England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COURT
His Honour Judge Fysh QC
PAT.NO 04022

		Royal Courts of Justice Strand, London, WC2A 2LL
		20th December 2006

Lord Justice Neuberger :

Introduction

1. This is an appeal against the decision of His Honour Judge Fysh QC, sitting in the Patents County Court, in an action involving a claim for patent infringement and a counterclaim for revocation of the patent in question. The patent concerned is UK Patent No. 2346464 ("the Patent"), entitled "Portable computer", and it is registered in the name of the appellant, LG Philips LCD Ltd. The Patent concerns a way of mounting flat panel display devices into housings, the combination being subsequently incorporated into portable computers and display monitors.
2. The appellant brought proceedings for infringement of the Patent against the three respondents, Tatung (UK) Ltd, ViewSonic Europe Ltd, and Number 1 Services Ltd ("the respondents"). The respondents denied infringement and counter-claimed for revocation of the Patent on the grounds of anticipation, obviousness and insufficiency. In order to meet part of the respondents' case for revocation, the appellant applied to amend the Patent.
3. The hearing of the action took place over six days in September 2005, and the Judge gave a very full judgment on 28 November 2005. Having explained the technical background and the specification of the Patent, the Judge then discussed, briefly and uncontroversially, the relevant common general knowledge, the reliability of the expert witnesses, and the proper approach to the interpretation of the Patent.
4. The Judge then explained the amendments which the appellant wished to make to the Patent. He then discussed the issues thereby raised, and decided that the amendments should not be allowed, on the ground that they constituted added matter, and, in the case of one of the amendments, on the further ground that it suffered from lack of clarity.
5. The Judge recorded that it was conceded by the appellant "that the action would fail if the amendments were not allowed". This concession meant that the Patent was admittedly invalid as the application to amend had failed, and the infringement action also necessarily failed. However, the Judge went on to consider, albeit relatively briefly, the outstanding issues, on the assumption that the amendments had been allowed. On that basis, he held that (a) none of the respondents had infringed the Patent, and (b) although he rejected the respondents' case on lack of novelty, he accepted it on the issue of obviousness. In those circumstances, he dismissed the infringement claim and granted the revocation sought on the counterclaim.
6. The appellant appeals against all the conclusions reached by the Judge, save, of course, his rejection of the respondents' case of lack of novelty. The respondents have cross-appealed. All references to sections in this judgment are to sections of the Patents Act 1977.

Technical matters and the general teaching of the Patent

7. The Patent is concerned with mounting of a flat-panel display device within a two-part housing. The resulting unit may then be incorporated into products such as a laptop computer or free-standing computer monitor. Although there is more than one sort of display device, the teaching of the Patent is directed principally to Liquid Crystal Displays ("LCD"s) in laptop (or notebook) computers.
8. What one might call the monitor (or the hinged lid) of a laptop computer has a cover consisting of two parts, which form a display case. The first part is a (normally rectangular) front through which the display may be viewed: it is like a picture frame for the "picture" of the display. If one is viewing the display, the four sides of this frame have a normally flat and fairly narrow surface (or bezel) in roughly the same plane as, but a little proud of, the display surface. There is a corresponding rear part, which is solid. The front and rear are sometimes called housings or frames. The front housing is usually attached directly to the rear housing.
9. The LCD module, which forms the display, is mounted between the front and rear housings. An LCD module is a complex product with many layers. It looks like a wide flat box with a lip around the front to prevent the layers falling out. The functions of the various layers of the module are largely irrelevant for present purposes. LCD modules are made by various manufacturers, and the appropriate module for a particular application is purchased from such manufacturers. Indeed, from the point of view of the addressee of the Patent, the modules were just "slabs", and indeed were so called by employees of the company in which Mr Talesfore, the appellant's expert witness, worked.
10. There is one aspect of LCD modules which is important for present purposes, namely the fact that they contain at least one glass layer. This layer does not extend to the edge of the metal enclosure: there is a gap between its edge and the side wall of the enclosure, and that gap is of varying size. Further, the portion of the display, on which the image is actually shown, is not co-extensive with the whole of the glass layer. It is within that glass layer that the display area, that is what the viewer sees, is created. The glass can thus be treated as consisting of two areas, namely a (normally much) larger, central, area (the active area) wherein the display is created, and a lesser, peripheral, area surrounding it which is inactive and is normally located under the bezel of the front housing. However, there is no requirement that the inactive area is precisely co-extensive with the area of the glass under the bezel.
11. Mr Meade, who appears for the respondents, as he did below, summarised, in my view accurately, the basic teaching of the Patent as it appears from the specification, in the following terms:

"(a) It asserts that the prior art common general knowledge method of mounting LCD modules was by the use of flanges attached to the modules at their edges.

(b) It asserts that the use of such flanges made an assembly of that kind unnecessarily wide (wasted side space). Wasted side space could be undesirable because e.g. in a notebook computer of fixed width it meant that less of the available space could be devoted to the display.

(c) It asserts that the problem of wasted side space could be avoided by omitting the flanges and moving fixing points to the rear …."

12. In paragraph 15 of his judgment, the Judge put it this way, after going through and quoting short passages from the specification of the Patent:

"The object of the invention is therefore to maximise the display area of the display case. And how is it proposed that this should be done? Simply by re-positioning the mounting flanges at the side of the module to the rear of the module. [Counsel then appearing for the appellant] accepted that it was the idea of making this change which was at the heart of the invention."

13. It is right to mention at this stage that Mr Peter Prescott QC who appeared for the appellant with Mr Benedict Bird on this appeal, contended that in that passage the Judge erred. They said that the teaching of the Patent did not involve re-positioning the side flanges to the rear of the module, but replacing the side flanges with fastening parts which are located behind the glass.
14. A drawing produced during the course of the hearing below and which appears to me to be helpful for the purposes of this appeal is this:

[Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture]

The solid right-angled lines denote the outside and inside of the front housing (i.e. the frame for the viewing display as explained above). The dashed lines denote the extent of the glass area which is shown hatched. The position marked "A" shows the prior art flange. The relevance of the other letters marked on the drawing will be apparent from what follows later in this judgment.

15. At this stage, I turn to claim 34 of the Patent upon which, as the Judge put it, "interest has almost entirely focussed". If the appellant cannot succeed in making the amendments to claim 34 it seeks, then, as already foreshadowed, it accepts that its infringement claims must fail and that the Patent must be revoked.
16. Claim 34 (as broken down by the Judge and by both counsel at trial) reads as follows (with the proposed deletions being bracketed and the proposed additions being in italics):

"A flat panel display device [capable of being] mounted to a housing comprising a front housing part and a rear housing part, the flat panel display device not being fixed to the front housing, part the flat panel display device comprising:

A back light unit including a first frame having a fastening part at a rear surface of the first frame;

A flat panel display adjacent to the backlight unit; and

A second frame

Wherein the flat panel display is between the first frame and the second frame, the first frame of the backlight unit [capable of being] is fixed to the housing through the fastening part of the rear surface of the first frame; and the fastening part is behind the flat panel display."

17. The Judge rejected the amendment involving the added words at the beginning of the claim ("the first amendment"), because the effect of the words "not being fixed to the front housing part" constituted added matter within the meaning of section 76. The Judge also rejected the proposed amendment at the end of the claim ("the second amendment") on the same ground, and on the further ground that it lacked clarity, contrary to the provisions of section 14(5), which, in paragraph (b), requires claims in patent applications to be "clear and concise".
18. I shall first consider the question of lack of clarity in relation to the second amendment, as it is sensible to consider its meaning before turning to the question of whether it adds matter. I shall then deal with the issue of added matter in relation to the two amendments. I shall then turn to the questions of infringement and obviousness.

Lack of clarity: the second amendment

19. The issue here is whether the Judge was right to refuse the second amendment on the ground that it suffered from a sufficient lack of clarity in relation to the location of the fastenings it claimed. Courts are rarely asked to consider the question of the clarity of the drafting of a patent in the context of section 14(5); it is normally a matter for an examiner in the Patent Office, at the time when the grant of a patent is under consideration. However, it was clearly something the Judge had to consider, once it was raised, in relation to the proposed amendments in this case.
20. The mere fact that a word, phrase or other provision in a patent claim is not wholly clear will not, by any means, automatically lead to the conclusion that the claim is objectionable. That would involve setting a far too high and unrealistic standard for drafting in any field; it would be particularly inappropriate to adopt such an approach to the drafting of patents, a notoriously difficult exercise in many cases. A claim needs to be as clear as the subject matter reasonably admits of.
21. In the present case, however, a sufficient degree of lack of clarity was established below, in relation to the second amendment. The Judge held that there were three possible interpretations of where a fastening had to be located pursuant to the wording of the second amendment, namely:

a) The fastening must be behind the "active area", as the Judge found;

b) The fastening must at least partially be behind the glass layer of the module, as the appellant contended;

c) The fastening must be behind the slab or module, as the respondents contended.

22. The Judge described the debate on the meaning of the second amendment, conducted in cross-examination and in legal argument, as "not contrived", and concluded that if it "gave such trouble to experienced counsel …, pity the man skilled in the art … let alone a man of business". Although he could reach a conclusion as to the meaning if he had to do so, he was of the view that it was too uncertain to satisfy section 14(5).
23. Having heard the matter debated between Mr Prescott and Mr Meade, I have come to a different conclusion. It is fair to say that, as the Judge observed, the drafting of the Patent left quite a lot to be desired, especially so far as consistency in the use of nomenclature in the specification was concerned. However, in this connection, I was impressed by two simple points made by Mr Prescott. First, a Patent Office examiner was not apparently concerned about lack of clarity arising from the terms "flat panel display" and "flat panel display device", as is demonstrated by the fact that claim 34 in its original form (which contained each expression twice) was allowed. Secondly, the word "behind" is a simple English word, the use of which should rarely lead to difficulties.
24. It seems to me that, in claim 34, in accordance with normal principles of interpretation, "the flat panel display" does not mean the same thing as "flat panel display device". At any rate as the Patent uses those words, they are different expressions, and the addressee would think that the latter is the device (ie the module or slab) which includes the former, for two reasons. First, that is the natural meaning of the two expressions; secondly, and even more importantly, in the original claim 34, "the flat panel display device" is said to "compris[e]", inter alia, a "flat panel display".
25. The flat panel display therefore cannot, as the respondents suggest, be the module or slab, in my view. The "active area" selected by the Judge as his preferred choice seems to me unlikely, as it is not readily identifiable on physical inspection of the module, unlike the glass area. The claimed invention is concerned with physically fixing the module, and is not, as Mr Meade has emphasised, directed to the method by which, or indeed in which, the module functions. Further, if, as the Judge thought, the "flat panel display" referred to in the second amendment consists only of the active area, it extends to part only of the glass, which seems to involve giving the expression a different meaning from that which it has in claim 34 in its original form. The "flat panel display device" has always been described in the claim as comprising, inter alia, a "flat panel display"; in that context, I consider the latter expression must extend to the whole of the glass and not just the active part.
26. As for the meaning of the word "behind" in the second amendment, the only possible uncertainty which has been raised is whether a fixing partly behind, and partly not behind, the flat panel device is claimed. In my opinion, a fixing partly behind is claimed. First, a fixing partly behind is "behind", albeit only partly. Secondly, if there is any inventiveness in the Patent, it would be on the basis that one could achieve a fixing behind the glass without breaking the glass: that would be as true in relation to a fixing partly behind as it would be for one wholly behind. I would add, without deciding the point, that, even if this were wrong, it may be that any uncertainty in this connection would be a "puzzle at the edge of the claim" which did not invalidate it.
27. In these circumstances, I would have allowed the appeal if it turned on the Judge's finding that the second amendment should be disallowed on the ground of lack of clarity. In my judgment, it is sufficiently clear and it applies to any fixing wholly or partially behind the glass of the module.

Added matter: the first and second amendments

The law on added matter

28. Section 75 provides that a patent may be amended following its grant. However section 76(3) imposes two restrictions on the power to amend:

"No amendment of the specification of a patent shall be allowed under section … 75 if it—

(a) results in the specification disclosing additional matter, or

(b) extends the protection conferred by the patent."

29. The effect of section 76(1) is that "additional matter" is "matter extending beyond that disclosed" by the patent in its original form. The question which thus arises is whether the first and/or second amendments would result in the disclosure of what the 1977 Act calls "additional matter" but which is generally known as "added matter" (which is the expression used in the title of the section).
30. In Southco Inc. –v- Dzus Fastener Europe Ltd [1990] R.P.C. 587, Aldous J said this at 616:

"There is no definition in the Act of what is meant by the word "matter" and I believe that this word is wide enough to cover both structural features of the mechanism and inventive concepts… What the Act is seeking to prevent is a patentee altering his claims in such a way that they claim a different invention from that which is disclosed in the application. Thus, provided the invention in the amended claim is disclosed in the application when read as a whole, it will not offend against section 76 …".

31. Assistance is also to be derived from the observations of Pumfrey J in re Palmaz's European Patents (UK) [1999] RPC 47 at 70 and 71. At 70, he said that, following the decision of the Enlarged Board of Appeal in G 01/93 Advanced Semiconductor Products [1993] EPOR 97:

"It is the settled practice of the EPO … to permit amendments … to add references to prior art in the body of the specification, and to permit limitation of the claim by reference to the prior art so acknowledged. … The acknowledged prior art will itself disclose the the distinguishing feature, which is obviously unlikely to be disclosed in the patent in suit, but of course caution must be exercised where the patentee himself describes the prior art in terms which he proposes to use in the limitation of his claim."

32. Pumfrey J expanded on this on the following page, where he said this:

"If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the patent before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and are not disclosed as having any inventive significance and introduce them into a claim deprived of that context. That is a process called 'intermediate generalisation'."

He then went on to allow two amendments on the basis that they did not "add matter not in substance disclosed in the specification". He then turned to a third amendment which he disallowed because it represented "the selection of a particular feature whose significance is nowhere disclosed, and its incorporation into the inventive concept shorn of its original context".

33. The law on added matter was considered again by the Enlarged Board of Appeal, in a case where the amendment involved a disclaimer narrowing the claim, in G 1/03 PPG/Disclaimer [2004] EPOR 331. The effect of that decision is that a specific disclaimer does not add matter (contrary to Article 123(2) of the European Patent Convention - equivalent to section 76), if it is inserted into a claim to avoid an "accidental" anticipation, but it does add matter if it is inserted to avoid a "non-accidental" anticipation – see part 2 of the decision. An accidental anticipation involves a "disclosure…belong[ing] to a remote technological field or [one whose] subject-matter suggested it would not help to solve the problem [addressed by the patent in question]". In other words, "the disclosure has to be completely irrelevant for assessing the inventive step" – see paragraph 37.
34. A little later in the same paragraph, the Enlarged Board identified an accidental anticipation in slightly different words, but to much the same effect, namely that "the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention". In conclusion on this topic, in paragraph 44, the Enlarged Board said that :

"When an anticipation is taken as accidental, this means that it appears from the outset that the anticipation has nothing to do with the invention. Only if that is established, can the disclaimer be allowed."

Added matter: the second amendment

35. It appears clear from the teaching in the specification and drawings of the Patent that the fastenings should be behind the module. However, there is no express teaching that, as the second amendment states, the fastenings should be wholly or partly behind the glass, rather than being behind the remainder of the module – ie behind the bezel outside the glass area (at the points marked "C" or "D", rather than point "B", on the drawing reproduced above).
36. At trial, the appellant's case was that this aspect was nonetheless apparent from all the drawings in the Patent of the preferred embodiments of the invention, namely figures 4 to 16. This was rejected by the Judge after a careful consideration of the drawings. Thus, he held that it was arguable that the fastenings shown on the schematic figures 4C and 5 (showing the first embodiment) and figures 9 and 10 (showing the fourth embodiment) were outside the glass area. He also considered one or two scaled off drawings of other figures of preferred embodiments, and he was not persuaded that they showed anything different.
37. In effect, he concluded that some of the drawings of the eight embodiments showed the fastenings under the glass whereas others did not. He said that the overall effect of the drawings was that, at least on the issue of whether the fastenings under the teaching of the Patent were to be in the area under the glass, or outside it, they did not "satisfy the requirement for clear and unmistakable directions". In reaching this conclusion, he was assisted by expert evidence, which was right in principle (see C van der Lely –v- Bamfords Ltd [1963] RPC 61 at 71), and renders it very difficult for the appellant to challenge the conclusion arrived at. Although such a challenge was briefly raised in the skeleton argument prepared for this appeal by counsel previously acting for the appellant, it was not pursued by Mr Prescott.
38. Furthermore, as Mr Meade says, the location of the fastenings does not appear to matter for the purpose of the teaching of the Patent, so long as they do not protrude beyond the enclosure: provided that they do not protrude beyond the limits of the perimeter of the module, there is no waste of side space. This point has two consequences. First and most simply, it renders it particularly difficult for the appellant to support its case that, without any words anywhere in the Patent to support the notion, the claims required the location of the fastenings to be behind the glass, as opposed to elsewhere behind the module, would have been clear to the notional addressee.
39. Secondly, the restriction sought to be introduced to claim 34 by the second amendment could be said to amount to what has been called parametritis – ie the introduction of an arbitrary or artificial stipulation to give a claim an apparent inventiveness or distinctiveness, when it has none. The purpose of the second amendment is to avoid claiming items of prior art (namely prior disclosures where the fastenings are under the bezel but not under the glass – ie at the point marked "B" on the above drawing) and thus invalidating the Patent. I do not propose to consider whether the charge of parametritis is justified, or, indeed, whether it would be fatal to the second amendment. It was not dealt with by the Judge, and it is not necessary for us to deal with it.
40. Mr Prescott contends that the second amendment does not amount to added matter because the possibility of placing the fastenings under the glass was revealed by some of the drawings. Accordingly, he says, as the location of the fastenings claimed by the second amendment was revealed in some of the drawings accompanying the Patent, and as the effect of the second amendment is to narrow, rather than to widen, the breadth of claim 34, it cannot constitute added matter, and should therefore be allowed.
41. In the light of the principles extracted from the authorities referred to above, it appears to me that that submission must be rejected. The appellant seeks to extract an otherwise unidentified feature (nowhere suggested to have inventive significance) which appears from a drawing of one of the preferred embodiments of the invention, and to insert it into the claim, without taking any other features of that embodiment. What the appellant is thereby doing is what Pumfrey J said was not permitted in the Palmaz case, namely to effect a so-called intermediate generalisation, that is, to extract a feature (which was neither remarked on in the specification nor of significance to the person skilled in the art) of one of the preferred embodiments of the invention and insert it into a claim, while ignoring the other features of that embodiment.
42. In his robust submissions, Mr Prescott suggested that the concept of intermediate generalisation was not to be found in the 1977 Act or in the EPC, and that it was therefore an unhelpful, even an illegitimate, concept to invoke. I do not accept that. The concept of intermediate generalisation is a well established species of added matter. As is clear from the decisions in the Advanced Semiconductor and PRP cases, and indeed from the judgment in the Palmaz case, the Enlarged Board has developed the law on added matter in ways which can be said to involve superimposing a degree of policy over what had been perceived by the English courts as a relatively pure issue of principle.

Added matter: the first amendment

43. The effect of the first amendment is that the module should not be connected to the front housing. Before amendment, the claim was indifferent to the attachment of the module. One therefore turns to consider what disclosure or claim in the body of the specification is relied on by the appellant to support the contention that this first amendment would not add matter. What is relied on is as follows.
44. First, figure 2 is said on page 7 of the Patent to be a drawing which "shows a conventional mounting structure of the LCD device for a portable computer": in other words it is said to be part of the acknowledged prior art. The figure does not need to be reproduced in this judgment, because it is common ground that, in figure 2, the display device was indeed not fixed to the front housing. Secondly, on page 10, figure 5 (stated on page 7 to show "a mounting structure in accordance with a first embodiment in accordance with the present invention") is described as having a "front case such is shown in fig 2".
45. It is said on behalf of the appellant that making the first amendment to claim 34 would not, contrary to the Judge's conclusion, involve adding any matter. This is because the reference to at least one embodiment of the invention being in accordance with figure 2 means that the notion that the display device was not to be fixed to the front housing, so far as the claimed invention was concerned, was already disclosed in the specification.
46. It seems to me that this argument will not do, and the Judge was right to reject it. All that the specification can be said to reveal on a fair reading is the following. First, that there was a disclosure (solely through the medium of a drawing) that the display device was not, or at least not necessarily, fixed to the front housing in the prior art. Secondly, that one embodiment of the claimed invention would or might (by reference to that drawing) also not have the display device fixed to the front housing. That combination of factors cannot, in my judgment, justify amending a claim to add the stipulation that the display device must not be so fixed for the purposes of that claim.
47. It seems to me that the first amendment either involves adding to claim 34 a new feature, which was not even remarked on anywhere in specification of the Patent, or it involves simply disclaiming products which have all the features of the claim save that they are fixed to the front housing.
48. If the first analysis is correct (as I think the Judge assumed), then the amendment involved attaching new practical and inventive importance to the feature it described. On that basis, the first amendment would fall foul of the rule against added matter as explained by Aldous J in the Southco case. This conclusion is reinforced by a couple of further factors. First, the amendment is arbitrary in the sense that it has nothing to do with the invention: the saving of side-space is not assisted in any way by whether the module is fixed to the housing. Secondly, the evidence before the Judge established that it was not, from a technical perspective, necessary for the display device, at least in the prior art, to be fixed to the housing.
49. If the second analysis is correct, then the first amendment was effectively a disclaimer included (according to Mr Meade and as accepted by Mr Prescott) for the purpose of avoiding claim 34 extending to an item of prior art, namely US Patent No. 5,119,204 (known as "Hashimoto"). On that basis it seems to me that the second amendment would constitute added matter in the light of the principles identified by the Enlarged Board in the passages cited above from the PRP case. Obviousness over Hashimoto cannot, in my opinion, fairly be characterised as "accidental". Hashimoto is a patent whose title is "Liquid Crystal Television Set Having Driving Circuit on Peripheral Portion and Method of Fabrication of Image Display Section". The title alone indicates that, although, as the Judge put it, "it is in a field somewhat apart from the Patent", it would be hopeless to try and suggest that this piece of prior art is in a "remote" or "unrelated" technological field. Further consideration of the specification of Hashimoto does nothing to undermine this view.

