ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Arnold
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE PATTEN
| Virgin Atlantic Airways Ltd
|- and -
|Delta Air Lines Inc
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400, Fax No: 020 7404 1424
Official Shorthand Writers to the Court)
Mark Vanhegan QC and Brian Nicholson (instructed by Wragge & Co LLP) for the Defendant/Respondent
Hearing date: 2nd February 2011
Crown Copyright ©
Lord Justice Jacob (giving the first judgment at the invitation of Smith LJ):
i) instructions are provided by Contour for assembly of the Solar Eclipse seat units on the aircraft;
ii) those instructions set out only a single way to assemble the seat units;
iii) following those instructions inevitably results in a seating system within claim 1;
iv) those instructions are sufficiently detailed to show the precise position of every component and their relative positions;
v) Contour either undertakes or partially undertakes the assembly, or at least provides assistance for the assembly by way of supervision or inspection;
vi) the assembly of seat units is designed as a bespoke whole for the specific use of each specific customer, such as Delta;
vii) assembly is within the routine skill of the ordinary engineer;
viii) a number of seat units are assembled together, albeit not on an aircraft, by Contour at an FAI ["First Article Inspection" which means a mock-up of the cabin of the aircraft into which the seats will be fitted] in the UK so that the customer, such as Delta, is able to determine how the units will fit together;
ix) airline seating systems are normally sold as kits; and
x) practical constraints necessitate, or least make it desirable, to sell seating systems as kits.
xi) In practice neither aircraft manufacturers nor airlines make aircraft seats. They are designed and made by specialist companies such as Contour, selected by the airline and fitted to the aircraft by its manufacturer. Here, for instance, Contour send out ship-sets to Seattle. Their employees help Boeing install the seats;
xii) There is no sensible way of using the ship-sets supplied by Contour other than to fit them into the specific type of aircraft for which they are intended. Of course in theory you could fit the seats anywhere – a cinema for example. But that has no commercial reality.
a) Do Contour's acts within the UK fall within the scope of the amended Patent, and more specifically does the Patent claim cover a ship-set before it is installed on the aircraft?
b) Can the manufacture and sale in the UK of a complete kit of parts to assemble a device which falls within a patent claim infringe?
c) Can the manufacture in, and export from, the UK of an incomplete kit of parts for assembling abroad a device which falls within a patent claim infringe?
(1) Contour did not infringe because the main patent claim (claim 1) required a seating system comprising a plurality of seat units assembled and arranged on an aircraft. The system was only assembled abroad.
(2) As a matter of law it was arguable that manufacture in the UK of a complete kit of parts for assembling a patented device could infringe a patent.
(3) But as a matter of law it was not arguable that the manufacture in the UK of an incomplete kit of parts subsequently exported could infringe. [Of course if the incomplete kit was used in the UK to assemble the whole patented article, there might be contributory infringement pursuant to s.60(2))]
It followed that Contour did not infringe: they did not make an assembly within the claim and only made an incomplete kit of parts in the UK, a kit never used to make the patented apparatus within the UK.
Principles for summary Judgment in patent cases
Claim 1 and its construction: whole aircraft point
 A passenger seating system for an aircraft, comprising a plurality of seat units (40),
 each seat unit defining only one notional longitudinal seat axis (C-C) and
 comprising a supporting structure (42) adapted for attaching the seat unit to a floor (30) of an aircraft (12) and
 means for forming or being configurable for forming a seat comprising a seat-pan (71) and a back-rest (72),
 wherein each seat unit further comprises a foot-rest (65) positioned forwardly of the seat,
 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),
 wherein at least some of the 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 unit is configured as a seat,
 each seat unit further comprising means for forming or being configurable for forming a substantially flat bed (47,48,67,74,76),
 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,
 wherein said seat forming means and said bed forming means comprise one or more movable passenger-bearing elements which are selectively configurable to form, in a seat mode, at least part of the seat for a passenger or, in a bed mode, at least part of said flat bed, and
 wherein the flat bed in the bed mode is disposed at substantially the same level above an aircraft floor (30) as the seat-pan (71) in the seat mode, and
characterised in that
 the flat-bed extends into said rearward space (36) behind the seat,
 in that said acute angle is in the range 30 - 60°, and
 in that a generally triangular passenger support element is disposed in said rearward space (36) substantially coplanarly with said one or more movable elements when said movable elements are configured in the bed mode and is adapted to form part of said bed."
"If a claim commences with such words as: 'Apparatus for carrying out the process etc …' this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim. Similar considerations apply to a claim for a product for a particular use. For example, if a claim refers to a 'mold for molten steel', this implies certain limitations for the mold. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim. Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see IV, 4.8)."
"Once again, we have been unable to find a single example of a claim for a product "for" a purpose which has been construed by the EPO as meaning anything other than "suitable for"."
That was a challenge. Delta was unable to respond with any case to the contrary.
(1)  called for seat units being arranged to form a column …defining a notional longitudinal column axis. That, he submitted, would only be the case when the seats were arranged.
(2) Similarly for integer  which calls for a column in which seat units are arranged side-by-side … at an acute angle to the notional column axis. That, he submitted, will not be so unless and until the seats are installed. There will not even be a column axis unless and until the ship-set is installed.
(3) Again in  the seat units are arranged to be disposed against a sidewall of the aircraft .. thereby to define between the rear of each seat and the sidewall a space. How, Mr Vanhegan asked forensically, can they actually be so arranged absent a sidewall of an aircraft? Moreover, he submitted, the whole point of the invention was space-saving on an aircraft. You cannot save that space in the abstract. The space is only saved in an aircraft – the space defined by the claim.
(4) And  talks about the actual acute angle – which cannot exist absent installation.
(1)  calls for a supporting structure adapted for attaching the seat unit to a floor of an aircraft. This is the language of pre-fitment. You do not say something is adapted for attaching if you actually mean it must be attached. And you do not speak of adapted for attaching to a floor of an aircraft if you mean the unit must be actually attached to the floor of an aircraft.
(2) Similarly you would not speak in element  of an aircraft floor if you meant the floor of the aircraft to which the seat was already fitted.
(3) As for , Mr Meade submitted it supported Virgin's construction, not Delta's. This was by reason of the words arranged to be disposed adjacent a sidewall. If the claim required that the units were in fact so disposed, you would merely say that. Arranged to would be completely redundant words on Delta's construction. But they must have been intended to add something: that in context could only be a capability of being so disposed.
"In my judgment it follows from this logic [i.e. that of this Court in its first judgment in the Contour action] that the skilled reader is also deemed to know about, and take into account, the following matters:
(i) It is possible to frame claims in a variety of different ways. In particular, claims may be directed, subject to constraints on unity of invention, both to the whole of an inventive product and to its key components separately.
(ii) It is possible to infringe a patent both directly under section 60(1) of the Patents Act 1977 corresponding to Article 25 of the Community Patent Convention and indirectly under section 60(2) of the 1977 Act corresponding to Article 26 CPC. As discussed in more detail below, the latter type of infringement involves the supply or offer to supply of "any of the means, relating to an essential element of the invention" i.e. less than the whole of a claimed product.
(ii) Patents are territorial in nature. This has two aspects to it. The first is that a UK patent prevents persons other than those "entitled to work the invention" (to use the language of section 60(2)) from doing things in the UK. The second is that a patentee can in principle obtain, and may well have in fact obtained, parallel patent protection in other countries. In saying this, I am not going so far as to presume that the skilled person will actually carry out a search to locate any corresponding foreign patents, even though a well-advised person would do so and nowadays would be able to locate most such patents quickly and easily using electronic databases."
Lord Justice Patten:
Lady Justice Smith: