ON APPEAL FROM THE CHANCERY DIVISION
The Hon Mr Justice Lewison
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE PATTEN
THE HON MR JUSTICE KITCHIN
| Virgin Atlantic Airways Limited
|- and -
|Premium Aircraft Interiors UK Limited
for the Appellant
Mark Vanhegan QC and Miss Kathryn Pickard (instructed by Wragge & Co LLP)
for the Respondent
Hearing dates: 5/6/7 October 2009
Crown Copyright ©
Lord Justice Jacob:
Setting the Scene
i) Is the scope of claim 1 of the Patent limited to systems which employ "flip-over" seats (see below for what this means)?
If it is not so limited:
ii) Is the Patent invalid for adding matter not disclosed in the original application ("the Parent")?
iii) Does claim 1 include within it what is disclosed in British Airways ("BA") patent application GB 2,326,824A ("the BA Application")? If so it is invalid for want of novelty.
iv) Does claim 1 cover systems which use rotatable seat/beds? If so, it will be invalid for want of novelty over a prior art patent application called Airbus (EP 1,211,176).
v) If not, is claim 1 nonetheless obvious over Airbus or the BA Application or common general knowledge ("cgk")?
vi) If Claim 1 is obvious, is claim 9 also obvious?
Principles of claim construction
 The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma v Pharmacia Italia  EWCA Civ 137 and refined by Pumfrey J in Halliburton v Smith International  EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen v Hoechst Marion Roussel  RPC 9. An abbreviated version of them is as follows:
(i) The first overarching principle is that contained in Article 69 of the European Patent Convention;
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively—the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone—the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(vii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(vii) It further follows that there is no general "doctrine of equivalents."
(viii) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(ix) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.
"… the technical features mentioned in the claim shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim."
"The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain:
(a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art;
(b) a characterising portion – preceded by the expression "characterised in that" or "characterised by" – stating the technical features which, in combination with the features stated in sub-paragraph (a), it is desired to protect."
Does the skilled reader when he sees such a two-part claim take this rule into account so that he at least expects the pre-characterising portion to describe matter which is part of the prior art?
 … reads the specification on the assumption that its purpose is to both describe and demarcate an invention – a practical idea which the patentee has had for a new product or process.
 … it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new ..
 … The words will usually have been chosen on skilled advice. The specification is not a document inter rusticos for which broad allowances must be made.
"Reference numerals … are designed to be, and can be, useful tools to elucidate the inventor's intention. As such they may, depending on the circumstances, help to illustrate that the inventor intended a wide or narrow scope for his claim. On the other hand they cannot be used to import into the claim restrictions which are not foreshadowed by the language of the claim itself."
2.2. Under Rule 29(1)(a) of the Implementing Regulations to the EPC, the preamble of a two-part (independent) claim must contain the technical features of the subject-matter of the claim which, in combination, are part of the prior art. In principle, therefore, it may be assumed that the features included by the applicant in the preamble to the claim as filed, in combination with one another, are no longer new. On the other hand, the claim as originally worded must not be regarded as a binding statement as to the novelty of those features, but simply as an attempt to summarise the essential features of the invention. In the view of the Board, the question of which features are known and hence to be included in the preamble in the event of the application being successful must be decided purely in the light of the objective facts of the case.
3. In the opposition proceedings there is no reason officially to insist on a change in the wording of the claim simply because one feature in the preamble to a two-part claim does not belong to the state of the art (Rule 29(1)(a) EPC).
The Board itself said:
 In establishing the novelty of the subject-matter of the disputed patent it was indeed shown that the feature stated in the opening part of Claim 1 … does not, as the appellants claim, belong to the state of the art …. in conjunction with the other features in the preamble. Nevertheless, the Board sees no reason for it solely on this account, to insist, that the wording of a patent claim already granted should be amended. The Board takes Rule 29(1) EPC for what it is - an implementing regulation, primarily relevant to the patent grant procedure and therefore no more constituting a ground for opposition than for example Article 84 EPC (reference to T 23/86 of 25 August 1986, OJ EPO 1987, 316). Claim 1 can therefore be maintained in the text as granted.
Neither the Article nor the Rule makes any reference to the necessity or desirability that "the characterising portion of the claim should fairly set out the inventive step. The contention by the Appellant seems to be based on the false conception that the inventive step resides in the characterising portion of the claims. It is, however, the subject-matter of the claim as a whole which embodies the invention and the inventive step involved.
That passage is nothing to do with claim construction. It is about obviousness and is saying, as must be so, that when considering obviousness you must look at the claim as a whole.
A mechanism was provided so that the passenger could cause the seat to slide forward to meet the "ottoman". Note that the head portion moved slightly backwards within the pod – about 4 to 5 inches in practice.
Although not in practice used by BA or any of the other airlines that followed the possibility of an inward facing herringbone was known to all.
BA Yin Yang
The seating unit defines a notional, longitudinal seat axis, and a plurality of such seating units may be arranged with the cabin side-by-side in a longitudinally offset relation with respect to the longitudinal axis of each seat, with each seating unit being oriented at an acute angle to the longitudinal axis of the aircraft fuselage, so as to define a generally triangular or trapezoidal space to the front or rear of each seating unit (according to whether the seating units face outwards or inwards relative to the cabin). The space is used to accommodate a counter-top to one side of an adjacent seating unit and optionally a cupboard or other storage space.
We emphasise the words about the space defined. One can see it in fig. 4 of the BA Application (see  above). The arrow 21 runs through it.
… has the advantage that by incorporating an additional, secondary seat in the flat sleeping surface together with the back-rest, seating portion and leg-rest of the primary seat, it is possible to form a long seating surface which is able to accommodate comfortably passengers having a height of greater than 6ft (1.83m).
i) It requires more cabin space than a conventional layout of seats;
ii) The seat cushioning is designed principally for use as a seat and not as a bed (the same disadvantage that it had referred to in paragraph );
iii) The seat itself occupies a very large floor area and is therefore unsuitable for use in business class.
i) To provide improved accommodation in business class incorporating a flat sleeping surface of maximal length and preferably maximal width;
ii) To provide an improved passenger accommodation unit adapted to provide self-contained individual seating and sleeping accommodation, particularly for use in business class;
iii) To provide a passenger accommodation unit which can be converted into a bed of maximal length;
iv) To provide a seating system which optimises use of space within the cabin;
v) To provide a seating system which has a substantially uncrowded appearance.
According to the present invention, there is provided a passenger seating system for an aircraft, comprising a plurality of seat units, each seat unit defining a notional longitudinal seat axis and comprising a supporting structure adapted for attaching the seat unit to a floor of an aircraft and means forming or being configurable for forming a seat comprising a seat-pan and a back-rest, said seat units being arranged to form a column defining a notional longitudinal column axis, in which column said seat-units are arranged side-by-side in longitudinally off set relation at an acute angle to the notional column axis, thereby defining a space to the rear of each seat, each seat unit further comprising means forming or being configurable for forming a substantially flat bed, so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat (Seating system of the type disclosed e.g. in [the BA Application]), and characterised in that the flat-bed extends rearwardly into said space behind the seat. The invention also provides seat unit for such a passenger seating system.
The difference between claim 1 and the consistory clause lies in the fact that the latter includes the italicised passage – one upon which Mr Meade relies and one which Mr Vanhegan fairly accepts causes him difficulty as we shall explain below. Immediately following the italicised passage is a description of the "space-packing" idea – using the space behind the seat formed by the inward herringbone to increase the size of the bed.
 … Said first and second elements may [misprinted as "my"] occupy all of the space to the rear of the seat.
 [part of the description of the specific embodiment] … The space 36 behind each seat 71,72 is thus used to extend the length of the bed surface 47,48, 67, 74, 76 provided by the seat unit 40 in the bed configuration rearwardly of the seat 71,72 into said space 36.
 [again speaking of the specific embodiment] … the seat units 40 … are arranged such that to the rear of each seat 71,72 the seat unit defines a generally triangular or trapezoidal space 36 which is occupied by the first surface 40 and the second surface 48 of another seat unit 40.
Claim 1 of the Patent
(a) A passenger seating system for an aircraft, comprising a plurality of seat units (40);
(b) each seat unit;
i. defining a [single, fixed] notional longitudinal seat axis (C-C); and
ii. comprising a supporting structure (42) adapted for attaching the seat unit to a floor (30) of an aircraft (12); and
iii. means forming or being configurable for forming a seat comprising;
a) A seat pan (71); and
b) A back-rest (72);
iv. further comprising means forming or being configurable for forming a substantially flat bed (47, 48, 67, 74, 76);
(c) said seat units being arranged to form a column (29) defining a notional longitudinal column axis (B-B), in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to the notional column axis (B-B);
(d) wherein at least some of the said seat units are arranged to be disposed adjacent a sidewall (26, 28) of the aircraft and face inwardly thereby to define between the rear of each seat and the sidewall a space (36) when the seat is configured as a seat;
(e) so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat,
and characterised in that;
(f) the flat-bed extends into said rearward space (36) behind the seat.
The rearrangement consists in putting feature (b)(iv) in the place shown rather than later in the claim. It makes the claim more intelligible because items (i)-(iv) are all features of the seat. However it has perhaps a danger: the "further comprising" is a little more likely to be read as something entirely different from the seat-pan and back rest. Obviously when one construes the claim one must go by the way it is in the patent, not the re-arrangement.
Construction Issue (i): Is the claim limited to systems which use flip-over seats?
a) One of the objects of the invention is to optimise space ();
b) Fig. 1 shows the space which would be lost if the bed did not extend rearwardly; and
c)  says:
Each seat unit is provided with a self-contained means for forming a substantially flat bed and the use of space within the cabin is optimised by positioning the flat bed to extend rearwardly behind the seat into a space defined by the arrangement of the seats.
Issue (ii) Added Matter
"The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed."
The heart of the objection
The Parent application
It has been found surprisingly that a plurality of passenger accommodation units according to the present invention may be arranged within a business-class section of an aircraft cabin without significantly reducing the number of seats. Each seat defines a notional longitudinal axis that extends fore-and-aft relative to the normal manner of using the seat. It has been found that a maximal number of the passenger accommodation units according to the present invention may be accommodated within an aircraft cabin if each unit is arranged with its notional axis to subtend an angle in the range of 35 to 550 with the longitudinal axis of the aircraft."
"Thus according to another aspect of the invention, there is provided a seating system for a passenger vehicle, particularly an aircraft, comprising a plurality of seat units, each seat unit defining a notional longitudinal seat axis and comprising a supporting structure adapted for attaching the seat unit to a floor of a vehicle and means forming or being configurable for forming a seat comprising a seat-pan and back-rest; characterised in that said seat units are arranged to form a column defining a notional longitudinal column axis, in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to the notional column axis, thereby defining to the rear of each seat [sic], each seat unit further comprising means forming or being configurable for forming a substantially flat bed, a major proportion of which bed is disposed forwardly of the position of the seat, which bed extends rearwardly into said space to extend the flat-bed."
"The present invention thus provides a seating system which is particularly suited for a business-class cabin of a passenger aircraft. The seating system of the present invention provides individual seat units having back-rests and seat-pans and optional foot-rests to allow passengers to rest their legs in an elevated position during a flight. Each seat unit is provided with self-contained means for forming a substantially flat bed, and the use of space within the cabin is optimised by positioning the flat bed to extend rearwardly behind the seat into a space defined by the arrangement of the seat units. Surprisingly, it has been found that in accordance with the present invention it is possible to provide flat beds within a business-class section of a passenger aircraft having a length of up to 7ft (2.13 metres) without substantially sacrificing head-count. Furthermore, the applicants have found that the seat units of the present invention can be positioned to give the cabin a substantially uncrowded appearance."
"1. A passenger accommodation unit for a vehicle, particularly an aircraft, which is adapted to provide self-contained, individual seating and sleeping accommodation for a passenger, said seat assembly comprising: supporting structure for supporting said unit off the floor of a vehicle; one or more movable passenger-bearing, structural components; and means for connecting said movable, structural components to said structure such that said components can be selectively moved between a seat configuration, in which a plurality of passenger-bearing surfaces on said one or more structural, movable components or said supporting structure form a seat for the passenger, and a bed configuration, in which a plurality of said bearing surfaces are disposed substantially coplanarly and substantially contiguously to form a bed for the passenger; characterised in that a least one of said movable components is double-sided, comprising first and second opposite sides, one of said sides having a first seat surface that forms part of the seat in said seat configuration, and the other side having a second bed surface that forms part of the said bed in said bed configuration."
"44 A seating system for a passenger vehicle, particularly an aircraft, comprising a plurality of seat units, each seat unit defining a notional longitudinal seat axis and comprising a supporting structure adapted for attaching the seat unit to a floor of a vehicle and means forming or being configurable for forming a seat comprising a seat-pan and a back-rest; characterised in that said seat units are arranged to form a column defining a notional longitudinal column axis, in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to a notional column axis, thereby defining a space to the rear of each seat, each seat unit further comprising means forming or being configurable for forming a substantially flat bed, a major proportion of which bed is disposed forwardly of the position of the seat, which bed extends rearwardly into the said space to extend the flat-bed."
Has matter been added?
Added matter - conclusion
Issue (iii) Does claim 1 cover what is disclosed in the BA Application?
i) The BA Application shows, and BA First had, a seat in which the seat moves back as one changes it to bed mode – see  above.
ii) The space behind the seat in seat mode is defined by the rear of the seat and the sidewall.
iii) So feature (f) of the claim is satisfied.
iv) Thus the BA Application (and BA First) anticipates the claim.
Issue (iv) Does claim 1 include rotatable seat/beds?
(a) If the seats could rotate the whole the whole point of space-saving would be lost. That is an unlikely construction for a skilled man reading the claim purposively.
(b) Feature (c) calls for the seats to be in a column axis in which the seat units are arranged at an acute angle to it. An acute angle is not the sort of language one would use to describe a variable angle.
(c) For the reasons we have already given, the words used would be understood as part of a reference to the BA Application – and that has non-rotatable seats.
(d) The specification itself only contemplates a fixed angle – see e.g.  1039-44. "As perceived by a passenger .. the seat unit defines a notional longitudinal seat axis. …"
Issues (v) and (vi) Is claim 1 or claim 9 obvious over Airbus or the BA Application or cgk?
(1)(a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
 It may well be that increasing the angle of installation of the seat means that inherently a larger potential usable space behind the seat. But that still does not answer the question: was it obvious to use that space for extending the bed? The fact that no airline had done it before Virgin Atlantic is not a promising start to an attack of obviousness over common general knowledge. Nor do I consider that Mr Chapman went as far as saying that it was obvious and uninventive to allocate the triangular area behind the seat in an inward facing herringbone to that seat rather than to the seat behind. The closest he came was to say that it was a question of judgment. But a judgment can be inventive. And I think that Mr Meade was right to say that in cross-examination he came close to accepting (if he did not actually accept) that it was not obvious to do that.
To remove the swivel seat would have run directly counter to the teaching of both citations; as would the reinstatement of the ottomans. Mr Chapman said in cross-examination that there would be no reason to develop a seat that swivelled and then turn round and lock that out to make it fixed. The only reason that he gave for removing the swivelling mechanism from an existing swivelling seat was that it would be worth saving the product if the swivel mechanism proved unreliable. This evidence leads to the conclusion, in my judgment, that in the case of all the prior art citations where swivelling seats were used, it would not have been obvious to take out the swivel.