Factual and Procedural Background
This appeal concerns a decision by Judge Fysh QC in the Patents County Court involving a claim for patent infringement and a counterclaim for revocation of UK Patent No. 2346464 ("the Patent"), entitled "Portable computer". The appellant, Company A, is the registered proprietor of the Patent, which relates to a method of mounting flat panel display devices into housings used in portable computers and monitors.
Company A initiated infringement proceedings against three respondents, Company B, Company C, and Company D. The respondents denied infringement and counterclaimed for revocation on grounds including anticipation, obviousness, and insufficiency. Company A sought to amend the Patent during the proceedings to address part of the respondents' revocation case.
The trial took place over six days in September 2005, with a detailed judgment issued on 28 November 2005. The judge explained the technical background, the Patent specification, common general knowledge, expert witness reliability, and the appropriate approach to claim interpretation. He then considered the proposed amendments and refused them on grounds of added matter and lack of clarity.
Company A conceded that failure to allow the amendments meant the Patent was invalid and the infringement claim would fail. Nevertheless, the judge proceeded to consider the case on the assumption that amendments were allowed, ultimately finding no infringement and that the Patent was obvious over prior art, thus dismissing the infringement claim and granting revocation.
Company A appeals against all conclusions except the rejection of the respondents' lack of novelty argument. The respondents have cross-appealed.
Legal Issues Presented
- Whether the proposed amendments to claim 34 of the Patent should be allowed, specifically addressing added matter and clarity under sections 14(5) and 76 of the Patents Act 1977.
- Whether the Patent was infringed by the respondents' products, considering the interpretation of fastening arrangements in claim 34.
- Whether the Patent was obvious in light of prior art, including US patents and Japanese patent applications.
Arguments of the Parties
Appellant's Arguments
- The second amendment to claim 34 is sufficiently clear, as the term "behind" should include fastening partly or wholly behind the glass layer of the module.
- The amendments do not add matter since some drawings in the Patent reveal the fastening location under the glass, and the amendments narrow the claim rather than broaden it.
- The respondents infringed the Patent because at least one fastening was behind the glass, and the term "frame" should be understood broadly to include metal supports on the sides of the module.
- The Judge erred in the obviousness analysis by failing to properly consider the inventive concept as positioning fastening behind the glass and by misapplying the mindset of the skilled person regarding the problem addressed.
Respondents' Arguments
- The proposed amendments constitute added matter, either individually or in combination, contrary to section 76.
- The second amendment lacks clarity due to uncertainty about the exact location of the fastening relative to the glass and module.
- There was no infringement because the fastening was not solely behind the glass, and the term "frame" does not extend to side brackets.
- The Patent is obvious over prior art including US patents (Ma, Hashimoto) and Japanese patent applications (Fujitsu).
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Southco Inc. v. Dzus Fastener Europe Ltd [1990] R.P.C. 587 |
Definition and scope of "added matter" under section 76; prevents altering claims to cover a different invention than originally disclosed. |
Applied to determine that proposed amendments added matter by introducing new features not originally disclosed or by disclaiming prior art improperly. |
| Re Palmaz's European Patents (UK) [1999] RPC 47 |
Concept of "intermediate generalisation" as a species of added matter; disallowing amendments that extract features from embodiments without their original context. |
Applied to reject amendments that introduced features from preferred embodiments without their contextual inventive significance. |
| G 01/93 Advanced Semiconductor Products [1993] EPOR 97 |
Permitted amendments to add references to prior art and limit claims accordingly; caution when prior art is described by patentee. |
Referenced to explain boundaries on amendments and when disclaimers or limitations are acceptable. |
| G 1/03 PPG/Disclaimer [2004] EPOR 331 |
Distinction between accidental and non-accidental anticipation; disclaimers allowed only for accidental anticipations. |
Used to assess whether disclaimers in amendments were permissible, concluding that prior art was non-accidental and disclaimers added matter. |
| C van der Lely v. Bamfords Ltd [1963] RPC 61 |
Expert evidence on interpretation of drawings and specifications in patent cases. |
Applied to support the judge’s reliance on expert evidence regarding unclear directions in drawings relevant to amendments. |
| Technograph Printed Circuits Ltd v. Mills & Rockley Ltd [1972] RPC 346 |
Caution against a step-by-step approach to obviousness that reconstructs invention with hindsight. |
The court found no error in the judge’s approach to obviousness and that expert evidence supported the findings. |
| Mylnycke AB v. Procter & Gamble (No 5) [1994] RPC 49 |
Expert evidence constitutes primary evidence on obviousness. |
Supported the weight given to expert testimony in assessing obviousness. |
Court's Reasoning and Analysis
The court began by analyzing the clarity of the second amendment to claim 34, concluding that the language was sufficiently clear to encompass fastening wholly or partly behind the glass layer. The court rejected the judge’s finding of lack of clarity, emphasizing ordinary meaning and context within the Patent.
Regarding added matter, the court applied section 76 of the Patents Act 1977 and relevant case law. It found that both the first and second amendments introduced features not clearly and unmistakably disclosed in the original specification. The second amendment was an impermissible intermediate generalisation, extracting a feature from preferred embodiments without their original context or inventive significance. The first amendment introduced a new feature or disclaimer not supported by the specification, and was also aimed at avoiding prior art (Hashimoto), constituting added matter.
The court further considered the combination of amendments and agreed with the respondents that their combination also constituted added matter due to lack of disclosure of the combined features.
On infringement, the court agreed with the judge that the claim should be interpreted contextually, requiring the sole fastening to be behind the glass. Since the respondents’ products had additional side fastenings, no infringement arose. The word "frame" was interpreted in its broader engineering sense, but this did not affect the infringement conclusion.
On obviousness, the court upheld the judge’s findings that the Patent was obvious over prior art including US patents Ma and Hashimoto, and Japanese patent applications Fujitsu. The court rejected appellant’s arguments of errors in the judge’s approach, affirming that the judge properly considered the mindset of the skilled person and the relevant prior art disclosures. The court found the inventive contribution modest and the differences from prior art non-inventive.
Holding and Implications
The court DISMISSED the appeal and upheld the decision below.
The direct effect is that the Patent remains revoked and the infringement claim fails. The court confirmed that the proposed amendments were impermissible due to added matter and lack of clarity, no infringement was established, and the Patent was obvious over prior art. No new legal precedent was established; the decision applies existing principles of patent amendment, claim interpretation, and obviousness.