COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COURT
His Honour Judge Fysh QC
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE NEUBERGER
LORD JUSTICE LEVESON
| LG PHILIPS LCD CO. LTD
(A Company existing under the laws of the Republic of Korea)
|- and -
|Tatung (UK) Limited
ViewSonic Europe Limited
Number One Services Limited
WordWave International Ltd
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7421 4040 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr Richard Meade (instructed by Messrs Wragge & Co) for the Respondents
Crown Copyright ©
Lord Justice Neuberger :
Technical matters and the general teaching of the Patent
"(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 …."
"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."
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.
"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."
Lack of clarity: the second amendment
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.
Added matter: the first and second amendments
The law on added matter
"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."
"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 …".
"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."
"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".
"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
Added matter: the first amendment
Conclusion on added matter
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:
Lord Phillips of Worth Maltravers LCJ: