Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd.& Anor, Court of Appeal - Civil Division, June 24, 2005, [2005] EWCA Civ 761

Resolution Date:June 24, 2005
Issuing Organization:Civil Division
Actores:Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd.& Anor
 
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Neutral Citation Number: [2005] EWCA (Civ) 761Case No: A3/2004/1713 & A3/2004/1708IN THE SUPREME COURT OF JUDICATURECOURT OF APPEAL (CIVIL DIVISION)ON APPEAL FROM THE HIGH COURT OF JUSTICECHANCERY DIVISION (Patents Court)Mr Justice LewisonHC03C02313Royal Courts of JusticeStrand, London, WC2A 2LLDate: 24/06/2005Before :LORD JUSTICE MUMMERYLORD JUSTICE JACOBandLORD JUSTICE NEUBERGER- - - - - - - - - - - - - - - - - - - - -Between :- - - - - - - - - - - - - - - - - - - - -- - - - - - - - - - - - - - - - - - - - -John Baldwin QC, Adrian Speck and Jessie Bowhill (instructed by Ultraframe in-house legal department and Messrs Hammonds) for the AppellantSimon Thorley QC and Thomas Mitcheson (instructed by Messrs Martineau Johnson) for the RespondentsHearing dates : 4th, 5th and 6th May 2005- - - - - - - - - - - - - - - - - - - - -Judgment Approved by the courtfor handing down(subject to editorial corrections)If this Judgment has been emailed to you it is to be treated as `read-only'.You should send any suggested amendments as a separate Word document.Lord Justice Jacob: 1. The claimants, Ultraframe, and Eurocell (as I shall collectively call the two defendants) make and sell kits of parts for making low pitch conservatory lean to roof assemblies. Speaking generally these assemblies are made from long (up to 4m x .5m) hollow UPVC panels joined together and provided with sufficient strength. Ultraframe sued Eurocell in respect of its product called Pinnacle 500, a competitive product to Ultraframe's Ultralite 500. The claim was for infringement of patent No. 2,300,012 and of unregistered design right (``UDR'') in the panels, a complete assembly, and in some components for the product (top and end caps and U shaped channels) of the Ultralite 500. Eurocell counterclaimed for revocation of the patent.2. By his main judgment, [2004] 1785 EWHC (Ch), [2005] RPC 111 Lewison J held that:i) the patent was not infringed;ii) the patent was valid;iii) there was no fresh UDR arising from minor changes made to the design of the Ultralite 500 in 1995;iv) there was no infringement of design right in the components;v) but there was infringement by the Pinnacle 500 panels themselves and by the whole assembled Pinnacle 500 product.3. By a supplementary judgment Lewison J held that it was legally possible for a defendant to undertake, pursuant to s.239 of the Copyright Designs and Patents Act 1988 (``CPDA''), to take a licence under s.237 even though at the time of the undertaking rights in the design had expired. The effect of this is to limit the amount of damages which can be claimed for infringement of UDR to twice the royalty which would be fixed by the Comptroller.4. Ultraframe appeals the finding of non-infringement of the patent and the s.239 decision. It does not appeal the finding of non-infringement of UDR in the components nor the finding that no fresh UDRs were created in 1995. Eurocell appeals the findings of infringement of UDR (i.e. in panels and whole assemblies). It also appeals the finding of validity of the patent but only if the court concludes that the patent covers the Pinnacle 500. The Patent Action(a) The principles of claim construction5. The Judge approached the problem via the so-called ``Protocol'' questions. After he did so the principles as to the determination of the extent of a patent monopoly have been clarified by the House of Lords in Kirin Amgen v Hoechst Marion Rousel [2004] UKHL 46, [2005] RPC 9. The result of that case is that the key principle is simply one of construction of the claim, read in the context of the description and the drawings: ``There is only one compulsory question, namely that set by Art.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'' (per Lord Hoffmann at para.69).In answering the question one is to assume that the person knows that the claim is ``to demarcate'' the invention (para.33).6. Although the Protocol questions can be a guide, their application often produces unnecessary difficulties. They require, for instance, the court to consider a ``variant'' - which begs the question ``from what?'' I therefore propose to go straight to the compulsory question.7. Before the court gets to the examination room it has to do some swotting: to get into its mind the relevant knowledge of the skilled man. For how a document will be understood depends on the reader. The reader of the compulsory question is a notional figure, the skilled man, whose attributes I summarised in Technip France's Patent [2004] EWCA Civ 381 [2004] RPC 46 at paras [6-8].(b) The common general knowledge in this case8. Lewison J summarised much of this in paragraphs [4] to [17] of his judgment to which reference may be made for detail. He also in paragraph [78] said this, which was also uncontroversial:i) If you were fixing roofing panels for a lean-to conservatory you would fix them one at a time;ii) While you were fixing them you would be working above your head;iii) To fix them at all (if you were working on your own) you would need to support one end of the panel at the wall-plate (against the wall of the main building) and the other end on the front frame of the conservatory;iv) Each panel would invariably have some flexibility, as well as uneven edges produced either by the extrusion process, or their subsequent treatment on site or in transport. The extruded plastic panels would often be "laterally bowed" (caused by thermal shrinkage in extrusion) i.e. would be slightly banana shaped along their length;v) When the first panel was fixed in place, it would be very difficult to `line up' the next panel all the way along its length especially if you had to engage the second panel at an angle to the first;vi) Because of these characteristics of extruded plastic panels, it was difficult for the manufacturer to achieve exactness, and tolerances would be expected.9. It is necessary to elaborate a little more on how a particularly well-known prior art system worked. It was called the Everlite 250. This can be done by reference to the drawings of Patent No 2,243,170 for it was common ground that fig. 3 of this shows it:10. This shows two panels assembled together. The bottom part 120 (coloured brown) of one panel is hooked over part 122 of the other. At the top 132 is hooked over the top of the vertical wall 104. When the roof is being installed it is necessary to start from the left. The first panel (about 4m long and 25cm wide) is laid with one end on the outer wall of the conservatory and the other on the wall plate fixed to the side wall of the house. The next panel has to be hooked over the first. This prevents horizontal movement before the stiffener is inserted (blue, 150). To hook it over is fiddly - partly because of the imperfections such as the banana shape noted by Lewison J and partly because in any event the right hand panel has to be lifted above, and manoeuvred by angling, over the top of the ``hooks.'' This of course would be impossible or very difficult if there was an overhanging roof (the underside of which is called a soffit) as there would be for some bungalows. 11. After the panels are hooked together there is a duct between them. The aluminium stiffening member 150 is pushed into the duct. This provides both strength and stops vertical movement between the panels. So in the final structure the panels are held together in two ways: horizontally by being hooked together and vertically by the combination of the formations on the two panels and the stiffening member.12. I have sought to describe this in words, though we had the advantage of samples of the Everlite from which I can well appreciate the fiddly nature of the job of hooking long (up to 4m.) panels together overhead. We were also provided with samples of other prior art products which had the same problem. The skilled man would, of course, have been familiar with the problem from his experience.(c) The patent in suit13. It is with that background that the skilled man would come to read the patent. It is entitled ``structures.'' So he will not be surprised to find, in due course, that the claims are directed at structures, not to methods. The first paragraph is a recognition generally of prior art of the kind I have already discussed:``Self-supporting roofs or roof sections are known which comprise a plurality of extruded plastics profile elements connected side-by-side, each element having at least one longitudinal chamber and coupling members by which neighbouring profile elements are interconnected, the adjacent coupling members of neighbouring profile elements engaging to form a duct.''14. There follows an acknowledgement of four prior patent specifications, namely UK 1528874 (``Sokoler `76''), UK 1,511,189 (``Sokaler '78), EP 0070930A (``Sokoler 83''), and UK 2,147,334B (``Bastionsen''). The precise detail of each of these does not matter for present purposes. It suffices to note that in all of them the panels are provided with means so that they are connected together - ``interconnected'' - to use the word used in the opening paragraph. There is no specific acknowledgement of the Everlite 250 Patent I have just mentioned, but the paragraph of course would be seen as applying to that too.15. Next the patent points out a problem with these earlier proposals:``Each of these elements has to be secured, usually by means of screws, before the next element can be connected, which can be time-consuming and does not readily permit later adjustments of element positions.''16. There follows a paragraph which neither side could explain, but upon whose unintelligibility nothing turns so I do not repeat it. The patentee then says ``An object of this invention is to provide an improved building structure'' and comes to his invention. He sets it out in a consistory clause which is the same as claim 1...

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