It is not purposive construction. We could give many other examples, and of great commercial and industrial importance. For instance, a constellation of satellites, not all passing over the UK at once, and a downlink here.""
"17. Mr Carr realised the force of Mr Prescott's "hole" point. He sought to answer it by saying that it was a hole which, if the patentee's agent had been more ingenious, could have been plugged. All the agent had to do was to insert separate claims to the terminal and the host computers. Mr Carr handed me claims for the terminal and host which, he said, would have done the job. They took the form "A terminal (host) computer for using in a gaming system [then defined], the terminal computer comprising .". And he answered Mr Prescott's flourish by saying that in the case of the system claim the invention was not put into effect in any one country."
"22. Next, the hole. I do not think Mr Carr's answer is either rational or correct. The patentee's invention is in substance the combination of elements. It is the system. To say that a claim to the heart of the inventive concept would not suffice to provide protection is to suggest that patentees should play games with the patent system. Here the game is to pretend that the invention is a terminal when programmed whereas really the invention is a system. Moreover the argument is flawed. It is trite patent law that individual items of a combination may be old or obvious, yet the combination not."
"24. Finally there is Mr Carr's "uncertainty" argument - that if "effect" meant any effect it was too vague. Mr Prescott shrewdly noticed a parallel with the Brussels Convention, Art. 5(3). This confers tort jurisdiction on a court in a Member State where "the harmful event occurred." If anything that is a vaguer test than "effect" yet it has proved reasonably workable. In any event, just because there may be borderline cases of difficulty is no reason for not holding that an obvious case falls within the rule. No businessman would think for moment that the effect of the invention is not within the UK when the whole point of the defendants' system is to get UK punters to play their system."
"The power to make a declaration under section 71 of the 1977 Act is confined to acts within the United Kingdom. The acts referred to are the acts of infringement which are set out in section 60 of the Act. That section makes it clear that infringement only occurs if a person does an act within the United Kingdom without the consent of the proprietor."
"French: "de mise en oeuvre, sur ce territoire, de cette invention";
German: "zur Benutzung der Erfindung in diesem Gebiet";
Italian: "per utilizarre, in tale territorio, l'invenzione";
Spanish: "para llevarla en efecto en dicho territorio";
Portuguese: "para executar, nesse território, a referida invencγo"."
Lord Justice Dyson:
Sir Denis Henry: