BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| KWIKBOLT LIMITED
|- and -
|AIRBUS OPERATIONS LIMITED
Henry Ward (instructed by Allen & Overy LLP) for the Defendant
Hearing dates: 9-12 February 2021
Crown Copyright ©
Covid-19 Protocol: This judgment was handed down remotely by circulation to the parties' representatives by email and release to BAILII. The date and time for hand-down is deemed to be 10.30 a.m. on Thursday 25 March 2021.
Judge Hacon :
The Evidence of Travis McClure
"14.9 Where any party wishes to put documents to a witness in cross-examination, these should generally be supplied to the witness sufficient time in advance so that the witness has time to consider them before giving evidence. Generally, documents for cross- examination should be supplied at least 48 hours before the witness gives evidence. However, more time may be required depending on the nature and number of the documents intended to be relied upon. The number of documents should be kept within manageable bounds. In the case of documents over 4 pages long, there should be an indication of which parts will be put to the witness."
(1) A removable blind fastener comprising
(2) (a) a first member having an elongate body
(3) with a head at one end,
(4) (b) a second member having an elongate body
(5) extending from and adapted to slide relative to the first member,
(6) said second member having at least one flexible finger
(7) with a finger head at one end remote from the first member,
(8) (c) a screw member having a screw head adjacent the first member head
(9) and a screw shaft
(10) which passes through a restriction in the head end of the first member,
(11) wherein the restriction prevents removal of the second member from the head end of the first member,
(12) and wherein the screw member engages with a threaded aperture on the second member,
(13) rotation of the screw member in one direction sliding the second member towards the first member
(14) and biasing the or each flexible finger radially outward
(15) and rotation of the screw member in the other direction sliding the second member away from the first member
(16) and allowing the or each flexible finger to move radially inwards,
(17) and wherein, in use, the fastener comprising a unit of the first member, second member and screw member
(18) is insertable and removable through an aperture in each of two workpieces which need joining together
(19) with the head of the first member located against a face of one workpiece,
(20) and rotation of said screw causing the or each flexible finger to expand radially outward
(21) so the finger head on the or each finger engages a face of the other workpiece and causing the two workpieces to be drawn together as said second member slides towards the first member.
"8. A removable blind fastener in accordance with any preceding claim, wherein each finger head provides a planar surface to engage with a planar surface of a workpiece face to prevent damage to a workpiece."
"16. A removable blind fastener in accordance with any preceding claim, wherein the first member head is adapted to receive a tool to prevent it from rotating whilst said screw head is rotated."
The Skilled Person
Common General Knowledge
Scope of the Claims
Normal Construction of the Claims of the Patent
Integer (1) removable fastener
Integer (2) an elongate body
" our contention [is] that 'elongate' within the meaning of the Patent's claim 1 means that the shape of the body of the first member is such as to allow that body to be inserted into the holes in the workpieces. That is not the case with the Centrix Free Spin Fasteners (whether or not they are variants including the optional end cap)."
Integer (3) a head at one end
Integer (8) a screw head adjacent the first member head
"The skilled person would therefore appreciate the adjacency of the screw head to the first member head as opposed to the screw head being proximate to the finger ends of the second member. This is wholly consistent with the purpose of the screw head being near to the first member head, so as to allow the fastener to act as a blind fastener i.e. one that can be inserted and operated from one side."
"Q. Yes. The screw head, because it is on the top part of the panels, it must be located away from the finger member heads of the collet?
A. Yes, sir.
Q. Because they have to be on the other side of the panels; correct?
A. Yes, sir, that is correct.
Q. So the screw member head has to be distant from the finger member heads; correct?
A. Some distance, yes, sir.
Q. But it must be adjacent to the first member head?
A. Adjacent means touching? Or on the same side?
Q. On the same side; correct?
A. Yes, sir."
Integers (17)-(19) fastener comprising a unit is insertable and removable through an aperture in each of two workpieces
"As shown in Figures 3A and 3B, fastener 1 can be inserted through an aperture 40A in workpiece 40 and through an aperture 50A in workpiece 50, to join the two workpieces together.
