England and Wales High Court (Patents Court) Decisions

BETWEEN:

Mr Henry Carr QC (instructed by Messrs. Bird & Bird) appeared on behalf of the Plaintifff.

Mr Alastair Wilson QC and Mr Michael Tappin (instructed by Messrs. Dibb Lupton Alsop) appeared on behalf of the Defendant.

1. This is a patent action concerning compact disc cassette boxes. The plaintiff is the registered proprietor of European Patent EP 0 430 956 ("the Patent in suit"). The plaintiff purchased the Patent in suit, which claims a priority date of 29th August 1988, after having been threatened with infringement proceedings by the original proprietor, and inventor, Ms. Petra Dunker.

2. In summary terms, the Patent in suit claims the following. A cassette box designed to hold two circular information discs, primarily compact discs ("CD"s), consisting of three plastic parts, namely (1) a rectangular base part, which is pivotably connected by means of a first hinge device to (2) a rectangular cover part (which together provide an enclosed plastic box) and (3) a rectangular disc-holder which is pivotably received by the base part, by means of a second hinge device. This disc-holder (or "disc-carrier" as I shall call it) is designed to hold a CD on either side by means of clamp holders. The two hinge devices are at opposite edges of the base part.

3. The action raises two principal issues. The first is whether cassettes manufactured and sold by the defendant infringe the Patent in suit. This essentially turns on a point of construction of Claim 1 of the Patent in suit ("Claim 1"). The second issue is whether the alleged disclosure of the Patent in suit was in fact obvious over common general knowledge and/or over a specific disclosure in a patent registered at the German Patent Office, DE 34 14 903 ("the 903 Patent"). There is a third issue involving an allegation of added matter.

4. I shall begin by describing the Patent in suit, which conveniently describes the prior art. I shall then turn to the issue of construction which divides the parties. I shall then deal with the issue of infringement. I shall then discuss the allegation of obviousness. Finally I shall briefly mention the allegation of added matter.

Description: Prior Art

5. In the description, four items of prior art are identified. The first three are patents which relate to cassettes for storing CD's, two of which were already in common general use as at the priority date, as, indeed, they still are.

6. The first type of cassette used for CD's at the priority date is known as a Jewel box, which was the subject matter of European Patent EP O 272 042. It is described on page 1 of the Patent in suit. It holds a single CD, and consists of three plastic parts, namely a rectangular base part, a rectangular cover part and a rectangular disc-carrier. The first two parts are usually transparent, with the base part being pivotable relative to the cover part by means of a hinge device: when closed, these two parts form a box, which may be opened by swinging the cover part on the hinges. The disc-carrier may or may not be opaque, and is fixed into the base part; in the centre of the disc-carrier is a ring of clamp holders mounted on a distance ring and standing proud of the surrounding surface area, so that the centre hole of the CD can rest on, and be held by, this distance ring. In practice, the Jewel box will contain not only a CD, but also an inlay card, which has information about what is printed on the CD; the inlay card is inserted into the base part when the disc-carrier is pressed into the base part. The inlay card normally has upturned ends which fit against the end walls of the base part, so that information as to the contents of the CD can be conveyed in the same way as the title of a book is normally contained on its spine. There is often further printed information in the form of a booklet which is slid under the cover part and rests above the CD when the cassette is shut.

7. The other type of cassette used for CD's as at the priority date was known as a multi-pack, and can hold between two and four CD's. It was disclosed by a patent registered at the German Patent Office, DE 33 01 644. The multi-pack is described on pages 1 and 2 of the Patent in suit. It has two rectangular base parts, each of which has a disc-carrier fixed inside it. Each of these two base parts pivot open and shut against a rectangular middle part using hinge devices; these hinges are constructed substantially in the same way as that in the Jewel box: the middle part has inwardly facing pins that insert into the holes in each of the base parts. If the multi-pack is used for two CD's, then each of them would be carried in one of the two disc-carriers fixed into the base parts. If used for three CD's, then one of the two faces of the middle part would also be shaped so as to contain clamp holders. With a fourth CD, the other face of the middle part would be similarly shaped. Information about the contents of the multi-pack is normally included in a card between the underside of each of the two disc-carriers and the inside of each base part. Booklet material can also be included; placed between either or both of the CD's resting on the base part and either or both sides of the middle part.

8. The description in the Patent in suit says (on page 1) that the Jewel box has "the disadvantage of being relatively bulky". It describes the multi-pack (on pages 1 and 2) as:

9. A further item of prior art is mentioned in the description, namely a cassette disclosed by the 903 Patent. Both the description and the claims of the 903 Patent are somewhat difficult to understand. It appears to have been aimed at solving a perceived problem connected with the insertion of the inlay card into a Jewel box. In practice, that problem has been solved by the use of a packing machine which inserts the inlay card at the same time as it fixes the disc-carrier into the base part. At this stage, I merely refer to an observation in the description dealing with the 903 Patent, which is in the following terms:

10. The fourth item of prior art referred to in the description is a UK patent, GB 2 132 588 ("the 588 Patent"). The description states that the 588 Patent is for storing floppy disks and is "unsuitable for CD's because they must not come into contact with other parts in the neighbourhood of the information-storing surfaces". The description also states the following in relation to the 588 Patent:

11. Having referred to these four earlier patents, the description in the Patent in suit continues, on page 3:

12. The passage on page 3 of the Patent in suit then states:

13. Eight benefits from the invention claimed in the Patent in suit are then listed, including:

14. On page 6 of the description, there are two further references to the advantages of the claimed invention to which I should refer. The first is the statement that:

14. The second in these terms:

15. There are four figures attached to the Patent in suit, and they are as follows:

1. A cassette according to any of claims 1 to 6. characterized in that the maximum pivoting angle between the disc-receiving part (4) and the base part (2) is 120° preferably about 80° to 100°...."

18. The point is best illustrated by imagining a Jewel box adapted in accordance with the teachings of Claims 1 and 2. If one rests the base part on a table, and opens the cover part, it will swing through 180° until it comes to rest on the table. One then sees a CD ("the first disc") held by the disc-carrier, resting in the base part. One can then lift the disc-carrier which will rotate on the hinges on the outside edge of the base part - i.e. away from the cover part. Unless there is prior resistance from the "pivoting-travel limiter", the disc-carrier will turn through an angle of 180° so that the face bearing the first disc becomes the underside, also resting on the table, and one will be looking directly at the other face of the disc-carrier, carrying the second disc. In that example, it could be said that the table acts as the "pivoting-travel limiter" and results in a "maximum pivoting angle" of 180°.

19. If, instead of opening such a cassette on a table, one was to open it in one's hand, then, subject to the effect of the "pivoting-travel limiter", the disc-carrier would be able to swing through over 270°, indeed getting on for 360°, so that the upper face of the first disc would virtually be pressed against the underside of the base part, and the second disc would be virtually facing the floor.

20. The purpose of the pivoting-travel limiter as described in the Claim is to stop the movement of the disc-carrier at some point after it has swung through 80°. There are no particulars in Claim 1 as to the nature of the "pivoting-travel limiter" save that it is to be "provided in the region of the second hinge device", that is, the hinge device upon which the disc-carrier pivots relative to the base part. However, it is common ground that it would have been (and is) within the common general knowledge that the base part of cassettes which hold CD's (including in particular the Jewel box and the multi-pack) includes a vertical part or upstand, along its edge opposite to the hinge on which it pivots relative to the cover part. This upstand serves to enclose the cassette when the cassette is shut, and is shown as item 9 in Figure 1 of the Patent in suit. It is that upstand which, as it seems to me, is the "pivoting-travel limiter" according to the teaching of Claim 1. If that is not right, then it would appear that the teaching of the Patent in suit would be deficient, in that there would simply be no guidance as to the identity, construction or manner of working of the "pivoting-travel limiter", which, on the evidence, is not merely not a term of art, but a wholly new expression.

21. The extent to which this particular "pivoting-travel limiter" will limit the maximum angle to which the disc-carrier will open inevitably depends on the height of this upstand and the distance between this upstand and the relevant hinge (18/19 on Figure 1). In Figure 1 itself, the disc-carrier is shown opened to the extent of 90°, but I accept the contention of Mr Henry Carr QC, who appears on behalf of the plaintiff, that it would be quite wrong to treat the Figure as specifying the "maximum pivoting angle" or the "end position" referred to in feature (l).

22. The first question is whether the words "and in which..." at the beginning of feature (m) are governed by the words "to an end position" in feature (l), as the defendant contends, or whether, as the plaintiff contends, they are governed by features (a) to (d) inclusive. On this point, I am quite satisfied that the defendant's argument is correct. First, as a matter of ordinary language, it appears to me that (particularly if one recalls that the Claim is not in fact divided up into the 13 features into which it has been divided for convenience in these proceedings) the words "and in which", at the beginning of feature (m) relate back as a matter of ordinary language and natural flow to "an end position in which..." in feature (l). Secondly, as Mr Alastair Wilson QC (who appears with Mr Michael Tappin for the defendant) points out, the words "characterised in that" at the end of feature (i) naturally split up those parts of Claim 1 which fall before those words from those that fall afterwards. Thirdly, the layout and punctuation of Claim 1 as contained in the Patent in suit give the plaintiff's argument additional difficulties: the words "in which" at the end of feature (d) appear to govern the following parts of the Claim as a whole; further, features (l) and (m) are contained in a single paragraph, following on from the previous paragraph consisting of features (j) and (k).

