COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION PATENTS COURT
London, WC2A 2LL
B e f o r e :
LORD JUSTICE JONATHAN PARKER
LORD JUSTICE LONGMORE
|SABAF SPA |
MFI FURNITURE CENTRES AND ANOTHER
Smith Bernal Reporting Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr. Alastair Wilson Q.C. and Mr. Peter Colley (instructed by Messrs Middleton Potts of London) for the Respondents
AS APPROVED BY THE COURT
Crown Copyright ©
Peter Gibson L.J. (giving the judgment of the court):
“BURNER FOR GAS COOKERS AND HOBS
This invention relates to a burner for gas cookers and hobs in general.
Various types of gas burners for cookers and hobs are known, but these have the disadvantage, among others, that they are relatively tall, for which reason they are not suitable or cannot be used for hobs which must have the most compact and flat structure possible.
Furthermore in burners of the known type the channels for the primary air intake always lead downwards, more specifically below the hob, or towards the oven, in the case of cookers provided with an oven, or towards the chamber or in any event towards the intakes provided for the purpose below the hob.
In addition to this the fitting and centering of burners of the known type is rather laborious and difficult, and once fitted the burners have little stability and are therefore susceptible to undue movement.
Thus they are fitted in such a way that access to and dismantling of the needle and gas injector, when necessary, requires the removal or lifting of the top plate of the appliance or the removal of the front, with the result that the operation is never easy and convenient.
These known burners are also rather rigid in their operating capabilities, in that they only ensure correct combustion for given pressure and gas flow conditions, a factor which means that such burners are not suited to every appliance and therefore makes it necessary to have a range of different burners to suit all requirements.
The object of this invention is to produce a gas burner for cookers and hobs which comprises units which can be combined with ease, are conveniently accessible and are easily separable so as to eliminate the inconveniences and disadvantages of existing burners.
Another object of the invention is to seek to provide a burner including units shaped so as to produce the so-called venturi effect in mixing and distribution of the gas, the said effect being obtained substantially between the support of the flame spreader and the flame spreader itself, in a radial direction and over a circular course from the centre towards the holes of the said flame spreader unit. This provides the burner with considerable versatility and flexibility in use in that correct and complete combustion is maintained at all times even in the case of extensive gas pressure variations and with all types of gas. The burner is therefore suitable for all operating requirements and can be fitted to any cooker or hob.
A further object of the invention is to seek to provide a gas burner of very low height which can therefore be used with advantage in hobs which must be flat or, in any event, as low as possible compatible with the installation requirements of the hob itself.
Yet another object of the invention is to seek to provide a burner in which the primary air for mixing is drawn from the exterior directly above the cooker top or hob, eliminating the provision of a closed and isolated box or air intakes below the said level as happens when traditional gas burners are used.
Yet another object of the invention is to seek to provide a gas burner which is easier to locate and centre and is stable when placed directly on the top of a cooker or hob, the said burner also being capable of being fitted with a flame spreader of the conventional type, which is therefore easily available.”
(i) a support bearing a gas supply injector or needle,
(ii) a body associated with this support defining a chamber in which the gas is mixed with primary air drawn from the outside, and
(iii) a flame spreader unit mounted on the said body defining therewith a passage for promoting complete mixing of the gas and primary air and for the supply of the gas-air mixture for burning through the holes of the said flame spreader,
(iv) wherein the said support has a sleeve portion having a vertical axis and defining a chamber which is open at the top and closed at the bottom and contains the said injector or needle, the said sleeve portion having a peripheral flange by which it is securable to the plate of a cooker or hob, and the said sleeve portion being associated with
(v) a body having a tubular central portion defining a through opening which is concentric with the said chamber, and a peripheral portion with an edge which extends downwards to lie proximate to the said plate, in use, defining therewith a circumferential passage for the intake of primary air above the said plate, the said body having radial passages for passing the primary air into the said chamber in order to form the gas-air mixture,
(vi) and the flame spreader unit being supported on the said body overlying the hole in the tubular portion of the body itself,
(vii) the upper surface of the said body and the internal surfaces of the said flame spreader unit, which are opposite to each other, define a radial passage of circular shape through which the gas-air mixture passes from the said through hole to the holes in the flame spreader with a suitable reduction in velocity and a recovery of pressure, the radial mixing passage being shaped to produce a venturi effect to promote complete mixing and distribution of the gas and the primary air.”
