England and Wales Court of Appeal (Civil Division) Decisions

IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION, PATENTS COURT
(MR JUSITCE MANN)

		Royal Courts of Justice Strand London WC2A 2LL
		25 July 2013

LORD JUSTCIE LEWISON:

1. On 10 December 2012 Mann J refused the claimant's application for an interim injunction restraining an alleged infringement of two UK patents. With the permission of the judge, the claimant appeals.
2. It is only necessary to refer to one of the patents, number 2453588. The patent addresses the problem of the safe and accurate provision to individuals in care homes and elsewhere of their daily medication. The patent specification describes the problem as follows:

"Conventionally, and particularly in care homes, it is necessary for large numbers of such bottles to be stored, and this takes up considerable space. Furthermore, since the medication is contained in a large bottle then as the quantity in the bottle diminishes an increasing air space above the liquid is created which can adversely affect the chemical properties of the medicine.

It is an object of the present invention to provide a system of accurately and conveniently packaging individual doses of medication, whether in liquid or tablet form, and which is more easily managed in a safe and convenient manner, thus substantially avoiding the aforementioned difficulties."

3. The way in which it solves the problem is by providing a monitored dosing system container, comprising a tray with individual spaced compartments, an array of pots individually removable within the respective compartments, means to retain them in the compartments before use, and to allow them to be released; and also means to seal the medicaments within the pots.
4. The specification describes what it claims to be a number of important advantages which accrue from the system in accordance with the invention. They are as follows:

"For example, each tray may be charged with substances of different kinds such as tablets, capsules and liquids or ointments, a feature which has not hitherto been possible with blister packaging or the like.

Also, the pots with the removable film 23 avoid the conventional problem, with foil covered blisters, of having to eject tablets or capsules by supplying sufficient force to eject them through the foil, often resulting in lost or spoiled medication.

Additionally, the pot serves as a medicine cup in itself, thus avoiding the need for foil packed tablets or capsules to be pre-dispensed into a medicine cup.

The sealing process is less likely to damage or contaminate the medication which, in the pot, is separated from the sealing source to a much greater extent than with blister packaging.

The individual pots can be removed selectively to allow medication to be removed from the tray and taken away by the patient for use elsewhere and at a later time."

5. Claim 1 of the patent delineates the scope of the claimed monopoly as follows:

"a monitored dosing system container for discretely packaging a plurality of quantities of one or more fluid or solid medications, and comprising a tray having individual spaced compartments, a plurality of pots individually removeably received within the respective compartments, wherein each pot has an upper flange and is adapted to contain a medication to be packaged, means to releaseably retain the pots in the compartments prior to intended release, and means to sealingly retain the medication in pots prior to its intended use; wherein the means to sealingly retain the medication in pots comprises a flexible perforated sheet of non-permeable material placed over the filled tray and sealingly attached to and across an otherwise open top of each pot, and wherein the perforations coincide with the outer peripheries of the pots so as to define individual sealed films across each pot, and once the pot is removed the sealed pot can be peeled off the upper flange to open the pot."

6. The defendant's product which it is alleged to infringe consists of a plastic tray which is manufactured in one piece. The tray is moulded such that parts of it are formed into pot shaped depressions and the areas where the pot shaped depressions join the flat surface are perforated, leaving what have been described as tags joining each pot shaped depression to the flat surface. These are achieved by cutting into the plastic, but leaving parts behind. Each pot shaped depression is held in place by these parts of plastic, which prevent them falling out as a result of gravity. A plastic sheet is placed and stuck over the whole assembly. The sheet is itself perforated so that if pressure is applied to the top of any individual pot shaped depression, the tabs are broken and the pot can be removed leaving a hole in the flat surface.
7. Mann J reached the clear view that the defendant's product did not infringe with the result that he refused to grant the injunction. He expressed his ultimate conclusion in paragraph 26 of his judgment as follows:

"It therefore seems to me that, on the material and arguments placed before me at the hearing of the application, the claimant's arguments on infringement are wrong and the defendants' arguments are right. That, however, by itself might not be sufficient to enable the defendants to succeed. The question is whether I am satisfied that the defendants are so right that there is no arguable case against them on infringement. I consider that that is indeed the case. This is not a complicated patent. There is no real prospect that any relevant evidence or other material would be adduced at a trial which would assist in the exercise of construing Claim 1. The exercise of construing it so as to judge the infringing nature, or otherwise, of the defendants' product is sufficiently straightforward to allow me to reach a clear view on the material that I have. My clear view is that the claimant does not have an arguable case on infringement. In those circumstances, the claimant does not get over the first hurdle in American Cynamid and is therefore not entitled to an interim injunction."

8. In other words, the ultimate test that he applied was whether the claimant had an arguable case. Mr Alastair Wilson QC, appearing with Mr Jonathan Turner for the claimants, points to other parts of the judge's judgment in which he used the phrase "a good arguable case" to express the legal test. They include paragraphs 3, 13, 14 and 31 of the judge's judgment. From this Mr Wilson argues that the judge applied too high a test, and that the real test which he ought to have applied was whether there was a serious issue to be tried.
9. Had the judge applied that test, Mr Wilson said, he would or at least should have concluded that there was a serious issue to be tried. Since the judge found that the balance of convenience tipped in favour of the claimant, he would in that event have granted the injunction sought. I reject this argument. The judge came to a very clear view that the claimant's argument was wrong, so wrong, as he put it, that there was no arguable case for infringement. In American Cynamid Co v Ethicon Ltd [1975] AC, 396, Lord Diplock laid down the test which is to be applied in deciding whether or not an interim injunction should be granted. At page 407 he said this:

"The use of such expressions as 'a probability', 'a prima facie case', or 'a strong prima facie case' in the context of the exercise of a discretionary power to grant an interlocutory injunction leads to confusion as to the object sought to be achieved by this form of temporary relief. The court no doubt must be satisfied that the claim is not frivolous or vexatious, in other words, that there is a serious question to be tried.

It is no part of the court's function at this stage of the litigation to try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party may ultimately depend nor to decide difficult questions of law which call for detailed argument and mature considerations. These are matters to be dealt with at the trial. One of the reasons for the introduction of the practice of requiring an undertaking as to damages upon the grant of an interlocutory injunction was that 'it aided the court in doing that which was its great object, viz. abstaining from expressing any opinion upon the merits of the case until the hearing' ... So unless the material available to the court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the court should go on to consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought."

10. Thus Lord Diplock says that the question whether there is a serious issue to be tried is the same as asking whether there is a real prospect of success. In our case, the judge decided that there was no real prospect of success: in other words, no arguable case for infringement. Necessarily it follows that in the judge's view there was no serious issue to be tried. Although it might have been better had he avoided the use of the phrase "good arguable case", I reject the argument that he applied the wrong test.
11. The next point that Mr Wilson took in his skeleton argument, although this was not pressed orally, was that the judge should not in effect have decided the question of construction of claim 1 summarily. He pointed to cases in which this court had reversed decisions at first instance deciding questions of claim construction on a summary basis. In those cases the court warned against the danger of finally deciding questions of claim construction without the aid of expert evidence. That is not to say however that applications for summary judgment are a no-go area in patent claims. Amongst the authorities which were referred to in Mr Wilson's skeleton argument but which were not ultimately included in the bundle was the decision of this court in Virgin Atlantic Airways v Delta Airways [2011] RPC, 18, in which Jacob LJ said that in an appropriate case summary judgment could be granted in a patent case.
12. This, however, was not what happened in the present case. The judge was not deciding the question of construction summarily. Indeed, he was not asked to do so. As Lord Diplock had explained in the American Cynamid case, the judge was deciding, as he was required to decide, what the materials evidenced before him demonstrated about the strength or otherwise of the claimant's case. If further evidence emerges at trial, no doubt that will be relied upon.
13. Mr Wilson did tell us that further evidence might be forthcoming at the trial, although not through experts. This would be evidence of common general knowledge, through the prism of which the skilled addressee would understand the claims in patent. Quite what this common general knowledge will turn out to be we were not told, nor were we told why, if no independent expertise is necessary, evidence of common general knowledge was not given on the application for the injunction itself.
14. In my judgment the judge was justified in the approach he took to the question he was being asked to decide.
15. I turn then to the question of construction. The principles of claim construction are not in doubt. They are contained in section 125 of the Patents Act 1977, giving effect to Article 69 of the European Patent Convention and the Protocol on the Interpretation of Article 69. In short, the extent of the monopoly is to be that specified in the claim as interpreted in the light of the specification, and any drawings contained in the specification. The claims must be interpreted purposively. This is not a new approach in our law. In Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, the House of Lords construed the word "vertical" in a patent claim to mean substantially vertical in the case of a mechanical component performing the same function. Catnic was discussed at length and explained by the House of Lords in Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited [2004] UKHL 46; [2005] RPC 9. Lord Hoffmann explained in paragraph 34:

"Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often."

16. Mr Wilson placed some reliance on so-called protocol questions which can be a useful guide where it is alleged that an allegedly infringing product has a variation from a literal meaning of the claim, but which does not materially affect the way in which the invention works. But these questions are not to be used in order to extend the monopoly beyond that which the claim, purposively construed, actually claims. Again, Lord Hoffmann explained in Kirin-Amgen:

"I shall say in a moment why I agree with the Court of Appeal, but I want first to emphasise a point I have already made about the use of the Protocol questions. The determination of the extent of protection conferred by a European patent is an examination in which there is only one compulsory question, namely that set by article 69 and its Protocol: what would a person skilled in the art have understood the patentee to have used the language of the claim to mean? Everything else, including the Protocol questions, is only guidance to a judge trying to answer that question. But there is no point in going through the motions of answering the Protocol questions when you cannot sensibly do so until you have construed the claim. In such a case - and the present is in my opinion such a case - they simply provide a formal justification for a conclusion which has already been reached on other grounds."

17. It is to the question then of the claim construction that I turn. It is, in my judgment, clear from claim 1 that the compartments and the pots are different things. The pots must be "removeably received within" the respective compartments, and they must be retained within the compartments before release. The tray is something which is "filled" with the pots, which can be removed from the tray. If there were any doubt about that it would be dispelled by the description in the specification and the illustrated embodiment which distinguishes between the tray with its array of individual preformed compartments and the vessels in the forms of individual pots located within each compartment. I do not say that the embodiment described in the specification limits the scope of the claim itself, but it is to my mind clear from the claim itself that pots and compartments are two quite different things. Mr Wilson pointed to the word "wherein", which appears I think three times in claim 1, and said that that which followed "wherein" was more important than that which preceded it. On the other hand, as he rightly recognised, a tray having individually spaced compartments which precedes the first use of the word "wherein" is an essential integer of the claim.
18. Mr Wilson submitted that the essence of the invention there is a single sheet arranged on top of everything such that the sheet fractures and the pots come out still sealed, and therein lies the nature of the invention. I agree that that is part, perhaps an important part, of the invention, but does not warrant disregarding the other integers of claim 1.
19. The whole thrust of the patent is that there must be both compartment and pots simultaneously present in the container.
20. Mr Wyand QC, who appeared for the defendant, argued that the depressions in the defendant's products could be called compartments or they could be called pots, but they cannot be both simultaneously. I agree. Mr Wilson showed us some dictionary definitions which do indeed give extended meanings to the word "compartment", but I do not consider that those definitions assist on this part of the argument, and in any event, the dictionary is a repository of acontextual meanings par excellence.
21. Mr Wilson submitted that the defendant's product took all the advantage of the invention and therefore the claim should be construed so as to encompass a product which took the advantages taught by the claimant's patent. Whether the defendant's product does take all the advantages taught by the patent does not overcome the scope of the claim. It is the claim which defines the monopoly, albeit purposively construed.
22. Mr Wilson suggested that the series of organised holes in the defendant's product can fairly be called compartments within which the individual vessels were held until they needed to be removed from the tray. To my mind the major difficulty with this argument is that the defendant's product does not contain an organised series of holes until after each vessel and more than one vessel has been removed from the tray. While the vessel formed part of the tray, there is no hole associated with that vessel. There is no more than a series of cut outs round the location of each pot shaped depression in the overall molded shape, leaving tags between each depression and the top edge of the tray. Mr Wilson submitted that the method of manufacture should not make any difference. This method of manufacture is the same as if the tray had been separately manufactured and then filled with individual pots spot welded to the sides of the tray. To my mind, that is simply to say that a different project might infringe, therefore this product does. That, to my mind, is a non sequitur.
23. Assuming that this is simply a variant, I find it impossible to see how it can be said that the defendant's product is as an immaterial variant of the claim. If the patented article is manufactured, the pots can be removed from the tray, and, in theory at least, the tray can be re-used for a new set of pots. If a pot is accidentally removed from the claimant's product, or the claim within the patent, it can be replaced within the tray until needed. By contrast, in the defendant's product, once the pots are removed, all that remains is a tray with holes in it. In other words, the act of removing the pots destroys the integrity of the defendant's product and a new all-in-one product would have to be made again. In short, in my judgment, the defendant's product works in quite a different way to that claimed by the patent, even though it is solving the same problem.
24. In my judgment, the argument put forward on behalf of the claimant is untenable. I consider that the judge was right in his conclusion that there was no arguable case for infringement. He was therefore right to refuse an injunction. I would dismiss the appeal.

LORD JUSTICE ELIAS:

25. I agree. I would only add a brief observation on one aspect of the argument of Mr Wilson QC.
26. In the course of his submissions he placed some weight in certain post-judgment comments of the judgment in granting permission to appeal. The judge said this:

"I do not suggest that Mr Wilson's argument was always hopeless and bound to fail. There was, and I do not seek to do him an injustice, some sort of argument there. Although I am satisfied as to what my decision is, since it is basically a determination of the true construction of this patent upon which it may be possible to reach a different view, I shall give Mr Wilson permission to appeal."

27. Counsel relied upon those words to show the judge could not properly have concluded that there was no arguable case, notwithstanding his unambiguous statement to that effect in paragraph 26 of his judgment. The judge is recognising the possibility that other judges may reach a different result, which is inconsistent with the case being unarguable. Mr Wilson says that these observations support his argument that the judge must in fact have set the bar higher than paragraph 26 suggests and was in reality applying something closer to a seriously arguable case.
28. I do not accept that submission. In my judgment, there is nothing inconsistent with the judge's analysis. He personally formed a view that the case was unarguable. Neither the fact that counsel then advanced an argument of sorts, nor the fact that the judge recognised that others may take a different view logically compelled him to take a different view.
29. Appellate judges are full of surprises, as experience shows, and he understandably did not rule out the possibility that an appellate judge might see the case differently. But it was plainly his judgment that they would be wrong to do so. One can reach an unequivocal view that a case is not arguable whilst acknowledging that others may mistakenly take a contrary view.

LORD JUSTICE MOORE-BICK:

30. I agree that the appeal should be dismissed for the reasons given by my Lord, Lewison LJ.

Order: Appeal dismissed