COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
The Hon Mr Justice Floyd
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE PATTEN
| Schütz (UK) Ltd
|- and -
|Werit (UK) Ltd
UK LLP) for the Appellant
Mr Simon Thorley QC and Mr Thomas Mitcheson (instructed by Messrs Hogan
Lovells International LLP) for the Respondent
Hearing dates: 9 and 10 February 2011
Crown Copyright ©
Lord Justice Jacob:
a) whether the Patent was invalid for insufficiency or was so ambiguous that it could not be infringed;
b) Whether the Patent was invalid for added subject matter; and
c) Whether, if valid, what Delta does, amounts to an infringement within the meaning of s.60(1) of the Patents Act 1977 (corresponding to Art. 25 of the Community Patents Convention 1989). I call this the "Making?" point.
Although '307 (which the Judge held valid but not infringed) is no longer directly in issue before us, the first of the validity points was the same for that patent as for the Patent. The Judge dealt with the point in the context of '307 rather than this Patent, so it is necessary to refer to '307.
[F] and in that the grid rods are so connected together by resistance pressure welding of the four contact locations at each crossover point that the rods have common tangential planes inside and outside.
The italicised portion meant a flush grid surface.
[E] and, at each crossover point between the longitudinal edges of the indentations of two grid rods lying one over the other at right angles, there result four contact locations disposed in a plane, each with a build-up of metal corresponding to four times the grid rod wall thickness,
 967 is also concerned with IBCs. The starting point is the weld joint in the cage of the '307 patent. The weld in this joint is said to be subject to static bending stresses because of stacking of containers and vibration during transport. The object of the invention is stated to be to increase the durability of the joint by relieving the stresses on the joint. The patent explains that this can be achieved by introducing a dimple on either side of the weld and a central raised portion. The idea is that the dimpled portions create more readily bendable portions, thus relieving the stress on the weld itself.
 Everything is shown in Figure 2 which is a perspective view of the configuration:
Claim 1 is in the following form (again without numerals and with added reference letters):
[A] Pallet container for the transporting and storing of liquids, having a flat pallet, an exchangeable inner container made of plastic material with an upper, closable filler opening and a lower emptying device and also, surrounding the inner container, one outer sleeve which consists of vertical and horizontal lattice bars made of metal which support the plastic inner container filled with liquid,
[B] the lattice bars which are configured as tubes being indented at the intersection points to form trough-like, double-walled recesses extending in the longitudinal direction of the lattice bars
[C] in such a manner that at each intersection point between the longitudinal edges of the recesses of two lattice bars lying perpendicularly one above the other there arise four contact points with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, and the four contact points of the two lattice bars being welded together at the intersection points
[D] characterised in that the trough-like recesses of the vertical and horizontal lattice bars have a central raised part extending across the cross-section of the recesses,
[E] two lattice bars respectively lying one above the other at the intersection points are welded together at the four contact points of these raised parts and the incisions of the recesses of the lattice bars adjacent on both sides to the raised part
[F] with the contact and weld points form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part for relieving the weld joints at the intersection points upon application of static and/or dynamic pressure on the lattice sleeve.
 The part of feature [D] which requires the central raised part to "extend[ing] across the cross-section of the recesses" was added in the course of prosecution, and is derived from the figures rather than any particular words in the specification. It forms the subject of the objection of added matter.
Point (a) The construction of feature [C]
At the crossover points 15, the vertical and horizontal grid rods 4, 5 are drawn in to form trough-like, double-walled indentations 16 extending in the longitudinal direction of the rods, such that the two curved longitudinal edges 18, 19 of the wall 17 of the indentations 16 in the tubular rods 4, 5 run between a tangential plane 20-20 and a parallel intersecting plane 21-21 of the grid rods (Figure 9). This formation of the grid rods 4, 5 has the result that, at each crossover point 15, four contact locations 22 result, each with a build-up of material corresponding to a fourfold wall thickness 23 of the grid rods 4, 5 (Figures 10 to 12), between the longitudinal edges 18, 19 of the indentations 16 of two grid rods lying over each other at right angles, the said contact locations 22 lying in one plane, namely the intersecting plane 21-21.
Not only do the very drawings referred to not show a fourfold wall thickness of weld, but the description describes how the fourfold wall thickness is achieved, namely simply by having the indentations on the rods at the cross-over points. At those points you do indeed get four walls, though the outer ones do not touch the inner two (which of course do touch). You have all four walls contributing to the strength of the join.
 … I do not think that the claim is requiring anything more than the bringing together at the weld points of the two double- walled sides of the troughs. If this is done, the contact for the creation of the projection weld is created. There may, of course, come a point where the troughs are not drawn in sufficiently for it to be possible to say that there is a double-walled indentation, or where the lack of drawing-in prevents the feature of common tangential planes from being realised. But this question depends on those features. The quadruple wall thickness feature requires only the bringing together of the four walls at the weld.
Point (b) Added Matter?
[D] characterised in that the trough-like recesses of the vertical and horizontal lattice bars have a central raised part extending across the cross-section of the recesses,
 It is true that no particular attention is drawn to the requirement of the extent of the raised portion in the application as filed. But the objection of added matter does not arise every time a feature is taken from the body of the specification and placed in the claims. If that were so very few amendments of this kind would ever be allowed. The objection comes when one strips the feature of its context. I do not see that this can be said to have happened in the present case. The raised portion was always a feature of the claim: the amendment adds more detail, but the context is identical.
Point (c) The Making? Point.
Pallet container for the transporting and storing of liquids, having a flat pallet, an exchangeable inner container made of plastic material with an upper, closable filler opening and a lower emptying device and also, surrounding the inner container, one outer sleeve which consists of vertical and horizontal lattice bars made of metal which support the plastic inner container filled with liquid,
This can be paraphrased: an IBC consisting of three items: a pallet, a bottle and a cage. The remaining features of the claim spell out the details of the cage. It is those features which make the claim novel and inventive. There is nothing special about the pallet or bottle, save that the bottle co-operates with the frame – the frame is required to surround the bottle. The interaction of frame and bottle is what gives the IBC as a whole its strength and stability. The bottle is expressly said to be "exchangeable."
The Domestic Legislation
(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.
For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.
(6) References in this Act to any of the following conventions, that is to say -
(a) The European Patent Convention ["EPC"];
(b) The Community Patent Convention ["CPC"]
(c) …. ;
are references to that convention or any other international convention or agreement replacing it, as amended or supplemented by any convention or international agreement (including in either case any protocol or annex), or in accordance with the terms of any such convention or agreement, and include references to any instrument made under any such convention or agreement.
(7) Whereas by a resolution made on the signature of the [CPC] the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the [EPC], the [CPC] … have in the territories to which those Conventions apply.
Lord Chancellor (Lord Elwyn-Jones): "One point which was referred to by a number of noble Lords, including the noble Lords, Lord Lyell and Lord Alexander of Potterhill, was the desirability, where we are harmonising our own domestic law with the provisions of the Convention, that we should so far as possible use the same language. Of course, the difficulty we are in here is the difficulty of translation. I remember some time ago addressing the Council of Europe and I referred to the "common lawyers of the United Kingdom". This was translated as "les juristes très ordinaires du Royaume Uni"! So we do confront these questions of translation, but we are certainly prepared to examine the delicate question that was raised in regard to Clause 1 of the Bill as to the alternative words that were used there. But in principle, obviously, if we are going to apply the same law we should try to do our best to use the same language." HL Deb, 24 January 1977, vol 379, cols 313-314
It would seem that the Lord Chancellor at least was not aware that English was already an authentic language of the treaties. Quite why "our best" was not done remains a mystery.
The International Legislation
69(1) The extent of the protection conferred by a European patent … shall be determined by the claims.
(I skip the bit about interpretation and the Protocol to Art. 69 which have no relevance here).
Prohibition of direct use of the invention
A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent:
(a) from making, offering, putting on the market, or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes.