"Rotation of the screw member 30 in the other direction slides the second member 20 away from the first member and allows the flexible fingers 22A, 22B, 22C, 2D to move radially inwards again back into the position shown in Figure 3A. Fastener 1 can then be withdrawn from the aperture 40A, 50A in workpieces 40, 50."
Claim 16 the first member head is adapted to receive a tool
"The Skilled Person would understand this integer to mean that a tool is to be applied to the head of the first member to hold it in place. As described at paragraph 6.11 above, the Patent provides the example of having slots in the head 12 of the first member 10 insertion of a tool (like a screwdriver) into these slots would provide anti-rotation means."
The product alleged to infringe
Integer 1(1) - removable
"The device can then be removed through the hole in the tope work surface ahead of disassembly and re-use."
Integer 1(2) a first member with an elongate body
Integers 1(3) a first member with a head at one end
Integer 1(8) a screw head adjacent the first member head
Integers 1(17) and (18) in use, a unit of the first, second and screw members is insertable and removable through an aperture of each of the two workpieces
" In these circumstances, given the weight that has been given by courts in this jurisdiction (and indeed in some other jurisdictions) to the three 'Improver questions', I think it must be right for this court to express in our own words our reformulated version of those questions. In doing so, it is right to emphasise, as Lord Hoffmann did in Kirin-Amgen  RPC 9, at , that these questions are guidelines, not strict rules (as indeed the Oberlandesgericht indicated in Case No. 6 U 3039/16, when saying that it was 'generally' true that 'three requirements must be met'). While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows:
(i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
(ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
(iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was 'yes' and that the answer to the third question was 'no'."
The Inventive Concept
"The removable blind fastener is inserted as a unit into apertures in two or more workpieces, with the first member head abutting a face of the proximal workpiece. Rotating the screw member in one direction slides the second member towards the first member, biasing the fingers outwardly such that the finger heads engage a face of the distal workpiece, and draw the workpieces together. Rotating the screw member in the other direction reverses this operation, disengaging the fastener from the workpieces and allowing the fastener to be removed as a unit from the workpieces."
"A three piece removable blind fastener the configuration of which ensures that the bulk of the fastener is below the top surface of the work-piece. More specifically this is achieved by having a first member comprising an elongate body with a head at one end, which is insertable through an aperture in each of the two workpieces which need joining together such that the head of the first member is located against a face of one workpiece."
"As can be seen from Figure 1, the bulk of the fastener is above the top surface of the work-piece and is therefore exposed and vulnerable and presents an obstruction on the surface of the work-piece. This is a particular problem in automated assembly processes; tool heads sweep rapidly across the surface of the materials and protruding fasteners will impede the movement of these automated tools. Another problem with the prior art shown in Figure 1 is that the maximum clamping pressure is determined by the strength of the internal spring."
Conclusion on infringement
The pleaded prior art
(1) US Patent no. 2005/0169726 A1 ("McClure 1").
(2) The E-Nut.
(3) PCT Application no. WO 2004/037483 A1 ("McClure 2") and
(4) UK Patent no. 413,403 ("Wylie").
Application at the start of the trial regarding the E-Nut
"3. A specific embodiment of McClure 1 was a commercial product known as the 'E-Nut'. The Defendant contends that a full description of that commercial product is provided in McClure 1. If and insofar as the Claimant seeks to contend that elements of the operation of the E-Nut are not disclosed in or directly ascertainable from McClure 1 however, the Defendant will rely on the prior public use of the E-Nut, which was widely publicly available from at least 2003. Indeed, such was the widespread use of the E-Nut that the Defendant contends that it formed part of the common general knowledge of the skilled person as further set out below. The Defendant relies on the following particulars in support of the prior public use of the E-Nut:
a. The E-Nut was manufactured by Avibank and was commercially available in at least the United States from at least 2003. The E-Nut is still manufactured and sold commercially by Avibank (see Annex 2 extract of the E-Nut page from Avibank's website);
b. The trade mark filing for 'E-Nut' at the USPTO (Registration number: 3361456), filed by Avibank Mfg., Inc. notes that the first use in commerce of the goods to which the trade mark relates was 11 October 2002. A copy of the relevant page of the entry for the mark at the USPTO is attached as Annex 3.
c. To further support that the E-Nut was available prior to the priority date of the Patent, the Defendant relies on the display of the E-Nut at a trade fair in Hamburg in spring 2004 at which E-Nut fasteners were displayed as part of an installation displaying the new Boeing 787 flooring system. Photographs from this exhibition are attached as Annex 4.
d. An E-Nut is in the possession of the Defendant and available for inspection on request. The E-Nut in the Defendant's possession is of the same design as those available before the priority date of the Patent.
4. Further and in any event none of claims 1 to 18 of the Patent is in respect of a patentable invention in that the same was obvious to a person skilled in the art having regard to the state of the art which comprised the following matter at the priority date of the Patent:
a) The matters referred to above;
b) WO2004/037483A1 ('McClure 2'); and
c) GB 413,403;
in conjunction with the common general knowledge. The Defendant refers to the amended claim chart at Annex 1."
"In FIGS. 13 and 14, sleeve insert 90 is secured to proximal panel 72 such as by adhering base 106 to the bottom surface of proximal panel 72 and the panel apertures are aligned. In FIGS. 15 and 16, sleeve insert 90... is secured in the aperture of panel 72 such as by adhering outer surface 94 to the aperture of [proximal] panel 76(. Alternatively, but not shown, outer surface 94 can include a plurality of radially extending elements, such as knurling or vanes, that physically engage with a [proximal] panel."
"Q. All of the inserts in the McClure 1 patent work because they are fixed in the panels which are going to be clamped; is that not correct?
A. Yes, that would have to be correct.
Q. Yes. They are all describing what I think is called by Mr. McClure as an anchoring system, are they not?
A. Anchoring system, yes, sir."
"Well, yes, he needs to prevent rotation, obviously, for the component to work, as designed. You know, if he was an inventor, you know, yes, he might try to come up with some other version, but I guess that is always an option."
" it can be seen that this type of temporary fastener includes certain inherent deficiencies. One deficiency is that torque applied to a nut that causes translation of the spreader and stem also causes a torque moment to appear in the tubular body tangs. The result is that the tangs rotate or cause a torque moment to appear in one or more of the parts to which the tool is applied. As a result, both the tangs and the part(s) are subject to deformation."
"A feature of a temporary fastener tool comprising the invention relates to the isolation of expandable collet fingers or tangs from all forms of torque that may result from application of the tool to the work pieces during use. Another feature of the temporary fastener tool comprising the invention relates to the use of a ball and socket configuration as the interface between a spreading element and the collet fingers or tangs."
"In order to release the clip the screw 16 may be unscrewed so as to lift the cap 20 away from the ball race 22 leaving the sleeve in position until the end of the mandrel is clear of the reduced bore of the sleeve thus permitting the head of the sleeve to contract so that the clip may be removed."
"So, it is common ground between the experts that Wylie does not disclose the device being removed as a unit after it has been used to clamp."
"That means that on removing the screw, the second member does not slide relative to the first member whilst simultaneously reducing the radial extent of the finger ends. That is what is required by features 1.15 and 1.16 of the Kwikbolt patent as accepted by Mr Jack."
"In such a clip considerable friction takes place between the sleeve and the mandrel and it is advantageous to form both of very hard metal in order to minimise the wear that would otherwise take place."
"The hole in the articles [the workpieces] is of a size just to permit the passage of the head of the contracted sleeve."
Conclusion on Validity