23. Accordingly, in order to decide whether, and if so what, "maximum pivoting angle" and what sort of "end position" Claim 1 has in mind, one has the guidance that the "end position" must be one "in which both sides of the disc-carrier are freely accessible for removal of one of the two [CD's] as desired". On behalf of the defendant, Mr Wilson contends that this means that the effect of the "pivoting-travel limiter" is to stop the disc-carrier at a point where each of the two CD's is "freely accessible", and that this involves the disc-carrier having a minimum pivoting angle of around 80° as taught in terms by the Claim (because any lesser angle would mean that the second disc was too close to the inside of the cover part) and a maximum angle of around 135°, because if the disc-carrier opened to any greater angle, the first disc would cease to be "freely accessible". On any view, it would certainly cease to be anything like as "freely accessible" as the second disc, because it would be significantly more difficult to remove, and, indeed, to replace.

26. In the present case, if, for instance, one of the purposes of the alleged invention is to prevent CD's falling, then one can well understand why the patentee would wish to ensure that the disc-carrier could not swing beyond, say, 120° or 135° relative to the base part, as I have described. In the event, experience over the last 10 years suggests this concern may be misplaced, and that Jewel boxes adapted to hold two CD's are, if anything, more marketable if the disc-carrier can in fact swing through 180°. However, as at the priority date, there was no reason to think that that might be the case.

27. Mr Carr's second argument is that the concept of free accessibility should not necessarily be judged by reference to opening the cassette, with a view to taking out one or both of the CD's, on a flat surface such as a table. He points out that one might well expect to open up the cassette in one's hand, with a view to obtaining access to one or both CD's, without using a flat, or indeed any other, surface. It is perfectly true that there is no reference to, let alone teaching as to, the way in which one might open a cassette, or remove a CD, in the Patent in suit. If one opens a cassette of the type described in Claim 1 in one's hand, without the assistance of any surface upon which to rest it, the natural position immediately after opening the cover would involve the cover swinging through almost exactly 180° in relation to the base part, with, at least for a right handed person, the left hand supporting the underside of the base and the front of the cover part so that they are both horizontal. One would naturally use one's right hand then to swing open the disc-carrier. In order for the disc-carrier to arrive at "an end position" at which it could be said that "both [of its] sides... are freely accessible for removal of one of the two [CD's]", it seems to me that, at least, in the absence of further re-handling of the cassette, the disc-carrier would have to swing through a minimum of about 80° and a maximum of about 130°.

28. Accordingly, confining myself for the moment to the wording of Claim 1 alone, it does not appear to me that either of Mr Carr's answers to Mr Wilson's construction is correct. In other words, it seems to me that the draftsman of Claim 1 had in mind that the "pivoting-travel limiter" would limit the angle through which the disc-carrier would travel relative to the base part to around 130°. It is true that there is no specific limitation to any particular angle in Claim 1, but it appears that the draftsman was content to limit himself in the teaching of Claim 1, at least, to identifying the maximum angle by reference to what had to be capable of being done, namely in feature (m), rather than by reference to arithmetical precision.

29. When construing a claim in a patent, one must, as Mr Carr rightly emphasises, avoid implying words of limitation: one must take the Claim as one finds it. However, a claim in a patent, like a clause in any other document with commercial implications, should not be construed in isolation. The Court can, indeed the Court should, construe a claim in a patent in the context of that patent as a whole, and, indeed, through the eyes of persons skilled in the relevant art or arts as at the priority date.

30. I consider that there are passages in the description of the Patent in suit which support the construction contended for by the defendant. First, there is the reference on page 2 to the risk of a CD "falling out and [impliedly, thereby] becoming scratched or otherwise damaged". Even more significantly, in this connection, there is the specific contention on page 3 of the description that the claimed invention has the advantage of "protection against falling" which is said to be "further improved by limiting the angle of opening". In my judgment, if the maximum angle through which the disc-carrier can be swung relative to the base part is significantly less than 180°, then the risk of the first disc falling is correspondingly reduced: as one progressively swings the disc-carrier beyond an angle of 90°, the first disc becomes increasingly more likely to fall and thereby to become damaged, partly because of the increased effect of gravitational force as the angle progresses from 90° to 180°, and partly because of the rising momentum as the angle increases. It appears to me that this is equally true whether the cassette is resting on a table or is being held in one's hand. While neither CD should fall if it is properly held by the clamp holders, they cannot always be relied upon, particularly after fairly frequent use, as handling the exhibits in the present case has demonstrated.

31. It seems to me that the defendant's construction is also supported by the reference on page 6 of the Patent in suit to the disc-carrier being pivotable "by about 90° relative to the base part". While it would clearly be wrong to treat Claim 1 as limited by these words in the description, it appears to me that they provide support for a construction, arrived at without regard to them, which suggests that the maximum angle is in the region of 130° rather than 270°. I also refer to the second passage I have quoted from page 6 of the Patent in suit, which refers to Figure 1. In my judgment, the defendant's construction as to the effect of feature (m) of Claim 1 lies a little more happily with the position shown in Figure 1 than does that of the plaintiff.

33. In rejecting Mr Carr's argument on this point, I have not overlooked the immediately following words, "resulting in damage to the [CD]". These words do not identify the nature of the damage involved, nor its cause. "Turning over completely" does not of itself result in damage to CD's, it is only what happens as a result of turning that might do so. I consider that these words are directed to damage caused by falling. Mr Carr contends that the reference to damage is that which results from the CD coming "in contact with other parts in [its] neighbourhood" as mentioned elsewhere in the description, but on the whole I agree with Mr Wilson. It seems to me that the passage referred to by Mr Carr is identifying a problem with the 588 Patent so far as its use for CD's is concerned. On the other hand, falling is a specific problem said to be avoided by the alleged invention according to the description. That conclusion is consistent with "turning over completely" being a reference to 180°.

34. I do not believe that this is inconsistent with a passage in the description relating to the 588 Patent, where it is said the fact that "the information storing surfaces" of CD's should not "come in contact with other parts": Mr Carr contends that this explains the need for a maximum angle of opening for the disc-carrier, namely that it should not be an angle which was so great that the inside edge of the first disc came up against the outer edge of the underside of the base part, or the corner of the upstand and that outer edge. I am not impressed with that argument. It seems to me that the 588 Patent was concerned with a very different invention, and the point being made in the description was that the degree of contact which it would involve in relation to the information-storing surface of a disk was such that it was inappropriate for storing CD's. The plaintiff's construction is not so much concerned with any part of the cassette coming into contact with the surface of the first CD, as with part of the cassette coming into contact with the edge or rim of the first CD, causing it either to buckle or fall. It seems to me that that is something which is simply not referred to anywhere in the Patent in suit, and would anyway depend upon the precise location of the first CD within the disc-carrier, coupled with the location of the second set of hinges relative to the outside edge of the base part.

35. Mr Carr separately relies upon another observation in the description referring to the 588 Patent, namely that the storage box disclosed by that patent "can be pivoted through 60°, or a maximum of about 100°...". To my mind, that does not take matters any further: a maximum opening angle of 60° for the disc-carrier is obviously too small for the purposes of the teaching of the Patent in suit, and an angle of 100°, while certainly consistent with the teaching of the Patent in suit, could well be regarded as too constricting if it was the absolute maximum angle.

36. Similarly, the reference, also on page 3 of the Patent in suit, to the disc-carrier being "pivotable through a wide angle" does not assist the plaintiff's case. The concept of "wide angle" could well mean anything which is an obtuse angle, and it can be said that if the draftsman had in mind a specific concept, such as, for instance, a reflex angle, one imagines that he would have said so. Quite apart from this, the "wide angle" referred to has to be read together with the reference in the same paragraph of the description to the "means for limiting the angle" and the aim of "prevent[ing] the disc-receiving part turning over completely", as well as the specific benefit identified on the same page as "limiting the angle of opening".

37. Mr Carr also suggests that the terms in which Claim 7 of the Patent in suit is expressed are inconsistent with the construction advanced on behalf of the defendant. I do not agree with that. It appears to me that, on the defendant's case, the purpose of Claim 7 is to express the maximum angle of opening in Claims 1 to 6 in arithmetical terms, whereas those Claims express the maximum angle of opening in purely functional terms. It is fair to emphasise that Claim 7 is equally consistent with the plaintiff's construction of Claim 1; my view is that it is simply neutral on the issue dividing the parties on the construction of Claim 1.

38. If one turns from the actual terms of the Patent in suit, and considers the common general knowledge which would be attributable to the person to whom that Patent is to be treated as directed, it appears to me that there is nothing to contradict the defendant's construction. If anything, it seems to me that reading the Patent through the eyes of a person skilled in the art tends to support the defendant's construction. First, such a person would know that the two cassettes in common use at the time, namely the Jewel box and the multi-pack, were so designed that the maximum angle to which the cover part would pivot relative to the base part (in the case of the Jewel box), or the base parts would pivot in relation to the middle part (in the case of the multi-pack) would be about 180°. Accordingly, the concept of a "pivot-travel limiter", which provides a maximum angle to which the disc-carrier can pivot relative to the base part, might well suggest an angle of less than 180°, rather than as much as, or more than, 180°. Secondly, a reasonably skilled person would know that neither the Jewel box nor the multi-pack was a particularly robust article, and that it would be desirable to minimise the strain caused on the pivoting system comprising the second set of hinges. Accordingly, one might reasonably expect the pivoting-travel limiter to ensure that less, rather than more, strain was put on the cassette; that would suggest a lower, as opposed to a higher, maximum angle of turning for the disc-carrier. I should emphasise that neither of these two points appears to me to be of much weight in connection with the question of construction, but they at least serve to emphasise that there is nothing in the conclusion I have reached which is called into question, if one bears in mind that the Patent is to be treated as read through the eyes of a person reasonably skilled in the art.

39. The defendant also relies upon criticisms of the Patent in suit contained in a subsequent patent registered in the name of the plaintiff in the European Patent Office, EP 0 515 342 ("the 342 Patent"). On page 6 of the description of the 342 Patent, which was deposited on 17th February 1992, it says this of the Patent in suit:

40. The defendant contends that this passage confirms the view that the teaching of the Patent in suit involves the disc-carrier swinging to a maximum of less than 180° relative to the base part.

42. Accordingly, without in any way relying on the 342 Patent, I have reached the conclusion that the defendant is right on the issue of construction dividing the parties on Claim 1.

43. Until the plaintiff was given leave to amend at trial, the defendant's cassettes which were alleged by the plaintiff to infringe Claim 1 were said by the defendant not to infringe the Patent in suit on the sole ground that the disc-carrier of its cassettes opened to a maximum angle of 180°, or a little more than, 180° relative to the base part. In light of the conclusion I have reached on the issue of construction, it follows that I accept that argument and that, accordingly, the defendant succeeds on the issue of infringement of Claim 1 as originally pleaded against it. It also follows that the allegations of infringement of Claims 2 and 5 of the Patent in suit fail for the same reason.

44. However, after the trial began, two further issues were raised on the question of infringement. The first arises from the fact that the plaintiff has identified some new cassettes manufactured, used and marketed by the defendant, which, the plaintiff contends, may infringe even if the cassettes of which complaint was originally made do not. These new cassettes differ from the original cassettes of which complaint was made, in that the disc-carrier on the new cassettes opens to a maximum of rather less than, as opposed to rather more than, 180°. On the new cassettes that I have seen, I would estimate the maximum opening angle as being, at the lowest, in the region of 165°. In my judgment, none of these new cassettes infringe. Applying the construction that I have accepted, it cannot to my mind be said that, when the disc-carrier is open to an angle of 165° relative to the base part, the side of the disc-carrier containing the first disc is "freely accessible for removal of [the first] disc" within the meaning of feature (m) of Claim 1.

46. I do not accept that argument. Feature (l) refers to the "the second hinge device", whereas Mr Wilson's argument treats the feature as if it referred to "two second hinge devices", in the sense of there being two hinges upon which the disc-carrier pivots relative to the base part. It seems to me, however, that the reference to "the [singular] hinge device" particularly in the context of Figure. 1, and the reference to "the end wall... serv[ing] to limit the pivoting travel of the disc-carrier" on page 6 of the description, indicate that it is the whole of the upper edge of "the end wall" or upstand of the base part which operate as the "pivoting-travel limiter" at 9 in Figure. 1, and is said to be "in the region of the second hinge device". After all, this upstand runs from the location of one of the second hinge devices to the location of the other.

47. Accordingly, while I reject this alternative argument raised by Mr Wilson, the defendant succeeds on the issue of infringement.

48. The obviousness attack mounted on behalf of the defendant principally relies on three matters. The first is the Jewel box itself, which essentially founds the basic shape and packaging arrangement of the alleged invention, consisting as it does of a cover part, a base part, and, between them, a disc-carrier. Secondly, there is the multi-pack, which, when adapted to hold four CD's, is said to be fundamentally very similar in concept to the alleged invention in the present case. Like a multi-pack, the alleged invention involves a disc-carrier which holds two CD's and is pivotally connected by a hinge device to the base part.