“The upper surface 12' of the body 12 and the internal surface 13' of the flame spreader 13 which are opposite each other may, depending on requirements, e.g. the pressure of the gas which is to be burnt, the type of gas, etc., be divergent, parallel, or convergent, from the centre towards the periphery or towards the series of holes 21 in the flame spreader 13. In any case, the said opposing surfaces 12' and 13' define a radial passage of circular extent 22 through which the gas-air mixture, which is produced in the central opening 15, is passed to the holes 21 of the flame spreader 13, where combustion occurs. In accordance with the Venturi effect, the velocity decreases and the pressure recovers, either as the result of the shape of passage 22 when this is given a particular divergent shape, or because the cross-section of the passage increases as a function of radius from the centre of the periphery. In this way the mixture is supplied and its combustion is correct and complete even in the case of major variations in the pressure and type of gas used.”
“Meneghetti has a British sales agent who participated in discussions with MFI which led to them buying Meneghetti burners for their hobs. It is not suggested that the activities of the agent, per se, renders Meneghetti liable for infringement. The burners bought by MFI were from Meneghetti’s standard range but they were installed in hob units to which an MFI trade mark was applied. The hobs were clearly destined for MFI’s British market. The hob units were supplied with English language instruction booklets. These were drafted by MFI, but Meneghetti arranged for them to be printed. The hobs were also supplied with English style electric wiring instructions. There is no dispute that title to the hobs, including the burners, passed to MFI in Italy. Originally, MFI arranged for the hobs to be collected by its lorries from Meneghetti’s plant in Italy. From November 1998 onwards, delivery of the goods was by independent haulier. The haulier was chosen, paid and instructed by Meneghetti. The costs of doing this were subsequently recovered from MFI. SABAF did not plead, and did not ask leave to amend to plead, that Meneghetti or its agent offered to supply the burners in England.”
“The independent haulier was instructed by and carried out the transportation on behalf of Meneghetti. If there was a breakdown in delivery, Meneghetti would be responsible for taking the matter up with the haulier. Similarly, if, for example, a cheque paid to the haulier was not honoured by the bank, it was to Meneghetti that the haulier would look. MFI was isolated from this part of the logistics. I think it would be fair to say that Meneghetti was arranging importation into England as part of its service to its customer. The fact that it was subsequently reimbursed for this service, does not alter the fact that it was Meneghetti which was importing the goods for commercial purposes.”
“It is apparent that Meneghetti was content that its burners were used and sold by MFI in England, just as, no doubt, it was content that its products were sold in a very large number of other countries in the world. It is also apparent that it was prepared to help its customers, for example by supplying them with instruction booklets in the language of the market in which the customer traded. But this does not demonstrate a common design. Meneghetti assisted its customer and facilitated the latter’s business, but at all times the sale and use of the burners in the English market was solely the commercial venture of MFI. I think Mr Wilson is right to say that Meneghetti had no interest in whether MFI actually sold the hobs with burners in England. As far as it was concerned, MFI could have decided to store or destroy the complete stock, or send them to a market where there were no SABAF patents. Meneghetti’s actions were those of a company making its standard products available to customers, like MFI, from all over the world. It did not have a common design with MFI to market in England.”
“1 (1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say –
(a) the invention is new;
(b) it involves an inventive step ....
2 (1) An invention shall be taken to be new if it does not form part of the state of the art.
(2) The state of the art in the case of an invention shall be taken to comprise 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.
3 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 ....”
“There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.”
“The answer to the first question requires a purposive construction of the claim in issue in order to determine its ambit and thus to determine the characteristics of all items falling within that ambit so as to define the inventive concept possessed by all.
The second question requires the court to identify the skilled man (or men) and the common general knowledge.
The third question requires the court to have regard to the nearest piece of prior art, to identify what that prior art is teaching that skilled man and then to identify the lacuna between that teaching and the inventive concept. ....
It is, of course, the fourth question which requires the court to answer the question, formerly left to a jury: is the invention obvious? It is in answering this that the court must take care not to allow hindsight to colour its judgment ....”
“(B1) Obvious and consequently non-inventive combination of features:
The invention consists merely in the juxtaposition or association of known devices or processes functioning in their normal way and not producing any non-obvious working inter-relationship.
Example: Machine for producing sausages consists of a known mincing machine and a known filling machine disposed side by side.”
“Mr Vanhegan concedes that the law of collocation applies under the 1977 Act just as it did before. He accepts that the extract from the Guidelines for Substantive Examination set out above is a fair statement of that principle, although he also concedes that it may be expressed a bit narrowly, because the objection of mere collocation would apply as much to the putting together of obvious, but non-interrelating, devices and process as to the putting together of known such devices and processes. However he says that it is not enough to ask whether the two (or more) devices or processes are individually known and obvious and do not interact. He says that Meneghetti must also show that there is a reason why the devices should be put together. In other words before a collocation of known or obvious parts can be invalid it must be obvious to put them together. In my view this would turn the law of collocation on its head. Since, by definition, the devices or processes do not relate to each other and do not affect each other’s function or performance, there is little technical incentive for the worker in the field to put them together. Thus the lack of interrelationship would render the collocation non-obvious. As a result, virtually all collocations would become patentable.”
“The law of patents is set on a public policy foundation that a man in the art cannot be stopped by a subsequent patent from using one or more known or obvious devices. He is not to be regarded as having been issued with a ration card allowing him to use only one such device. If there is no inventive step in using one and there is no inventive step in using another, there is no inventive step in using the two together. Where the devices or features interact, different considerations may apply.”
(A) Is the patent invalid for obviousness?
(B) If not, do Meneghetti's burners escape infringement of the patent by reason that they do not possess a "sleeve portion .... defining a chamber" of the kind required by claim 1?
(C) If its burners do infringe, did Meneghetti do infringing acts within the jurisdiction by being a joint tortfeasor with MFI?
(D) If not, did Meneghetti do infringing acts within the jurisdiction by importing the burners?
(1) The patent claims are directed to a product, not to a process. The judge erred in dissecting the invention and considering only a combination of two of its features, one being a method of operation (taking primary air from above the hob) and the other being an abstracted portion of one of the features of the claim (a radial mixing passage shaped to produce a Venturi effect). He should have construed the claim as requiring a particular mechanical arrangement of discrete components shaped and arranged to form a burner which overcame the problems of the prior art burners set out in the specification.
(2) There is no law of collocation. It is not disputed that the "mere placing side by side of old integers so that each performed its own proper function independent of the others" (British Celanese v Courtaulds) (1935) 53 RPC 171 at p. 193 per Lord Tomlin) is not an inventive step; but to arrive at the conclusion that there is a "mere collocation" the court must determine the nature of the invention and the state of the art as viewed through the skilled person to determine what is known and whether it is obvious to put the integers together.
(3) The judge erred in reaching his conclusion without first properly identifying (i) the invention the subject of the patent, (ii) the state of the art, (iii) the person skilled in the art, and thus (iv) (a) whether the invention comprised merely the juxtaposition of features known in the art, and (b) whether those features were merely performing their proper function, through the eyes of the skilled person.
(4) Applying the structured approach in accordance with Windsurfing to the cited prior art, the judge would have found the patent not obvious but valid.
(1) The judge was right to find that the patent was invalid for obviousness by reason of the mere collocation of two known features which have no interaction with each other. Each feature contributes to the burner no more and no less than what the prior art would lead one to expect, still less is there any surprising or inventive consequence of the combination. That is a different type of obviousness from that considered in Windsurfing, the first three steps of which do not apply. This is a legitimate short cut to a finding of obviousness which is supported by the EPO and the European authorities, as well as by the pre-1977 law.
(2) The Windsurfing analysis can apply in a collocation case such as this by treating the reference in the third step to "matter cited" as involving simultaneously both relevant citations of the prior art relating to the two features.
(3) Alternatively, taking primary air from above the hob was common general knowledge in Italy (Alpes-Inox). To join to that knowledge published information on a radial Venturi (Zanussi, Hourdry) was obvious, and everything else in the patent was mere workshop detail.
“a combination of:
(a) an air supply from above the cooker plate, with
(b) the replacement of the traditional long mixing tube (either horizontal or vertical) with a very short vertical mixing tube followed by an elegantly designed horizontal mixing section shaped so as to produce a venturi effect within the area below the flame spreader so as to complete the mixing of the air and gas in that region and restore the presence of the mixed gas and air sufficient to permit complete combustion at the burner ports
all encompassed within an elegant mechanical arrangement to give a very compact burner, easily capable of being assembled and disassembled in situ and operating with all three gas families.”
“(B2) Not obvious and consequently inventive combination of features:
The combined features mutually support each other in their effects to such an extent that a new technical result is achieved. It is irrelevant whether each individual feature is fully or partly known by itself.
Example: A mixture of medicines consists of a pain-killer (analgesic) and a tranquillizer (sedative). It was found that through the addition of the tranquillizer, which intrinsically appeared to have no pain-killing effect, the analgesic effect of the pain-killer was intensified in a way which could not have been predicted from the known properties of the active substances.”
“The dissection of a combination into its constituent elements and the examination of each element in order to see whether its use was obvious or not is, in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreover, this method also tends to obscure the fact that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is: Is the combination obvious or not?”
“it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge.”
The court will almost certainly need evidence from the experts to establish whether any published information has become common general knowledge. As is stated in Terrell op. cit. para. 6.27, it is not enough to show that a matter was known to some but not to others.
“I do not say they are unrelated because they function to produce one end result, sufficiently complete.”
When the judge asked again at p. 636 whether Mr. Vanhegan was saying that there was a technical interrelationship between the mixing hardware inside the burner and bringing air in from above the hob Mr. Vanhegan replied:
“There always is to the extent that you have got to get sufficient primary air into that burner such that you can have it sufficiently mixed and presented to the burner ports .... [Y]ou are always concerned about the pathway of that primary air and the way in which it comes through the burners and .... that amount of flow of air will have an impact on the ability to use the Venturi effect to its maximum advantage.”
But Mr. Vanhegan said that he could not point to any other technical interaction between the two concepts.
(1) the air supply is drawn from above the cooker plate, radially into the burner;
(2) the gas and air first begins to mix in a chamber defined by the support and thereafter continues to mix whilst passing through a short vertical tube, located concentrically above the gas injector;
(3) thereafter the gas and air pass through a horizontal radial passage shaped so as to produce a venturi effect, created by the lower side of the flame spreader and the upper portion of a body which is associated with the support, in which further mixing occurs and in which the pressure of the mixture increases as its velocity decreases."
(i) would only have been interested in natural gas burners,
(ii) would not have known of any of the prior art citations on which Meneghetti relied,
(iii) had a mindset against changing the then prevalent long horizontal Venturi tubes and had a fear about venturing into the unknown,
(iv) had a technical prejudice against drawing the primary air from above the hob and through the burner, and
(v) did not believe that the height of the vertical Venturi tube burners could be reduced.
Save for (ii), we did not understand Mr. Wilson to challenge these attributes. On (ii) he suggested that taking air from above the hob would have been common general knowledge in Italy because of the Alpes-Inox burner. But the judge did not think that it was common general knowledge even in Italy (Transcript 4 July 2001 p. 634) and the evidence does not support Mr. Wilson's submission.
This 1958 East German burner took air from above the hob and was made of three components, like the SABAF burner, but those components had features differing from the SABAF burner's components. It was a vertically arranged Bunsen burner containing no disclosure of a radial mixing zone shaped to produce the Venturi effect beneath the flame spreader. It was intended for the use of town gas only.
This 1963 burner also took air from above, but it was not a 3-component burner, and it was a structurally complex, vertically arranged burner not possessing any horizontal radial passages shaped to produce the Venturi effect. Although the judge described the flow path in the Alpes-Inox burner as similar to that of the SABAF burner, we have to say that there are self-evident dissimilarities between them.
The 1963 patent for this burner disclosed the use of a Venturi arrangement in the radial section to reduce the overall height of the burner, but did not use air drawn radially from above the hob nor was it in 3 component parts nor did it use a support at all. Mr. Sutton, the expert for Meneghetti, called it a different animal from the SABAF burner which he accepted was technically superior in respect of the radial passages.
The 1958 patent for this burner described the use of a radial passage to produce the Venturi effect. But it was not in 3 component parts and the primary air was drawn from below. It was concerned solely with town gas.
(1) There was nothing in the very old (1958) Energietechnik disclosure which would have led the skilled person to incorporate a radial mixing zone shaped to produce the Venturi effect under the flame spreader nor to reduce the height and length of the vertically arranged Bunsen burner. From the differences between the Energietechnik burner and the SABAF burner, the invention was not obvious to the skilled person in the light of the Energietechnik disclosure.
(2) Similarly, the old (1963) Alpes-Inox disclosure would not have helped the skilled person to think of changing the design of that burner to incorporate any horizontal radial passages shaped to produce the Venturi effect nor to reduce the height or length of the vertically arranged burner, nor to make a 3-component burner. Again because of the differences between the Alpes-Inox burner and the SABAF burner, the invention was not obvious to the skilled man in the light of the Alpes-Inox disclosure.
(3) From the old (1963) Zanussi disclosure, the skilled man would not have been led to think of drawing in air other than from below nor to make up a burner with 3 components. Nor does Zanussi teach that sufficient pressure recovery could be achieved solely in the horizontal radial passages. The differences between the "different animal" which was Zanussi and the SABAF burner lead to the conclusion that the invention was not obvious to the skilled person in the light of the Zanussi disclosure.
(4) The very old (1958) Hourdry patent would not have led the skilled person to think of drawing air from above the hob radially into the burner: it expressly taught that air should be drawn from below the cooker plate. Nor would it have led the skilled person to think of a 3-component burner: the upper part of the Hourdry burner is force-fitted so as not to allow the burner to be taken apart. Because of the differences between the Hourdry patent and the SABAF patent, the invention was not obvious to the skilled person in the light of the Hourdry disclosure.
(C) Joint tortfeasor
“They all convey the same idea. The idea does not .... call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor .... is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements.”
That was said in the context of a successful application to join the parent company of the primary infringer as a joint tortfeasor.
Figure A: Typical Venturi type arrangement in a gas burner –
Figure B: Illustration from the patent in suit –
Figure C: Exploded version of the illustration in the patent in suit –
Figure D: Exploded version of cross section of Meneghetti product –