Conclusion on added matter

50. In these circumstances, I consider that the Judge was right, essentially for the reasons he gave, in disallowing the first and second amendments on the ground that they each fell foul of section 76.
51. There is, however, an additional reason, raised in the respondents' notice, for concluding that the first and second amendments should be disallowed. It is that, even assuming that each amendment, taken on its own, would be unobjectionable, they should be disallowed because, taken together (as they should be), they constitute added matter. Mr Meade's point here is that, even if one could identify the features in each of the two amendments separately in the specification, there is no disclosure of the combination of those features. If the first amendment is merely a disclaimer, that probably takes matters no further, but if (as the Judge appears to have thought) it has an allegedly inventive quality, then it appears to me that this point is probably right, although it is unnecessary to decide it. It appears to me to be supported by the reasoning of Aldous J in the Southco case, and is, in a sense, the corollary of the impermissible "intermediate generalisation" discussed by Pumfrey J in the Palmaz case.
52. The Judge rejected this additional argument in the light of the passage I have quoted from page 10 of the Patent, which, as he said, linked figure 5 (showing a preferred embodiment) with figure 2 (showing the prior art). However, this analysis seems to overlook the point that neither figure 2 nor (as the Judge had found) figure 5 disclosed the feature embodied in the second ("behind the glass") amendment.
53. On the basis that the Judge was right to disallow both amendments, the appeal can be dismissed, on the ground that it is accepted by the appellant that this must follow if it failed in its attempt to amend the Patent. Like the Judge, however, I shall very briefly consider the issues of obviousness and infringement.

Infringement

54. The respondents were alleged to infringe the Patent by virtue of a CCTV monitor. They deny infringement on the basis of two main arguments. First, while the module is mounted with fastenings which are, albeit only just, under the glass, it is also mounted with fastenings through small brackets on the side of the module. Secondly, the module is mounted on two brackets. The first argument turns on whether (as Mr Meade contends) the only fastenings must be behind the glass, or whether (as Mr Prescott contends) it suffices that at least one fastening is behind the glass. The second argument turns on the meaning of the word "frame" in claim 34: does it extend, as Mr Prescott says, to metal supports on each of the vertical (as one normally looks at the display – ie normally the two shorter) sides of the module?
55. As a matter of ordinary English usage in the context of this patent, I am of the view that the appellant's case is wrong on the first argument, but right on the second. As the appellant needs to succeed on both arguments, I think the Judge was right to hold that there was no infringement, even if the Patent could be amended.
56. So far as the first argument is concerned, I can see how the appellant's case could succeed if one were construing the claim acontextually. Where one item is fixed or fastened to another by two separate methods, it can fairly be said to involve normal use of language to say it was "fixed" or "fastened" by each method. On that basis, a single rear fastening would result in infringement (provided it was behind the glass), even if there were other means of fastening on the side of the module. However, a claim in a patent is not, of course, to be construed out of its context. In that connection, it seems to me to be a perfectly legitimate reading of claim 34 that it should only apply to modules where the sole form of fastening is as there described.
57. The whole point of the claimed invention in this case is to avoid wasted side space by using rear fastenings, and this can and will only be achieved if there are no fastening means (like the flange marked "A" on the above drawing) on the side of the module. A construction which means that a claim extends to a product which has none of the benefit of the alleged invention is not of course an impossibility. (Hence the concept of "infringing badly", as Mr Prescott mentioned). However, where, as here, there is a perfectly good literal construction of the claim which means that it does not extend to such a product, and there has been no suggestion that this construction would have any other and unfavourable consequences for the patentee, it appears to me that the latter construction should be adopted.
58. As to the second argument, the word "frame" in the context of the Patent can have a number of somewhat different meanings. Two such meanings have been raised. It could be limited to a complete surrounding structure, such as a traditional picture frame. It could also mean a basic rigid supporting structure. The latter meaning seems to me to be the one which is meant in claim 36 in the instant case. First, it is the engineering meaning. Secondly, it is a wider meaning, and, since the nature of the frame is not of significance to the inventive concept, I would have thought that the person skilled in the art would not conclude that the patentee intended to limit his claim to no purpose, and, indeed, in such a way as would enable the teaching of the Patent to be employed without any of its claims being infringed.

Obviousness

59. The Judge concluded that, although the invention claimed by the Patent did not lack novelty, it was obvious over certain prior art, namely US Patent No. 5,570,267 (known as "Ma"), Hashimoto (see paragraph 51 above), and two Japanese patent applications 09-190156 and 09-171358 (together known as "Fujitsu").
60. As has been stated in a number of cases, obviousness is very much a question for the first instance tribunal: while it is not a finding of primary fact, it is an inference drawn from the primary facts and from the expert evidence. Accordingly, it is not a finding with which an appellate tribunal will interfere unless satisfied that the first instance tribunal erred in identifying or applying the relevant principles, misunderstood or overlooked essential primary facts or relevant expert evidence, or reached a conclusion which no reasonable tribunal could have reached. In other words, in some cases the issue of obviousness is one on which reasonable first instance tribunals could differ, and in such cases it is not for this court to interfere with the first instance decisions simply because it may think that it would have reached a different conclusion.
61. Appreciating this difficulty, Mr Prescott, in accordance with the appellant's skeleton argument, contended that there were errors of principle in the Judge's approach. The appellant's argument in this connection concentrated on three alleged errors by the Judge. The first was that the alleged inventive concept of the Patent involves positioning the rear fastening behind the glass, and not, as he thought, only behind the active area. Secondly, it is said that the Judge approached the prior art in the wrong way, which was identified in the appellant's skeleton argument as involving having "to consider the effect of the prior art on a skilled person attempting to address this problem", namely the problem of how to avoid wasted space. The third alleged defect in the judgment is that the Judge had inappropriately relied on the simplicity of the claimed invention which unfairly coloured his view on obviousness.
62. In my view, each of these points should be rejected. As to the first complaint, if (as I have accepted) the Judge was wrong in rejecting the contention that the teaching of the Patent requires the rear fastenings to be behind the glass layer, he still concluded that this idea was obvious over each of the two items prior art, namely the two US patents, identified above.
63. The second complaint is that the Judge ignored the problem addressed by the Patent and failed to consider the effect of the prior art on the notional skilled person. I do not accept that. When considering Ma, the Judge referred, in paragraph 93, to the "mindset" of the addressee and rejected the submission on behalf of the appellant "that modules with flanges or making use of generous side space would naturally come to the reader's mind and so be used". He immediately went on to say that he rejected that approach for reasons he had already discussed, namely in paragraphs 9 and 28 of his judgment. It is not necessary to go into the details of the Judge's findings about the "mindset" of the notional skilled person, as the relevant point is that the Judge did consider the mindset of the addressee.
64. It is true that the Judge did not, when considering Ma (or indeed Hashimoto or Fujitsu) specifically set out the nature of the technical problem which the appellant contends the Patent identified and then solved. However, it is fanciful to think that the Judge did not have this well in mind. He had already considered that issue in some detail in his judgment by the time he turned to the issue of obviousness, and I consider it unrealistic to think that he did not have that point in mind when he was discussing obviousness. It is also suggested that, because Ma, Hashimoto, and Fujitsu did not identify the problem or a solution to it, that somehow weakens the argument of obviousness. It seems to me that, on the contrary, it is of the essence of the obviousness case that none of these patents did identify the problem or solutions: otherwise, they would have been relied on for lack of novelty, not obviousness.
65. As to the contention that the Judge somehow prejudged the issue of obviousness by down-playing the inventiveness of the alleged disclosure of the Patent, I think there is nothing in that point either. It is true that he described the alleged contribution made by the Patent as "rather modest" in paragraph 88, but that is a fair description of the alleged contribution, and it plainly does not prevent it from being inventive. Assuming that there was an inventive contribution here, it seems to me that, once one has identified it, nobody could quarrel with the description of that contribution, in the context of inventions generally, as "modest". In any event, there is no suggestion that the Judge somehow prejudged the issue of obviousness as this argument suggests.
66. Mr Prescott developed further arguments as to why the Judge was wrong to conclude the alleged invention of the Patent was obvious over the prior art relied on by the respondents. He had two general points, and a number of more specific points.
67. His first general point was that the Judge's approach to obviousness was wrong in principle, in that it fell into the same trap as that identified by Lord Diplock in his well known deprecation, in Technograph Printed Circuits Ltd –v- Mills & Rockley Ltd [1972] RPC 346 at 362, of "the familiar 'step by step' course". In my view, the Judge was not guilty of any such error. He had expert evidence from qualified experts, which Nicholls LJ characterised as "primary evidence" on the issue of obviousness – see Mölnycke AB –v- Procter & Gamble (No 5) [1994] RPC 49 at 113. This evidence supported the Judge's conclusions on obviousness. As is inevitable with almost any structured cross-examination, particularly on a topic such as obviousness, the questions put to the appellant's expert, Mr Talesfore, could be characterised as involving a step by step approach. However, I do not think that the cross-examination can fairly be said to have suffered from the vices with which Lord Diplock was really concerned, namely wisdom of hindsight, and what he characterised as a "reconstruction a posteriori" by way of a series of steps each trivial in itself. Further, the Judge's conclusion was supported by the evidence of the respondents' expert, Mr Brinkerhoff.
68. The appellant's second general point was that, at least if the inventive concept of the Patent was placing the fastening behind the glass layer as opposed to behind the LCD module as a whole, the cited prior art did not disclose it, and that in any event the cited prior art did not state that side space is saved by the rear location of the fastening which it shows. I agree with Mr Meade that this point can be dealt with comparatively simply. First, as mentioned above, the notional addressee of the Patent, a person skilled in the art who is interested in its disclosure, would not care whether the fastening was behind the glass layer as opposed to behind the module as a whole but outside the glass layer. Secondly, the fact that the cited prior art does not state that side space was saved by locating the fastenings behind the slab or module is not at any rate of central relevance. Thirdly, given that the prior art did in fact have fastenings on the rear, the solution to the problem was already part of the state of the art: it is not as if the prior art involved rear fastenings to something other than modules, in which case the appellant would at least have been able to contend that it had translated the notion of rear fastenings from a different field.
69. Finally in relation to the prior art, there are one or two points of detail which are worth mentioning if only to underline the difficulty faced by the appellant in challenging the Judge's finding. The appellant's own expert, Mr Talesfore, said that Ma was "functionally equivalent" to figure 5 of the Patent, which, as mentioned above, represented a preferred embodiment of the alleged invention. In those circumstances, it is difficult to accept the appellant's criticism of the Judge's finding that there was no "functional difference" between Ma and Figure 5 of the Patent.
70. Additionally it is worth mentioning that Mr Talesfore agreed that changes to the specific fastenings shown by Ma so as to comply with the teachings of the Patent would have been no more than workshop modifications. Indeed, it seems to me that Mr Meade is probably right to say that the only thing which prevents Ma anticipating is that it did not expressly state that the display system is to be an LCD module.
71. So far as Hashimoto is concerned, it differed from the amended claim only in that the module was fixed to the front housing rather than somewhere at the rear. On that basis, it seems to me to be difficult to quarrel with the Judge's conclusion that that the difference was non-inventive, and that the patent was therefore obvious over Hashimoto. Indeed, Mr Talesfore accepted that Hashimoto taught that the fastenings could be placed "anywhere behind the module".
72. It is right to mention that, having rejected the contention that two Japanese patents (known collectively as "Fujitsu") anticipated the Patent, the Judge did not go on expressly to consider whether the disclosure of the Patent was in any event obvious over Fujitsu (in addition to being obvious over Ma and Hashimoto). After handing down judgment, the point was raised with him, and he said, fairly and frankly, that the failure to deal with obviousness over Fujitsu was an error on his part. He then said that he considered that the disclosure of the Patent was obvious over Fujitsu, as well as over Ma and Hashimoto. However, he did not give any reasons for this.
73. In my judgment, it is pretty obvious why the Judge considered that Fujitsu, in addition to Ma and Hashimoto, invalidated the patent, as he had considered the disclosure of Fujitsu in some detail when rejecting the argument that it anticipated the Patent. At best from the appellant's point of view, the anticipation argument failed for two small reasons, the fact that it was not entirely clear whether Fujitsu taught that the boss, which received the screw fastening, was under the glass, and the fact that Fujitsu did not specifically refer to LCDs, but to other display systems. Those small differences serve to show the difficulty which anyone seeking to overturn the Judge's finding of obviousness over Fujitsu faced.
74. Finally, it is right to mention that Mr Prescott relied on one or two points of alleged distinction between the cited prior art and the Patent, which were not raised below in argument or evidence. While it would be wrong to say that raising on appeal new points of alleged distinction to defeat obviousness must always be doomed to failure, it must be a very unpromising course for a patentee to take. The points are unlikely to be convincing as they will not have been raised by the patentee's expert, and are unlikely to be fairly relied on as they will not have been put to the other party's expert: as mentioned, expert opinion is the "primary evidence" in obviousness cases. It is sufficient to say that this is not one of those exceptional cases where the new points on obviousness impressed me; indeed, in my view, they took matters no further.

Conclusion

75. For these reasons, I am of the view that:

a) The first amendment did not want for clarity;

b) The first and second amendments would each constitute added matter;

c) The respondents would not have infringed the Patent as sought to be amended; and

d) The alleged invention disclosed by the Patent is obvious.

In the light of the latter three conclusions, it appears to me that the Judge was right to decide that the claim for infringement should be dismissed and the counterclaim for revocation should be allowed. I would therefore dismiss this appeal.

Lord Justice Leveson:

76. I agree.

Lord Phillips of Worth Maltravers LCJ:

77. I also agree.