49. Thirdly, there is the disclosure contained in the closing words of the specification of the 903 Patent, together with the contents of Figures 1, 6a and 6b thereof. As I have mentioned, the 903 Patent is a little difficult to understand, and was concerned with a problem which was swiftly and more simply solved, namely how to enclose the information card in a Jewel box between the disc-carrier and the base part. Figure 1 of the 903 Patent shows a cassette consisting of a base part and a cover part pivotally joined by a hinge mechanism, and somewhat similar to the base part and cover part of a Jewel box. They are only "somewhat similar", because the thickness of the cassette, when shut, appears to be about 15% greater than that of a Jewel box, and the upstands, or vertical parts, of the base and cover parts (effectively forming the side enclosures of the cassette when closed) are rather differently shaped from those in the Jewel box. The disc-carrier in Figure 1 of the 903 Patent is not shown fixed into the base part, as in the Jewel box, but is pivotally attached to the base part by the same hinge mechanism as the cover part: consequently, if the cassette envisaged by the 903 Patent is open on a flat surface, it appears that the disc-carrier could move through 180°, that is, from resting in the base part to resting in the cover part.

50. At the very end of the description of the 903 Patent, one finds the following:

51. Figures. 6a and 6b of the 903 Patent appear to show how a CD could be held on each side of the disc-carrier.

53. The first stage is "to identify the inventive concept embodied in the Patent in suit". This is characterised by Mr Carr in terms, which I do not understand Mr Wilson substantially to dispute, and which appear to me to be accurate. Those terms were, in relation to Claim 1:

54. The second stage involves the Court "assum[ing] the mantle of the normally skilled but unimaginative addressee in the art at the priority date and... imput[ing] to him what was, at that date, common general knowledge in the art in question". The state of the art relative to the alleged inventive step was the 903 Patent, and the common general knowledge consisted of the Jewel box and the multi-pack. It also included what is known as a "two piece", namely a cover part and a base part whereby the clamping system is actually moulded on the base part, which therefore functions as a disc-carrier as well as a functioning base part.

55. The third stage requires one to identify "what, if any, differences exist between the matter cited as being "known or used" and the alleged invention". The differences between the Jewel box and the alleged invention disclosed by the Patent in suit are:

56. So far as the multi-pack is concerned, it differs from the alleged invention disclosed by the Patent in suit in that:

57. So far as the relevant disclosure of the 903 Patent as relied on by the defendant is concerned, it can be said that the differences between it and the alleged invention are similar to items 3 and, to a lesser extent, item 1 which distinguish the multi-pack from the alleged invention. In addition, the 903 Patent contains no precise teaching as to how the disc-carrier can be adapted to hold two CD's rather than one.

59. On behalf of the plaintiff, Mr Carr suggests that, for the skilled man to arrive at the alleged invention the subject of Claim 1, six steps would have been required, namely:

60. He argues that a further, seventh, step is necessary to arrive at Claim 2, namely to realise that it is possible to use the cover and base parts of a Jewel box for a twin CD box of the same size.

63. Without forgetting the risks of relying on the step by step approach, it is right to mention that it was the fifth and sixth (and possibly the fourth) steps which Mr Carr and the expert witness called on behalf of the plaintiff, Mr Filip Lammerant, identified as constituting the inventive steps. Mr Lammerant adhered to that view, not withstanding powerful cross-examination from Mr Wilson, who was able to point out (as he understandably also emphasises in his submissions) that:

64. As to the first step, it seems to me that Mr Wilson is right in saying that the idea of fitting two CD's into a box of the size used previously for one is obvious in that it is hard to see, at least in a simple case of this sort, what invention there could be in the idea of packing products more economically than before. This argument derives assistance from the fact that the multi-pack was in common general use at the priority date, with the middle part acting as a disc-carrier for two CD's. In addition, although it might not occur to a layman that the disc-carrier in a Jewel box could (not) hold two CD's without the need to widen the box it would be readily apparent to a man skilled in the relevant art.

65. Additionally, I consider that the relevant part of the 903 Patent make it difficult for the plaintiff to contend that the first or second step was inventive. In its closing words, the description of the 903 Patent discloses the ideas of using the disc-carrier to hold two CD's and of having the disc-carrier hinged on the base part. However, there is force in Mr Carr's argument that the 903 Patent would not have been regarded by the skilled man as a useful starting point for further development. In particular, the fundamental point of the 903 Patent was that the Jewel box was not satisfactory, whereas the Patent in suit is in many ways based on retaining the basic Jewel box design (although that is not in terms mentioned in Claim 1). Further, the 903 Patent positively teaches away from hinging the disc-carrier on the outside edge of the base part.

66. So far as the third step is concerned, I am not sure that it is legitimate to contend that it is within the teaching of Claim 1. It is only when one comes to Claim 2 that there is specific reference to a type of cassette effectively already in commercial use at the priority date - i.e. the Jewel box.

67. Having identified which of the steps are, on its case, inventive, and having warned against the step by step approach, the plaintiff relies on three points to assist its case in defeating the defendant's contention of obviousness.

70. This point is fine so far as it goes, and is undoubtedly a useful warning. Elegant simplicity can often be more inventive than confusing complexity, although it is easy to mistake the former for obviousness and the latter for inventiveness. However, it is equally true that one should not risk leaning over backwards to hold that a simple concept is inventive.

71. The plaintiff's second point relies on the fact that only the plaintiff called expert evidence. I have already referred to Mr Lammerant, and the fact that he was not persuaded by Mr Wilson's cross-examination to change his stated view that the alleged invention claimed by the Patent in suit was indeed inventive and not obvious. Although the defendant exchanged a report from its own independent expert, Mr Wilson elected to call no evidence. Mr Carr referred to dicta of high authority emphasising the weight which the Court will normally give to expert evidence on the issue of obviousness.

73. He went on to give one specific reason as to why expert evidence given after the event may not by any means always be decisive:

75. In the same case, Lord Diplock said this at 360 line 39 to 361 line 3:

78. Mr Lammerant is undoubtedly an expert in the relevant field. He has been involved in plastic injection moulding since 1982, and his experience with CD cassette boxes began in 1985, when he started to investigate whether they would be a worthwhile addition to the plaintiff's product range. Pursuant to a licence granted by Polygram in August 1986, the plaintiff has manufactured Jewel boxes and multi-packs, both of which it started producing in 1987. Mr Lammerant has himself been closely involved in the plaintiff's business of manufacturing and setting cassettes for CD's on a large scale. He also has been personally involved in designing cassettes, albeit after the priority date of the Patent in suit; indeed, together with his father, he is recorded as the inventor in the 342 Patent.

79. However, Mr Lammerant has an obvious vested interest in the Patent in suit being valid. Not only is he a director of the plaintiff: he and members of his family have substantial shareholdings in the plaintiff; indeed, the plaintiff purchased the Patent in suit for DM500,000. While there can be no question as to his expertise in the field of cassettes for containing CD's, and while I would certainly not question his honesty, Mr Lammerant was not an entirely dispassionate witness. Mr Wilson was not inaccurate in describing Mr Lammerant as a good salesman, and he did not leave this aspect of his character behind when he entered the witness box. Nonetheless, I am far from saying that his evidence should be discounted entirely, but it seems to me right to approach it with a degree of caution. He seemed to me to be a witness with considerable direct relevant experience, doing his best but not able to be entirely dispassionate.

80. The plaintiff's third point relies on Mr Lammerant's evidence that the need for a slim cassette to hold two CD's had existed since at least 1987 coupled with the commercial success which the plaintiff has enjoyed in relation to the market for slim cassettes used to hold two CD's. In those circumstances, Mr Carr argues that, if the alleged invention was so obvious, it is hard to explain why it was not manufactured in 1987, given the large size of the CD market even at that time. Mr Lammerant's view is supported by the fact that the two piece, to which I have briefly referred, had been produced under licence from Polygram since 1987 for the budget market, by the fact that by a patent for the so-called Z box (a differently designed thin cassette holding two CD's) was applied for by Phillips and Dupont Optical Company ("Phillips") in November 1989, and by the obvious fact that the only alternative on the market was the multi-pack, which, when carrying only two CD's, represented a waste of space. As to commercial success, there is no doubt that the plaintiff's Brilliant box has been very popular since its launch.

81. The defendant, however, contends that the market was not ready for the relevant product, namely a cassette of the same thickness as the Jewel box, holding two CD's, until about 1991. The defendant relies upon a number of factors to justify this contention. First, in 1991, it appears that at least four manufacturers came up independently with a cassette of the thickness of a Jewel box, containing substantially the same components as a Jewel box, but capable of holding two CD's.

82. Without going into much detail, the four such cassettes were:

83. The defendant's contention that this is not a case where there was a long felt need for the alleged invention disclosed by the Patent in suit is also said to derive support from the fate of yet another type of thin cassette for two CD's, namely the Z-box, which as I have mentioned was introduced into the market by Phillips in November 1989. The Z-box involves a disc-carrier which is capable of carrying a CD on either side, and which is pivotally connected at either end to cover parts which can swing up to an angle of just over 180° in relation to the disc-carrier; when each cover part is at an angle of about 40° to the disc-carrier, this cassette, when viewed sideways, looks like a Z: hence its name. Although marketed from about 1989, it was unsuccessful.

84. The defendant also relies upon the fact that it was not until early 1991 that it, the defendant, first sought a licence to manufacture "the new "slim line" double pack": had there been market demand for such a cassette, the defendant contends that it would have asked for a licence earlier.

85. Further when Ms. Petra Dunker, the inventor who applied to register the Patent in suit, and from whom the plaintiff acquired it, actually had the idea, in 1988, nobody appears to have taken it up. That of itself, says Mr Wilson, suggests that the market was not in truth ready for the idea of a cassette to hold two CD's, which was of the same thickness of the Jewel box, and in any event much slimmer than the multi-pack. In effect, what is said is that Ms. Dunker, with the current alleged invention, like Phillips, with the Z-box, were ahead of their time, albeit only by a couple of years or so.

86. The defendant also challenges the plaintiff's case so far as commercial success is concerned. The Z-box Patent states that, prior to its introduction, approximately 70% of multi-packs contained only two CD's: it was apparently this which prompted the development of the Z-box. Given that this patent was registered by Phillips, Mr Wilson argues that it can be regarded as reasonably reliable. Mr Lammerant stated in his evidence that it still remains the case that 70% of multi-packs contain two CD's, and, indeed, he also accepted that the multi-pack was almost universally used for premium priced CD's. The reason why the plaintiff can show a substantial market for slim line twin-CD cassettes, it is said by the defendant, is that, since 1990 or thereabouts, there has been a large increase in the availability of cheap CD's, and slim line twin-CD cassettes, such as the Z-box and the four developed in 1991 were effectively prompted by that, a point supported by the fact that the multi-pack is still used for the great majority of twin CD's at the higher quality end of the market.

87. These points undoubtedly weaken the plaintiff's contention, substantially based on the evidence of Mr Lammerant, that there was a real and substantial demand or need as at the priority date for a product such as the alleged invention claimed by Claim 1 or Claim 2, and in particular a cassette with the same thickness as a Jewel box, but carrying two CD's. However, particularly bearing in mind that no evidence directly contradicting the view of Mr Lammerant has been called and that Mr Lammerant, while inclined to exaggerate, was basically an honest as well as a relevantly expert witness, I do not consider that the position with regard to demand was as stark as the defendant contends as at the priority date. The fact that the two piece was already being used does demonstrate, to my mind, that there was a market for cheap cassettes. The fact that the Z-box was marketed a little more than a year after the priority date suggests that Phillips, a substantial company in the particular market, took the view that there was a demand for thin cassettes holding two CD's; the fact that the Z-box was not successful may well be attributable to the fact that it was not regarded as attractive by CD retailers and purchasers, as is evidenced by its failure to compete in the market against the Brilliant box. One can well see that, although substantially less bulky than the twin pack, the Z-box could well have been regarded as difficult to use, especially compared with the Brilliant box.

88. The fact that there was a burgeoning of similar ideas to the Patent in suit in early 1991 could be attributable to a sudden demand, or it could be due to other factors; for instance, it may be that it was thought that the Z-box would be successful or it may be that it took time for other parties to think of a new design. Further, the Pilz box is no longer made and the Posso box has not been successful: their failure as against the Brilliant box suggests that they may be simply unattractive to the market. The position regarding the Viva box is more confined as, due to proceedings brought by the plaintiff, it has only recently been properly marketed.

89. So far as the defendant's application for a licence in 1991 is concerned, I do not know what factors weighed with the defendant: no evidence has been called on its behalf.

90. As to the commercial success the plaintiff relies on, it does not seem to me that the evidence relied on by the defendant relating to the multi-pack is conclusive by any means. One would need to know far more information about details of the CD cassette market in 1987 to 1993 than the few facts relied on by the defendant before one could draw from conclusions of the sort for which the defendant contends.

91. I have found the issue of obviousness difficult to determine, and must confess that my mind wavered not only during the argument, but while writing this judgment. Ultimately, I decide that the plaintiff succeeds, and that the alleged invention claimed in Claim 1 was not obvious. I reach that conclusion for the following reasons:

92. In the original application for the Patent in suit, there was no reference to the 588 Patent. Reference to that Patent was added in circumstances which are not relevant. The defendant contends that, in so far as the plaintiffs succeeded on the issue of construction due to the later addition of the reference to the 588 Patent in the Patent in suit, then it represented "added matter", contrary to Section 72(1)(d) of the Patents Act 1977.

93. I do not propose to devote much consideration to this issue, because, although the plaintiff did rely upon comments in the description in the Patent in suit on the 588 Patent, those references did not, whether on their own or taken together with other parts of the description of the Patent in suit, cause me to find in the plaintiff's favour on construction. Accordingly, as I understand the defendant would accept, it has no case on added matter.

94. I ought perhaps add this. I would be reluctant to hold that the addition of a reference to the prior art in a patent constituted impermissible added matter. However, I accept that it could well be that, if the Court concluded that the way in which this subsequently added prior art was described in the relevant patent resulted in a different construction of a particular claim in the patent from that which the Court would otherwise have adopted, then it could well be that it constitutes added matter.

95. In these circumstances, I conclude as follows:

4. The allegation based on added matter does not arise.