The approach to the legislation
The question in this case
 In my judgment the correct approach is to ask whether, when the part in question is removed, what is left embodies the whole of the inventive concept of the claim. I think that Mr Meade's approach, with its emphasis on the form rather than the substance of the claim, is too mechanical, and leads to results which are contrary to principle.
He went on to hold that it was the cage which embodied the whole of the inventive concept of the claim. Hence, he reasoned, putting a new bottle into a cage was not "making" the patented article.
The decision of the Court of Appeal in the Solar case [ RPC 537] is important for the principles which it states, not for the decision on its facts which (though not wholly dissimilar from those of this case) were different in some important respects. The passages from the judgment of Buckley L.J. which I have already cited do appear to set quite a demanding standard (from the plaintiff patentee's point of view) before reconditioning moves beyond genuine and legitimate repair. This last point is less technical than many of the other issues in the case, but I have not found it an easy one. The question of degree is quite finely poised. But gathering some guidance in principle from the authorities already mentioned, I am narrowly persuaded that the defendants' reconditioning operations should be regarded as repairs, even though they are extensive and involve the replacement of the whole double mesh which is central to the inventive concept of 948. The frame is nevertheless an important part of the whole assembly. It is not insignificant, nor is it retained simply for show. It is retained because it is an essential component (on which the double mesh is pre-tensioned) and the screen's useful life is in that way prolonged.
 The concept of implied licence in patent cases does not seem apt now infringement has been defined in the Patents Act 1977 which was an Act giving effect to European obligations. In any case it suffers from the deficiency that such a licence could be excluded by agreement or the circumstances surrounding the sale by the patentee. In my view the reason why genuine repair does not infringe a patent is that, as pointed out by Lord Templeman and Lord Hoffmann, it does not amount to an infringing act. Section 60 states that a person infringes "if, but only if … in relation to the invention without consent of the proprietor … where the patent is a product, he makes … the product." The invention is that specified in the claims (see section 125). Thus a person who carries out a repair, e.g. patching a tyre, will not infringe a patent for the tyre as he will not make the tyre. However a person will infringe the patentee's rights if he does, without the patentee's consent, an infringing act. Consent must mean contractual consent and it would not be right to conclude that a patentee who sells a product thereby consents to infringing acts being carried out. The disposal by a patentee results in exhaustion of his patent rights and therefore the owner of the article may do whatever he wants with it including having it repaired. But that does not mean that he has a licence to use the rights given to the patentee in section 60. It follows that acts as prohibited by section 60 are infringing acts whether or not they can be categorised as repairs. It is therefore better to consider whether the acts of a defendant amount to manufacture of the product rather than whether they can be called repair, particularly as what could be said to be repair can depend upon the perception of the person answering the question. Even so, when deciding whether there has been manufacture of the product of the invention, it will be necessary to take into account the nature of the invention as claimed and what was done by the defendant.
26 Mr Fysh supported the judge. He accepted that whether or not there had been manufacture or repair was a matter of degree. He drew attention to the fact that the frames were essential elements of the invention and the cost of replacing the meshes was relatively modest. All that Screen Repair had done was to prolong the life of the most substantial element of the screen assembly, namely the frame.
27 Mr Silverleaf submitted that Screen Repair had manufactured a screen assembly. He drew attention to the process carried out by Screen Repair which involved stripping a frame, sandblasting, re-coating with adhesive, supply of new mesh, tensioning and heating to cure the adhesive. That it amounted to manufacture of the assembly was clear when it was appreciated that the frame supplied was not normally returned. He submitted that what was done should be contrasted with the on-site repair made by filling up holes in the mesh with a rubber compound.
28 In my judgment Mr Silverleaf is correct. Screen Repair do, without the consent of United Wire, make a product of the invention. They prepare a frame obtained from an assembly made by United Wire. They then add two meshes and tension them so that the whole assembly has the features of claim 1. In effect the steps taken by them are equivalent to the purchase on the open market of frames and then using them to produce an assembly. Of course the frames they use were made by United Wire, but unless it can be said that by the sale of complete screen assemblies United Wire had licensed the actions taken by Screen Repair, that cannot make the difference. No such licence can be implied as it would amount to a licence to manufacture rather than an exercise of a right to quiet enjoyment of a screen made by United Wire.
29 In my view, the judge came to the wrong conclusion. I accept, as he said, that the frame is an essential component part of the whole assembly, but that does not decide the issue. In the Dunlop case, the wires were also important and essential elements of the invention, but even so, there was infringement. To characterise the work done by Screen Repair as repair does not in my view decide the issue of whether they had manufactured the product of the invention. In the present case Screen Repair reconditioned or repaired a frame made by United Wire and re-used it to make an assembly as claimed in claim 1. That in my view amounted to infringement.
 Aldous L.J., with whom the other Lords Justices agreed, said that in this case the defendants had made the product. They had repaired or reconditioned the frame and then used the frame to make a screen in exactly the same way as if they had bought the frames as components from a third party.
 My Lords, the point is a very short one and in my opinion the Court of Appeal was right.
 Where however it is alleged that the defendant has infringed by making the patented product, the concepts of an implied licence or exhaustion of rights can have no part to play. The sale of a patented article cannot confer an implied licence to make another or exhaust the right of the patentee to prevent others from being made.
 Repair is one of the concepts (like modifying or adapting) which shares a boundary with "making" but does not trespass upon its territory. I therefore agree with the Court of Appeal that in an action for infringement by making, the notion of an implied licence to repair is superfluous and possibly even confusing. It distracts attention from the question raised by section 60(1)(a), which is whether the defendant has made the patented product. As a matter of ordinary language, the notions of making and repair may well overlap. But for the purposes of the statute, they are mutually exclusive. The owner's right to repair is not an independent right conferred upon him by licence, express or implied. It is residual right, forming part of the right to do whatever does not amount to making the product.
 ….. I think, with great respect to the judge, that he did not correctly identify the patented product. He said that the frame was an important part of the assembly and that the defendants had prolonged "the screen's useful life". It is quite true that the defendants prolonged the useful life of the frame. It would otherwise presumably have been scrapped. But the screen was the combination of frame and meshes pre-tensioned by attachment with adhesive according to the invention. That product ceased to exist when the meshes were removed and the frame stripped down to the bare metal. What remained at that stage was merely an important component, a skeleton or chassis, from which a new screen could be made.
 In Solar Thompson v Barton  RPC 537 the Court of Appeal held that there was an implied licence to repair. But the juridical nature of the right to repair was not in issue. The debate was over whether or not the defendants had, as the plaintiff's counsel contended (at page 544) made a "new merchantable article". So the real issue was whether the defendants had made the patented product. Buckley L.J. quoted the remark of Lord Halsbury L.C. which I have already cited. He said that the question was one of fact and degree and said (at page 555) that the "cardinal question" was whether "what has been done can fairly be termed a repair, having regard to the nature of the patented article". The context shows that Buckley L.J. saw no difference between this question and the question of whether, having regard to the nature of the patented article, the defendant could be said to have made it. Speaking for myself, I prefer the latter formulation.
The uncertainty of the "whole inventive concept" test
(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;
But identifying the concept is not a necessary part of the analysis – you can just work on the claim and should do so if identifying the concept is not agreed or helpful. After all it is "the claimed invention which has to involve an inventive step" (per Lord Hoffmann in Conor v Angiotech,  UKHL 49,  RPC 28 at ).
It is not necessary for the purposes of this appeal to form any view on whether the existence of copyright is capable of giving the plaintiff such economic power in the aftermarket as to be anticompetitive and contrary to the public interest. It is sufficient to recognise that the question is a complicated one which cannot be solved by broad generalisation. The courts are ill-equipped to pronounce upon such matters, which often involve questions of economic policy and are generally left to specialised bodies such as the Monopolies and Mergers Commission. [p.738]
Wider considerations: sub-claims and consumables
The German Cases
Lord Justice Patten:
Lord Justice Ward: