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CACV000193/1989
| IN THE COURT OF APPEAL |
1989, No. 193
(Civil) |
BETWEEN
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IMPROVER CORPORATION |
1st Plaintiff
(1st Appellant) |
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MEPRO COMPANY KIBBUTZ HAGOSHRIM (1987) LIMITED |
2nd Plaintiff
(2nd Appellant) |
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AND
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RAYMOND INDUSTRIAL LIMITED |
1st Defendant
(1st Respondent) |
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GOOD NATURE COMPANY LIMITED |
2nd Defendant
(2nd Respondent) |
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Coram: Hon. Fuad V.P., Clough & Penlington JJ.A.
Date of hearing: 10 - 13, 16 - 19 July 1990
Date of handing down of judgment: 4 September 1990
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JUDGMENT
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Penlington J.A.:
1. This is the judgment of the Court.
Background
2. For many years there has been a search for a satisfactory depilatory device or process that combined the factors which were considered desirable. Chief amongst those was that it should be as painless as possible, that the effect would last for a reasonably long time and that it was cheap. Various methods were tried and most of them are still in widespread use. These include a razor, the spreading of wax on the hairs which is then pulled off when it solidifies taking the hair with it, the use of creams which destroy the hair roots but which are considered possibly dangerous and, more recently, the electric shaver. There were seen to be advantages in plucking the hair rather than cutting it because the effects last longer. Because the hair is removed from the hair root itself the hair sometimes does not grow again and that is considered desirable. Mechanisms for plucking hair from the skin have been the subject of patents and these are referred in some of the judgments in the parallel proceedings to this action which have been to commenced in England. Two of those patented mechanisms involve the use of a spring. The inventor of the appellants' product (the "Epilady", Mr. Daar, himself patented a method whereby a rotating spring was made to expand and contract on the skin with a system of cams driven by an electric motor. The principle was that the hairs passed between the windings of the spring when it was expanded and were caught when the spring contracted. They were then pulled away by the spring's rotation. It was a complicated device and understandably was never produced. The other one was patented by a Mr. Fischer and this consisted of two helical springs which were bent in an arcuate form so that on the convex side of each spring there were openings but on the concave side these openings closed. The helical springs had a roughened surface and they were to be pushed across the skin. As they did so hairs were picked up in the open parts of the helical spring and when a hair reached the closed part it was entrapped. The forwards motion combined with rapid jerks of the helical spring then pulled it from the skin. This device was not motor-driven but it does form the basis of the respondents' claim that the appellants' patent is not valid. The Fischer patent was filed in 1948 and granted in 1950.
3. The appellants' invention was filed in the European Patent office as No. 0101656 and was given priority from the 20th August, 1982. It is agreed that is the relevant date for the purpose of these proceedings. The device consists of a hand-held device which has a helical spring driven by an electric motor. The spring is bent so as to form a 360-degree loop and rotates at a speed of about 6,000 revolutions per minute. It is emphasized in the patent specification that it is this speed of rotation which is the key to the successful operation of the invention. As with the removal of sticking plaster from the skin once a wound has healed speed is essential to avoid undue pain. It does not, however, in any way rely on friction against the skin. As with the Fischer invention the hairs enter the convex side of the helical spring and are plucked from the skin when they reach the concave side.
4. "Epilady" filled a very long felt want and has enjoyed quite phenomenal commercial success. We understand that in the first six months after it came on the market and without any great advertising campaign, sales worldwide were about US$340 million.
5. The invention which is alleged to infringe the "Epilady" patent was developed by a fellow Israeli, Mr. Joseph Gross, who gave evidence in which he quite frankly admitted that he had obtained the basic idea for his invention ("Smooth and Silky") from "Epilady". He said that his wife had bought an "Epilady" but found it rather painful to use. He decided that this was due to two reasons. Firstly he thought that a whole bunch of hair may be gripped together and pulled out and also that hair could become entangled between the coils of the spring. There were other disadvantages but they were relatively minor. He then started to think how to pluck hairs in a better way that would eliminate these disadvantages and came up with the idea of an elastomeric rod. This would be made of a flexible material but it would be arcuate and would have slits cut in it. The hair would be caught between the slits on the convex side of the rod and caught on the concave side where the rotating nature of the rod would pluck them from the skin. This, he thought, would overcome the problem of entanglement of the hair. He was, however, by no means certain that a suitable flexible rod could be produced and he then spent some considerable time with the manufacturers of such articles to see if it was actually possible. Eventually after about a year's research a suitable rod was produced and a device incorporating it was put on the market. A patent for this advice has been applied for in the United States of America. Legal proceedings have, however, been commenced, we are told by Mr. Jacob, leading counsel for the appellants, in several countries alleging infringement. Proceedings are current in England as they are here and for the purposes of this appeal we have also been referred to proceedings in Holland and in Germany.
6. In 1975 the European Patent Convention was promulgated and the United Kingdom is now a signatory. The effect of this is that registration of a patent in the European Patent Office in Munich gives rights automatically in each of the countries who are signatories. Although not confined to members of the European Economic Community (Sweden is a signatory) the idea was that there should be uniformity throughout the European community. It is therefore highly desirable that a patent should be valid in all countries which have signed the Convention and that the law applicable to patents should be applied in the same way in each of them. The 1977 Patents Act in England is virtually identical to the Convention and indeed, as Mr. Jacob has said, England could simply have adopted it without passing its own Act. Unfortunately, however, the litigation in connection with "Epilady" and "Smooth and Silky" has at present not come to the same conclusion in each country. At present it has been held in England, in a decision of the l6th May, 1989 delivered by Hoffmann J., that the "Smooth and Silky" machine is not an infringement whereas in Germany it has been held that it is. There is further conflict in that in Hong Kong Mayo J., while coming to the same conclusion as Hoffmann J., has done so for different reasons. As the inventions are the same and at any rate in England and Hong Kong the expert witnesses were the same, this is perhaps surprising but in view of the complex legal and factual issues involved, understandable.
7. While the position is not entirely clear and legislation is undoubtedly required to remove any doubts (Pfizer Incorporated and Another v. Jiwa International (HK) Co. [1988] 1 HKLR 76) when the matter came before Mayo J. he took the view that the Patent Act 1977 was in force in Hong Kong, and registration in England gave protection in Hong Kong by virtue of the Registration of Patents Ordinance, Cap. 42. This has not been disputed by either party to the litigation and we are satisfied that he was correct to so hold.
8. The judgment, which is the subject of this appeal, was delivered on the 2nd October, 1989. Mayo J. had previously, on the 18th November, 1988, granted the appellants an interim injunction restraining the respondents from infringing their rights under their patent. This prevented the respondents from sending their product, which is manufactured in the People's Republic of China, to Hong Kong for distribution to other parts of the world.
Statutory Provisions
9. In his judgment Mayo J. sets out the relevant statutory provisions applicable to this matter. These are firstly Section 125 of the Patent Act 1977. This provides as follows:
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(1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.
(2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority under s. 5 above.
(3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to sub-s. (1) above) shall, as for the time being in force, apply for the purposes of sub-s. (1) above as it applies for the purposes of that article."
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Article 69 of the European Patent Convention is in the following form:
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(1) The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
(2) For the period up to grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the latest filed claims contained in the publication under Article 93. However, the European patent as grantee or as amended in opposition proceedings shall determine retroactively the protection conferred by the European patent application, in so far as such protection is not thereby extended."
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The Protocol on the Interpretation of Article 69 reads:
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"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties." |
The Judgments
10. Mayo J. then went on to say that he considered that the Protocol was an attempt to achieve a balance between what had been perceived to be the rather literal approach of the English Courts on the one part and the more purposive or functional approach of some continental systems, including the German one, on the other. He then said that he considered it essential to first of all determine the extent to which English case law can be said to become within the meaning of the Protocol. In doing so, in our view quite rightly, he then referred to and set out the principles enunciated in Catnic Components Ltd. and Another v. Hill & Smith Ltd. [1982] RPC 183. At 242 Lord Diplock delivering the main speech in the House of Lords said:
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"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. 'skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
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The question, of course, does not arise where the would in fact have a material effect upon the way the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked." |
11. Mayo J. said that he had no doubt that the guidelines as set out by Lord Diplock were entirely consistent with the Protocol and he referred to subsequent decisions in T.K. Valves v. Hindle Cockburn (Chancery Division, 13th January, 1989)(unreported), Dory v. Richard Wolf (Chancery Division, 7th April, 1989)(unreported) and Unilever v. Scholler [1988] FSR 596. We entirely agree and indeed in Codex Corp. v. Racal-Milgo Ltd. [1983] RPC 369 at 380 May L.J. said:
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"On the question of infringement we were referred to a substantial number of authorities and heard much interesting and instructive argument on the proper construction of patent specifications in their claims; and upon the comparison or relation' between the textual infringement on the one hand and infringement by taking the "pith and marrow'' on the other. Nevertheless, without any disrespect to the full arguments put before us by both sides, we do not now find it necessary to consider these in detail not to refer to earlier decided cases in the light of the recent decision of House of Lords in Catnic Components Ltd. v. Hill & Smith Ltd. [1982] RPC 183 at 273. In that case in our opinion Lord Diplock in a speech, with which the other members of the House agreed, summarised the effect of the cases to which we have been referred and the general legal approach which the courts should adopt the cases in which he does allege that a patent has been infringed. Indeed in the light of the clear and authoritative summary of the relevant law in the speech of the learned law lord we think it will henceforth be unnecessary and usually undesirable for counsel to take the court to the previous decisions referred to in the speech and to which our attention was drawn in detail." |
12. While We are quite satisfied that the Courts of Hong Kong should follow the principles enunciated in Catnic and that they are in agreement with those set out in the Protocol, there are passages in previous decisions which are of assistance in applying those principles.
13. Mr. Jacob in particular drew our attention to dicta of Lord Reid in his dissenting judgment in C. Van Der Lely N.V. v. Bamfords Ltd. [1963] RPC 61 (H L). This case may be regarded as the nigh-watermark of the perceived restrictive approach adopted by the English Courts until Catnic. The dispute was over a hay-rake whose particular feature was six wheels mounted one behind the other in a row but which had the novel additional feature that three of the wheels could be dismounted and placed in parallel with the other three. The patented device called for the rear three wheels to be so dismounted whereas the alleged infringing rake provided that the three foremost wheels were to be taken and put in parallel with the hindmost. The effect thus produced was identical. Lord Reid said at p. 75:
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"They (the respondents) cannot point to any mechanical reason for doing this or to any advantage resulting from it. It is simply done to try to evade the claim and the respondents' method is the exact mechanical equivalent of the appellants' method. But they do avoid textual infringement of claim 11 because claim 11 refers to dismounting 'rake wheels situated hindmost in the direction of motion'."
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Copying an invention by taking its "pith and marrow" without textual infringement of the patent is an old and familiar abuse which the law has never been powerless to prevent. It may be that in doing so there is some illogicality but our law has always preferred good sense to strict logic. The illogicality arises in this way. On the one hand the patentee is tied strictly to the invention which he claims and the mode of effecting an improvement which he says is his invention. Logically it would seem to follow that if another person is ingenious enough to effect that improvement by a slightly different method he will not infringe. But it has long been recognised that there 'may be an essence or substance of the invention underlying the mere accident of form; and that invention like every other invention may be pirated by a theft in a disguised or mutilated form and it will be in every case a question of fact whether the alleged piracy is the same in substance or end effect or is a substantially new or different combination'." |
He referred to Clark v. Adie (1873) LR 10 Ch. 663 where Lord Cairns used the expression "pith and marrow of the invention".
14. Lord Reid went on at p. 76 to say:
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"How then are we to determine what is and what is not an essential integer? The authorities show an apparent difference of opinion. Sometimes it is said that is a question of construction for the specifications and sometimes it is said that you must have regard to all the facts. I doubt if there is much difference between these points of view. If this specification makes it clear that the patentee regards a particular integer as essential then it must be treated as essential but otherwise even if the question is one of construction of the specification I cannot see why construction shut one's eyes to facts of which the patentee must have been aware when framing the specification.
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I think that Lloyd-Jacob J. and Upjohn L.J. delivering the judgment of himself and Pearson L.J. have taken too narrow a view of this matter. It must be true as Lloyd-Jacob J. says that in framing their specification the appellants did not appreciate that the same result could be achieved by moving the foremost wheels for otherwise they would have made their claim wide enough to cover this. But surely the same must be true of most, if not all, cases where there an attempt to evade infringement by the substitution of a mechanical equivalent: if the patentee had foreseen that possibility he would have made his claim cover it. If that were a good reason for refusing protection to the patentee against person who later thinks of and adopts the mechanical equivalent seems to me there would be very little left of this principle. Upjohn L.J. said that the appellants 'had deliberately chosen to make it an essential feature of the claim that the hindmost wheels should be detachable'. If by that he meant that there is something in the specification to show that they deliberately refrained from including the foremost wheels or went out of their way to make the hindmost wheels an essential feature I cannot find anything on which to base such a conclusion. But I do not think that he meant that because he went on to agree with Lloyd-Jacob J. that apparently the appellants did not appreciate the possibility that the foremost wheels might be moved. So I think he must have meant that the mere fact that they only mention the hindmost wheels was sufficient to make the limitation to the hindmost wheels an essential feature of the claim. But if that were right then I cannot see how there could ever be an unessential feature or how this principle could ever operate. And I think that the principle is very necessary to prevent sharp practice.
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In my judgment taking the way in which the specification is framed and the nature of the mechanism in respect of which this claim is made the reference to the hindmost wheels is of minor importance and an unessential integer. The respondents' substitution of the foremost wheels is merely a mechanical equivalent and therefore they must be held to have infringed this claim." |
15. The majority of the House however did not accept that view. Lord Radcliffe said at p. 78:
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"I cannot therefore embark upon an enquiry whether the dismountability of the hindmost wheels is an essential or unessential element of the invention claimed because it seems to me that the patentee himself has told us by the way he has drawn up claim 11 that this dismountability of the hindmost wheels is the very element of his idea that makes it an invention." (my emphasis) |
16. Lord Jenkins also took that view and at p. 79 he cited with approval the majority judgment delivered in the Court of Appeal by Upjohn L.J. where he said:
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"As a matter of construction of claim 11 it seems to us clear that the appellants have deliberately chosen to make it an essential feature of the claim that the hindmost wheels should be detachable and as we have already pointed but the foremost wheels need not be stopped. Why they have so confined the claim is hot for us to speculate. The claim could presumably have safely been drawn to cover dismounting of either group (see, for example, claim 7 in the respondents' letters patent 753478); but, as the learned judge pointed out, apparently the appellants did not appreciate this possibility. We have come to the conclusion that there is no escape from the learned judge's conclusion upon this point and upon principle and authority we are bound to construe the words of the claim according to their clear and unambiguous meaning and to hold that claims 11 and 12 are not infringed. " |
17. Lord Hodson at p. 80 also agreed and said:
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"I agree with the latter however that the "pith and marrow" doctrine is not applicable to this case where the appellants have drawn their claim so as to include specifically the hindmost wheels thereby excluding the foremost it would, I think, be oppressive to hold the respondents guilty of infringement of claim 11 because trey have made those wheels detachable which were deliberately excluded from the language of the plaintiffs' claim." |
18. It is however Mr. Jacob's submission that if that case were to be decided today in the light of the dicta in Catnic and in the Protocol, it would go the other way.
19. These judgments were referred to by Dillon L.J. in the proceedings in England concerning the present patent: Improver Corp. v. Remington Consumer Products Ltd. [1989] RPC 69. This was an appeal by the then plaintiffs (one of the present appellants) against an order by Falconer J. striking out the plaintiffs' infringement action against a Remington company. The appeal was allowed but clearly on the basis that matters which called for expert evidence should not have been decided by way of strike-out proceedings under Order 18 rule 19. Dillon L.J. cited the decision of Lord Upjohn in Rodi and Weinberger AG v. Henry Showell Ltd. [1969] RPC 367 at p. 391:
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"First the question as to whether the relevant claim has been infringed. This is purely a question of construction of the claim read as a matter of ordinary language in the light of the complete specification as a whole; but the claim must be construed as a document without having in mind the alleged infringement. What is not claimed is disclaimed. The claim must be read through the eyes of the notional addressee, the man who is going to carry out the invention described. There are many authorities on this but it is unnecessary to refer to them for I have already said enough to show that in my view this document must be read through the eyes of the common man at his bench." |
He goes on:
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"Secondly the essential integers having been ascertained the infringing article must be considered to constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement. I believe that this states the whole substance of the "pith and marrow" theory of infringement." |
At p. 78 line 19 Dillon L.J. also referred to dicta of May L.J. in Codex Corp. v. Racal-Milgo Ltd. at p. 381 line 49:
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"....... there is no suggestion in Lord Diplock's speech that one should look only to the essence or principle of a patent in suit and hold there to have been an infringement merely because that essence or principle has been made use of by the alleged infringer. There may have been or there may not. The question to be asked is one of construction but of purposive or realistic construction through the eyes and with the learning of a person skilled in the art rather that with the meticulous verbal analysis of the lawyer alone." |
The Catnic Questions
20. It is clear therefore that the Court must consider each case very much on its own facts and, in accordance with the principles set out in Catnic, decide the questions which Lord Diplock has therein set out. These are summarised by Hoffmann J. in Improver Corp. and others v, Remington Consumer Products Ltd. and others [1990] FSR 181. At p. 189 he sets out the questions as follows.
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"(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no -
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(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes -
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(3) Would the reader skilled in the art nevertneless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim." |
21. We agree with the view expressed by Hoffmann J. regarding the nature of these questions when at p. 190 he observed:
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"It is worth noticing that Lord Diplock's first two questions, although they cannot sensibly be answered without reference to the patent, do not primarily involve questions of construction: whether the variant would make a material difference to the way the invention worked and whether this would have been obvious to the skilled reader are questions of fact. The answers are used to provide the factual background against which the specification must be construed. It is the third question which raises the question of construction and Lord Diplock's formulation makes it clear that on this question the answers to the first two questions are not conclusive. Even a purposive construction of the language of the patent may lead to the conclusion that although the variant made no material difference and this would have been obvious at the time, the patentee for some reason was confining his claim to the primary meaning and excluding the variant. If this were not the case, there would be no point in asking the third question at all." |
22. The answer which Mayo J. gave to the first question was yes. This was contrary to the decision reached by Hoffmann J. on what was largely the same evidence and also the German Court, but there on different expert evidence. In answering that question it clearly was necessary to decide what were the essential functions of the invention claimed in the appellants' specification and to see if any variant possessed by the alleged infringing invention would have a material effect upon the way the appellants' invention works. To do that we must have regard to the wording of the specification. The appellants' patent specification is in the following form:
"Summary of the invention
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The present invention seeks to provide to the marketplace an electrically driven mechanical depilatory appliance which provides efficient hair removal by a device, whose size, complexity, cost and convenience compare favorably with an electric razor.
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There is thus provided in accordance with an embodiment of the present invention an electrically powered depilatory device including a hand held portable housing, motor apparatus disposed in the housing, and a helical spring comprising a plurality of adjacent windings arranged to be driven by the motor apparatus in rotational sliding motion relative to skin bearing hair to be removed, the helical spring including an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart, and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical spring producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation at the concave side and for engagement and plucking of hair from the skin, whereby the surface velocities of the windings relative to the skin greatly exceed the surface velocity of the housing relative thereto.
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Further in accordance with an embodiment of the invention, the helical spring arcuate hair engaging portion extends along an arc subtending more than 90 degrees and preferably more than 180 degrees, whereby the surface velocities of windings of the helical spring simultaneously include components extending in mutually perpendicular directions, for significantly enhanced hair removal efficiency.
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Additionally in accordance with an embodiment of the present invention there is provided an electrically powered depilatory device including a hand held portable housing, motor apparatus disposed in the housing, and a helical spring comprising a plurality of adjacent windings arranged in a loop for being driven in rotational motion by the motor apparatus, the helical spring loop defining along substantially the entire length thereof an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart, and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical spring producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation at the concave side and for engagement and plucking of hair from the skin of the subject.
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Further in accordance with an embodiment of the invention, the helical spring is oriented such that at the convex side of the hair engaging portion, the orientation of adjacent spread-apart windings defines an angle therebetween of at least 1.5 degrees and preferably at least 2 degrees.
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Additionally in accordance with an embodiment of the invention the helical spring is oriented such that at the convex side of the hair engaging portion, the orientation of the adjacent spread apart windings defines a maximum separation of at least 0.15 mm and preferably at least 0.2 mm.
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Additionally in accordance with an embodiment of the invention, the helical spring is driven in rotary motion having a surface velocity of at least about 70 meters per minute and preferably in the range of between 100 and 200 meters per minute.
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Further in accordance with an embodiment of the invention, the housing is defined as a modular two part housing, one part including the motor apparatus and the other part including the helical spring. The part including the helical spring may be readily removed from the part including the motor apparatus for easy sanitization of the helical spring or replacement thereof as necessary.
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It is noted that although the motor apparatus is preferably electrically powered, alternatively powered motor apparatus such as pneumatically or hydraulically powered motor apparatus may alternatively be employed. The motor apparatus typically comprises a pair of motors coupled to respective opposite free ends of the helical spring. Alternatively a single motor may be employed.
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.....
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Detailed description of the invention" |
These details include the paragraph:
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" The operation of the device illustrated in Figs. l-4 may be understood from a consideration of these drawings together with Fig. 5. Fig. 5 illustrates a portion of skin S having thereon unwanted hair H, which it is sought to remove. In the illustrated embodiment, the motor 4 is preferably wired for rotation in a clockwise sense, and the motor 4' is wired for rotation in a counterclockwise sense, thereby to cause the operative regions of the spring 24 in Fig. 5 to rotate as indicated by arrow B. As the housing 2 device advances in the direction indicated by arrow C, hair H 3 is just entering a gap 26, seen in Fig. 4, while hair H 4 is already well inside the gap. Hair H 5 is about to be wedged between two adjacent windings, hair H 6 has just been plucked and Hair H 7 is being ejected by the rotating spring.
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It is a particular feature of the present invention that the surfaces of the windings of spring 24 move in sliding motion relative to the hair to be plucked, rather than in rolling motion. Due to this type of motion, substantially all of the hair in an engaged region is plucked. It is a further feature of the present invention that the speed of surface rotation of the windings greatly exceeds the speed, of movement of the entire housing over the skin. It is noted that the apparatus of the present invention need not and should not be forced against the skin to operate properly." |
The second paragraph above has been claimed in argument to include the "sweeping" function.
23. Finally the 1st claim, and we are satisfied that this matter turns upon that claim, reads as follows:
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"An electrically powered depilatory device comprising:
a hand held portable housing (2)
a motor means (4, 4') disposed in said housing; and a helical spring (24) comprising a plurality of adjacent windings arranged to be driven by said motor means in rotational sliding motion relative to skin bearing hair to be removed, said helical spring (24) including an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical'' spring (24) producing a continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation on the concave side and for the engagement and plucking of hair from the skin of the subject, whereby the surface velocities of the windings relative to the skin greatly exceed the surface velocity of the housing relative thereto."
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The other claims, and there are a total of 20, refer to variations of claim 1 and include different types of motor, different angles at which the helical spring is fixed and also cover different sizes of spring and different gaps in the winding thereof.
24. There are some 14 figures attached to the patent and forming part of it showing the design of the machine and in particular of the helical spring and how it operates. Figures 9 to 14 show possible variations of the way the helical spring is mounted. It is significant that all except one (Figure 9) show the spring in some form of a loop. Figure 9 however simply shows it in the form of an arcuate band. It is of significance in this respect in that it was conceded that the rubber rod of the allegedly infringing mechanism could not possibly be bent into any of the forms shown apart from Figure 9 without becoming what was described as ''useless spaghetti" and it is also of significance that before us Mr. Thorley, leading counsel for the respondents, conceded that if the infringing machine were to use a helical spring in place of its rubber rod, it would infringe the appellants' patent.
25. Hoffmann J. considered four grounds upon which it was before him alleged that the allegedly infringing invention worked in a different way. These were that:
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The spring exerted a much greater pressure on the hairs and indeed was liable to break rather than pluck them. He did not consider that the expert evidence showed that this had any practical effect on the way the devices worked
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(2) |
The metal spring had more gaps per inch than there were slits in the rod. (This is the sweeping effect.) However he said also that this was specifically done in the case of the rod so as to extract less hair at a time and make the machine less painful to use, albeit it works more slowly. Again he did not consider this a material variation.
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(3) |
He referred to Dr. Laming, the expert for the respondents, who said that the windings of the spring were fully closed only at the concave side of the arc while the slits in the rubber rod closed at some earlier point. He therefore conjectured that the "Smooth and Silky" would grip the hair closer to the skin and remove shorter hairs more easily than the "Epilady". The evidence of surveys however showed that if anything the "Epilady" was better at removing short hairs. He thought there was no material variation there.
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(4) |
Finally he turned to the question of whether the hollow core of the helical spring might trap hairs in a way which could not happen with the solid core of the rubber rod. This was the entanglement question. He said there was no conclusive evidence of this and did not therefore consider that a material variation. |
26. Mayo J. in considering this question said that he had to have regard to the expert evidence which had been called before him, this being Dr. Sharpe for the appellants and Dr. Laming for the respondents. He said that he was most impressed with both as witnesses and that they were clearly distinguished engineers with most impressive relevant qualifications. It was his strong impression they were both honest men seeking to assist him to the best of their ability. He did however say that he was in some doubt as to Dr. Sharpe failing within the criteria laid down by Lord Reid in Technograph Printed Circuits Ltd. v. Mills and Rockley (Electronics) Ltd. [1972] RPC 346 at 355 as a person skilled in the art but without any inventive imagination. There was also evidence before Mayo J. from Mr. Gross himself. Mayo J. quite rightly considered him to be a man of considerable inventive genius and he considered he fell well outside the criteria of Lord Reid's expert. He did however give relevant evidence.
27. Mayo J. found that there were essential differences in the modes of operation of the two devices:
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(1) |
He found that all the hair coming within the ambit of operation of the helical spring would be "grabbed" and extracted. This was the "sweeping effect". As I understand it the appellants' case is that Mayo J. should not have found that the sweeping effect was a material variation in the way the invention works. It is submitted that there is firstly no claim and there is nothing in the specification relating to this sweeping effect. Secondly there is nothing in the evidence given by the experts that this sweeping effect is such as to be a material variant in the way the invention works. It is significant that there is no mention of it, for instance, in the initial report prepared by Dr. Laming or by Dr. Sharpe. It was brought up in the cross-examination of Dr. Sharpe by Mr. Thorley as follows: |
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"
|
Q |
Humour me for a moment, Dr. Sharpe, just humouring me for a moment. It is a property of a helical spring that it does have this continuous, this as I have 'called it, sinuous nature.
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A. |
If you have a helical spring, you put it on an axis and move it parallel to the axis at very high speed, yes, all the parts will sweep over so long as you move it at those speeds and it rotates infinitely fast.
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Q. |
Shall we call it sweeping? Is that a word you are happy with?
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A. |
Yes. Things in common use, a vacuum cleaner.
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Q. |
All I want is to ensure that when I use the word next there is no misunderstanding between us." |
This was taking up later in the cross-examination as follows:
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"
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Q. |
I do not want hearsay evidence. Let us talk about your views. If there is a case of it being less effective from your position as an engineer, why you think that would be?
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A. |
As an engineer it would be less effective because there is less opportunity for the random ends of the hair being picked up into the appropriate opening for those hairs to be plucked. I would have thought it was a matter of statistics.
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Q. |
And that is because is it not the helical spring gives you this sweeping motion whereas the Remington rod being taken across the carpet would only take furrows out of it.
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A. |
I think if you ask me this question we have to take into account the way the operator uses it. With respect I would not feel that using it like a carpet sweeper in a direct line is a fair analogy. If one has a random distribution of hairs which we must assume we have and you are moving this across there is a higher probability of a slit in the appropriate position to catch the hair in the case of the spring than in the case of the rod simply because there is less length of total length of slit. One has a much less total length of slit than the other.
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Q. |
It is not only length it is actual separation as well?
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A. |
The axial separation, as I understand it from my observation, are not too dissimilar.
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Q. |
That cannot be so, can it? As a matter of fundamental principle, Dr. Snarpe, because the axial separation in a helical spring is effectively a 100%. You cover the entire area whereas the axial separation with the Remington rod there are discreet areas where there will be a slit and where there will not be a slit?
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A. |
with respect, I would not understand axial separation to mean that and all. The axial separation is the separation between the size of the slit whatever they are made of in an axial direction. In both cases that is the same each individual slit. I would call that the axial separation of the slits.
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Q. |
I think we are at cross purposes. Let me try and define my terms a little better. A helical spring has this capacity of the sweeping motion. It covers a whole area. Agreed?
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A. |
Agreed, but that is because people are using the device.
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Q. |
Right. The Remington rod does not have that feature?
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A. |
That is true."
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(2) |
The manner in which the hair is plucked. Mayo J. said that it was evident to him that hairs were plucked from the skin at different points of the cycle by the two devices.
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|
On this there was evidence from Dr. Laming that he thought the rod would be likely to grip the hair earlier in the cycle and therefore be better at plucking short hairs. It was however put to him that the respondents in their amended Euro application had dropped the claim about "more effective short hair". He was referred to the application and asked:
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"
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Q. |
That's right really, yes. About that point 25 onwards. We've got no longer any mention of short hairs. We've got 'severing' and 'cutting' which I'll be coming to, no doubt a little later, but no short hairs anymore.
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A |
Fair enough."
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There was also some evidence that surveys indicated that in fact "Epilady" was better at removing short hairs.
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(3)
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Mayo J. also found that there was a greater risk of entanglement of the hairs with "Epilady". On this the finding of Hoffmann J. was that the evidence given in London was inconclusive. When this was put to Dr. Laming he said that it was possible for the helical spring, being hollow, to entangle hairs which the rubber rod could not. However he then agreed that Hoffmann J.'s description of speculation was a fair one to reach. |
Dr. Laming, when cross-examined by Mr. Carr, the then leading counsel for the appellants, was referred to the judgment of Hoffmann J. and in particular the material attributes of the helical spring. These were described by Hoffmann J. as follows:
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"Dr. Laming and Dr. Sharpe, the eminent engineer called as an expert by the plaintiff, agreed that it would have been obvious to the skilled man that the attributes which enabled the helical spring to function in the way described in the specification were that it was capable of rotating, capable of transmitting torque along its length to resist the forces involved in plucking hairs, bendy (to form an arc) and slitty (to entrap hairs by the opening and closing effect of rotation). They also agreed that it would have been obvious that any rod which had these qualities in sufficient degree and did not have other defects such as overheating or falling to bits would in principle work in the same way and that the rubber rod plainly belonged to that class." |
Dr. Laming agreed that those were the attributes of the helical spring and he was then asked if that would have been obvious to a skilled man. His reply was:
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"I don't think from the specification they would emerge immediately, no. There would be no need to make that sort of generalization about the performance of the spring in fact." |
He was then asked:
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"
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Q. |
And I think the essence of your answer is 'well after reflection'. Yes, it would have been obvious to him that those were the relevant properties of the helical spring.
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A. |
I would rather use the word 'evident' rather than 'obvious'." |
28. In answering Lord Diplock's first question in Catnic - is this a material variation as to the manner in which the invention works - I think that he meant this to be answered in a general factual sense and not as a matter of construction of the patent. This is the approach which has been adopted by Hoffmann J. In other words one should look at what the function of the claimed invention is, here to pluck hairs from the skin, and to see broadly how it achieves that object. It is clear that both "Epilady" and "Smooth and Silky" achieve that by passing a rotating spring on the one hand and rod on the other, over the skin, the spring or rod being bent so that there are gaps on the convex side which close on the concave side. By rotating the spring or rod, hair which enters the gaps is then entrapped in the closed part of the spring or rod and plucked from the skin. It is true that, deliberately, the rod of the "Smooth and Silky" does not, it seems, pluck so many hairs at one time and may be somewhat slower in operation although less painful. In our view, however, adopting that approach we do not think that on the evidence before him Mayo J. was justified in finding that this was a material variation in the way the invention works. There was no clear evidence either way in relation to the point at which each device seized the hair in its cycle nor as to entanglement. Even if there had been we do not consider either would constitute a material variation in the way the devices worked. As to the "sweeping" effect, while clearly there was evidence that the helical spring, having more gaps per uniform length than the spring, would pluck more hairs in one motion than the rod, we would again not consider that a material variant as to the way the invention worked. We would prefer the approach of Hoffmann J. to this first question and would answer it in the same way - no.
29. The second question then is: if this was not a material variation as to the manner in which the invention worked, would it have been obvious to the skilled man reading the specification and claim of "Epilady" in 1982?
30. Mayo J. gave a negative answer to this question which he answered on the basis that he may have been wrong in giving an affirmative answer to Lord Diplock's first question. At p. 43E of his judgments the judge indicated that he understood Lord Diplock's second question to be asking, on the facts of this case ".... whether the solid cylindrical rod with slits in it would have been an obvious mechanical equivalent to a helical spring" at the date (the 20th August, 1982) when the appellants' patent acquired its priority. Mayo J. was persuaded that the "inventive" test should be adopted when determining how the skilled man would answer the latter question.
31. In their respondents' notice the respondents have contended that if and so far as Mayo J. answered this question by considering the embodiment of the respondent's device (as the respondents have contended Hoffmann J. had done) he was in error. On their behalf Mr. Thorley's contention before Mayo J. was that Lord Diplock's second question should be answered by reference to the appellants' specification and not by comparing device with device, which is what Mr. Thorley claimed had been done by Hoffmann J. Subject to this point Mr. Thorley contended that the judge was right to conclude as follows at p. 43H:
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"2. |
Even assuming that the expert would think of an equivalent why should this take the form of a solid member with slits in it?
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I accept the evidence of Dr. Laming that on the balance of probabilities it is highly improbable that the expert would have directed his thoughts along this line.
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|
On reason for this is that the alternative solution would be riddled with potential difficulties such as the uncertainty of the various qualities of any such solid member. How could the slits be positioned on the member so as to produce an effect which would be similar to the action of the opening and closing of the spaces in the helical spring?
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|
Having regard to all the expert evidence I am satisfied that a solid cylindrical member with slits in it would not have been an obvious mechanical equivalent to the invention to a person skilled in the art.
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|
My answer to the second Catnic question would therefore be No." |
32. On appeal Mr. Thorley strongly supported this conclusion, subject to the point taken in the respondents' notice. He contended that Lord Diplock's second question in Catnic would be meaningless if it were required to be answered after comparison of device with device. He further contended that unless the relevant technology were very complex the skilled man, knowing the equivalence of the devices would, in a case like the present one, readily discern the similarities.
33. Mr Thorley argued that this test should be rejected as unfair to the public and that the proper test should be (a) to compare the description of the respondents' device on the same level as the appellants' patent specification, or (b) answer the question on the basis that the skilled man is given the appellants' specification but left without knowledge of the respondents' device. On either of these bases Mr. Thorley contended below and here that the skilled man would foresee problems and concerns of the kind which Mr. Gross (the inventor of the respondents' device) foresaw and encountered, and which Mayo J. mentioned in the passage in his judgment cited above.
34. In our opinion this argument, which Mayo J. accepted, was rightly criticised by Mr. Jacob for the appellants as amounting to the formulation of a validity test based on inventiveness which leads to the irrelevant conclusion that Mr. Gross had made something patentable. Mr. Jacob submitted that the question merely needed to be answered by someone with sufficient technical knowledge to understand how the patent and the respondents' variant worked. We agree and respectfully accept and adopt the approach of Hoffmann J. where at p. 192 he rejected the inventive test when it was advanced by the respondents in relation to Lord Diplock's second question, saying:
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"I do not think that this is what Lord Diplock meant by the question and I think that Mr. Young has been misled by Lord Diplock's use of the word "obvious" into thinking that he must have been intending to refer to the rule that an obvious improvement is not an inventive step. In my view the question supposes that the skilled man is told of both the invention and the variant and asked whether the variant would obviously work in the same way. An affirmative answer would not be inconsistent with the variant being an inventive step. For example, the choice of some material for the bendy rod which was a priori improbable (e.g. on account of its expense) but had been discovered to give some additional advantage (e.g. painless extraction) might be a variant which obviously worked in the same way as the invention and yet be an inventive step. Nor would it matter that the material in question, being improbable, would not have suggested itself to the skilled man as an obvious alternative. Questions such as these may be relevant to the question of construction (Lord Diplock's third question) but not at this stage of the inquiry." |
35. The evidence of Dr. Sharpe under cross-examination was, and it seems to have been common ground, that there was no material change in the art between 1984 and 1986. There was no evidence of any such change between the 20th August, 1982 (when the appellants' patent acquired its priority) and 1984. Moreover Dr. Laming, having agreed as to the attributes of the helical spring, was asked:
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"
|
Q. |
No.I am, not asking about the entry of the rod idea.I am asking you whether it would have been obvious that any rod which had those qualities worked in the same way.
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A. |
If someone had proposed a rod with those qualities one would then perhaps have said: 'Yes, that might do the same thing'." |
36. Accordingly, the first of Lord Diplock's questions having been answered in the negative at the level of the appellants' claim, the evidence in the present case requires that the second question should be answered in the affirmative.
37. This leaves the third Catnic question which Mayo J. did not find it necessary to decide. However, by their respondents' notice the respondents rely on the fact that at p. 42F the judge, albeit in the course of considering the first Catnic question, concluded in the light of all the relevant expert evidence (and after preferring the evidence of Dr. Laming to that of Dr. Sharpe) that he was
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'... satisfied that the essential feature of the plaintiffs' invention is the method of operation of the helical spring''. |
The respondents contend that having made this finding the judge should have answered the third Catnic question, as adumbrated by Hoffmann J., in favour of the respondents for the reasons given by the latter judge. The relevant question is whether persons with practical knowledge and experience would understand that strict compliance with a particular word or phrase appearing in the claim was intended by the patentee to be an essential requirement of the invention. We think one must then adopt a more particular approach and look at the specification and claim in detail. It is here that one must look at the essential integers of the specification and claim and to see if all of those essential integers are present in the alleged infringement. As Lord Pearce said in Rodi and Weinberger AG:
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"The real question is whether one finds here substantially the same parts acting in substantially the same way so far as concerns essentials (see Birmingham Sound Reproducers Ltd. v. Collaro Ltd. [1956] RPC 232 at 245)." |
38. It is a well known rule of patent law that no one who borrows the substance of a patented invention can escape the consequences of infringement by making immaterial variations. The question is whether the infringing apparatus is substantially the same as the apparatus said to be infringed (per Parker J. in Marconi v. British Radio Telegraph and Telephone Co. Ltd. [1911] 28 RPC 181 at 217). It is also clear that there will be infringement of a patent even if the infringement is an improvement. If an inventor takes an essential integer of somebody else's patent and simply makes it work better by some alteration but does not change the way in which that integer basically operates, he can patent his own invention but it is what has been referred to by Mr. Jacob as a "nesting" patent and if his device is produced and sold he must pay royalties to the other patentee. The alleged infringing patent can perform the same task but it must, in at least one essential respect, do it in a different way if it is to escape liability: see The Wenham Gas Company Ltd. v. The Champion Gas Lamp Company [1891] IX RPC 49 per Bowen L.J. at 56:
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"The superadding of ingenuity to a robbery does not make the operation justifiable. The fact that that new lamp, which is the result of having taken the invention of another person, is an improvement upon that other person's idea does not excuse the person who borrows what is not his." |
Dr. Laming in his initial report said:
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"I have been asked to say whether upon reading the patent specification I would consider the patentee of the "Epilady" device had intended to include or had in mind devices other than the helical spring when drawing up the specification. My opinion is that there is no way of interpreting the above specification such that anything other than a helical spring (as defined above) is intended. The simple reason for this is, in my view, that the inventor had in mind what he regarded as a novel use of a familiar and readily available engineering component and saw the nub and centre of the invention as that use.
|
|
I have now read the European Patent several times and it is clear that nothing other than a helical spring is referred to. If there were alternatives to a helical spring which the inventor or draftsman of the patent had in mind he did not indicate anywhere that such alternative might be used. This stands in contrast to suggested alternatives with regard to e.g. alternative drive arrangements suggested in Column 6." |
He goes on:
|
" If the Improver Corp. specification contained anywhere such words as 'or any other configuration of an elastic member or members whereby rotation of the member or members causes a spread apart orientation at one position and a pressed together orientation at another position or point in the cycle' then at least one might be led to think about alternatives to the helical spring. Whether I would have thought of an elastomeric rod in such a case is hard to say in hindsight but the likelihood is made less by consideration of the Figures 9-14 which show possible configurations which the patentee had in mind. Except possibly for the first (Figure 9) these configurations could not be adapted by an elastomeric rod without some internal' wire guide, and in that case, the friction developed between elastomer and guide would in my opinion be prohibitive." |
39. There is evidence from Mr. Gross that it took him a considerable time to see whether or not an elastomeric rod could be made which would perform the function of catching and plucking the hair in the manner that it does in the "Smooth and Silky" device. There was also the possible problem to be overcome of hysteresis, a problem of physics when a split arcuate rod is rotated. There was also the question of heat disposal.
40. It is, we think, important to remember in deciding whether or not a particular feature of an invention is an essential integer the words of Lord Diplock in Catnic that
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"A patent specification is a unilateral statement by the patentee in words of his own choosing addressed to those likely to have a practical interest in the subject matter of his invention (i.e. skilled in the art) by which he informs them what he claims to be the essential features of the new product or process for which the latter's patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the circled "pith and marrow" of the claim." (our emphasis) |
If, therefore, a patentee confines himself, as it seems to us the appellants here have done, to describing the function of a helical spring and, to quote Dr. Laming:
|
"There is nothing, not one line, not one word, not one iota of implication in the specification that you are looking for an alternative or equivalent to the helical spring then the patentee has, by the words of his own choosing, declared to the skilled reader of his patent that the use of a helical spring is an essential integer of his invention." |
he has made the helical spring an essential integer. It is also to be noted, as Dr. Laming did in his evidence, that the patentee has specifically referred in the specification and claims to some possible alternatives such as a different type of motor (or even two motors) and different forms of spindle.
41. If the helical spring is an essential integer, as we find, then on all the English authorities there can be no question of any equivalent mechanical device infringing the patent. As Lord Diplock said in Catnic at p. 243:
|
"Any variant would fall outside the monopoly claim even though it could have no material effect upon the way the invention worked." |
42. In arriving at our decision on the third Cathic question we are unable to accept Mr. Jacob's argument to the effect that, considered in the light of section 125 of the 1977 Act and the Protocol, the appellants' claim in the context of their specification is to be construed as wide enough to create a monopoly in respect of any device which does not incorporate a helical spring but substitutes anything which (to use Mr. Jacob's own words) is "something that does the job practically as well". We share the doubts of Hoffmann J. expressed at p. 197 or his judgment as to whether a claim drafted expressly in such wide terms would satisfy the requirements of certainty imposed by Article 84 of the Convention and section 14(5) of the Patents Act 1977.
43. We have borne in mind that a helical spring is in itself a common and well known mechanical component and that, as inter alia Fischer's patent shows, its use as a depilator was part of the state of the art prior to the publication of the appellants' claim. Mr. Jacob stressed that the claim related to the interaction of a combination of parts and not to the parts themselves which had been selected to carry out a known depilatory mechanical operation in an inventive manner. However, we consider that, in the light of the expert evidence preferred by Mayo J., the terms of the claim as construed in the context of the specification would be understood by the skilled man, typified by Dr. Laming, to indicate that the claim was not intended to include a variant to the helical spring such as the respondents' plastic rod, even though it had no material effect upon the way the invention worked.
44. The appellants however rely on the decisions which have been reached in relation to this same matter by the Courts in Germany and in Holland. In view of the signing of the European Patent Convention by the United Kingdom, uniformity in the way in which the Courts of the signatory countries approach the interpretation of a patent is obviously desirable. One must, however, also consider the fact that the same evidence was not before the continental Courts as was before the Courts in England and here. Total uniformity probably will only be achieved if and when there is a European Court which would decide such matters in relation to all signatory countries.
45. In the District Court of Dusseldorf, in a judgment dated the 19th July, 1988, it was held that because the isometric rod was the mechanical equivalent of the helical spring and performed the same function the replacement of the spring by the rod still meant that the device infringed the appellants' patent. At p. 16 the Court appears to set out what it considers to be the features of the device and although it does not specifically say so because presumably it is not part of the language of German law, it would seem this sets out what it considered to be the essential integers of the patent. No. 3 is "a helical spring comprising a plurality of adjacent windings". Later, when referring to the decision of the English Courts, the judgment goes on at 22 to say:
|
"Also the fact that the Patents Court of the English High Court of Justice Chancery Division with the decision in the English counterpart case as filed during the oral proceedings has refrained to issue a preliminary injunction and has rejected the complaint has no decisive relevance as well. For, as can be seen from the reasoning of the decision, the English judge has declined to include mechanical equivalents to the helical spring into the scope of the protective right forming the basis of the motion since the helical spring was considered an "essential integer" of the invention. This view is not in accordance with the legal basis from which the present chamber in accordance with the federal Supreme Court has to start from." |
If this is to be taken as meaning, as we think it is, that even if an essential integer of an invention is replaced with something which does the same thing with a mechanical equivalent this still will constitute an infringement then that is clearly contrary to the English authorities which this Court, as it is endeavouring to interpret the effect of an English statute, clearly must follow.
46. The decision of the Dusseldorf District Court, which was an interlocutory judgment, went to the Regional Court of Appeal which allowed the appeal. It said that it was not satisfied that an expert would come to the conclusion that the isometric rod was the equivalent of the helical spring. No expert evidence had been filed on the point by the patentees. The Court of Appeal said at p. 15:
|
"which leads to the conclusion that the appellants' invention contains a new theory which is not within the protected area of the 1st respondent's patent. For these reasons it is not plausible that the disputed embodiment is for patent law purposes and equivalent of the patented hair-removal appliance." |
Finally the matter carne for trial before the Landgericht Dusseldorf where the Court enlisted what it considered to be the characteristics of the device. Again one of those characteristics was "a helical spring comprising a plurality of adjacent windings". The Court then said at p. 12:
|
"Thereafter it must be determined whether it was possible for one 'skilled in the art' to find based on his deduction starting out from the concept content of the claim and making use of his technical knowledge whether the modified means used in the accused embodiment are identical in effect to solving the problem underlying the invention." |
The Court found at p. 14 that:
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"If one skilled in the art had however recognised the helical spring as cylindrical body (cylindrical hollow rod) the recesses of which are open and close by the bending of the body on the one hand and the rotational motion on the other hand it would have been easy for him to substitute a rubber rod provided with slits for the spring." |
The judgment continues at p. 14:
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"Also the consideration that a rubber element is unsuitable for the configurations of the hair plucking body shown in Figures 10 to 14 of the patent in suit was not an obstacle to choosing this substitute. For it was possible for one skilled in the art to recognise that a simple arcuate hair plucking body (feature 5a) did not give rise to a problem and that it was dependent on the degree of flexibility of the hair plucking body whether and which more complex configurations could be taken into consideration." |
47. It seems clear, therefore, that the Landgericht Dusseldorf held firstly that the substitution of the rubber rod was an easy and obvious way of achieving the same hair plucking function as the helical spring and that secondly such substitution would be an infringement of the patent. As Hoffmann J. pointed out at p. 198 the Court does not seem to have found it necessary to ask the third Catnic question at all and seems to have adopted more of a "guideline" approach.
48. The evidence of Dr. Laming, which was accepted by Mayo J., was that it would not be obvious to an expert that a rubber rod would be a substitute for the spring and certainly Mr. Gross gave evidence that it was by no means easy. The evidence of Drs. Sharpe and Laming was considered in depth by Hoffmann J. between p. 193 and 197. There was before him a total conflict in their evidence as there was before Mayo J. Hoffmann J. decided this point on the basis of construing the equivalents clause which is the final paragraph on column 6 of the patent. This clause reads as follows:
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"It will be evident to those skilled in the art that the invention is not limited to the details of the foregoing illustrative embodiments and that the present invention may be embodied in other specific forms without departing from the essential attributes thereof and it is therefore desired that the present embodiments be considered in all respects as illustrative and not restrictive, reference being made to the appended claims rather than to the foregoing description and all variations which come within the meaning and range of equivalency of the claims are therefore intended to be embraced therein."
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|
Hoffmann J. said at p. 196:
|
|
"In my judgment the difference between the experts depends upon how one construes the equivalents clause. The first part of the clause merely says that the description should not be used to restrict the meaning of the language used in the claims. That is not the question here. What matters is the final words: 'and all variations which come within the meaning and range of equivalency of the claims are therefore intended to be embraced herein'. If this means: 'whatever contrary impression the skilled man may be given by the language of the claims read in the context of the rest of the description all references in the claims to hardware are deemed to include any other hardware which would in any circumstances function in the same way' then I think Dr. Sharpe must be right. In my judgment, however, the clause does not have so wide an effect. The words I have quoted say that the variation must still come within the meaning of the claims and the reference to 'range of equivalency' means in my judgment no more than 'don't forget that the claims must be interpreted in accordance with Catnic and the Protocol'. |
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Thus interpreted I do not think that 'helical spring' can reasonably be given a generic construction and I accept Dr. Laming's reasons for thinking that a skilled man would not understand it in this sense. This is not a case like Catnic in which the angle of the support member can be regarded as an approximation to the vertical. The rubber rod is not an approximation to a helical springs. It is a different thing which can in limited circumstances work in the same way. Nor can the spring be regarded as 'inessential' or the change from metal spring to rubber rod as a minor variant. In Catnic Lord Diplock asked rhetorically whether there was any reason why the patentee should wish to restrict his invention to a support angled at precisely 90 degrees thereby making avoidance easy. In this case I think that a similar question would receive a ready answer. It would be obvious that the rubber had problems of hysteresis which would be very difficult to overcome. The plaintiffs' inventors had done no work on rubber rods. Certainly the rubber rod cannot be used in the loop configuration which is the plaintiffs' preferred embodiment. On the other hand drafting the claim in wide generic terms to cover alternatives, like the rubber rod, might be unacceptable to the Patent Office. I do not think that the hypothetical skilled man is also assumed to be skilled in patent law and would, in my judgment, be entitled to think that the patentee had good reasons for limiting himself as he obviously appeared to have done to a helical coil. To derive a different meaning solely from the equivalent clause would, in my view, be denying third parties that reasonable degree of certainty to which they are entitled under the Protocol." |
We agree with those reasons and have no doubt that, if Mayo J. had considered it necessary to answer the third Catnic question, on the basis of his other findings he would have come to the same conclusion.
49. The appellants also rely on decisions of the Dutch Courts and, in particular, Meyn v. Stork. This was a decision in relation to a device for extracting the intestines of slaughtered poultry. The actual mechanism in both inventions was the same but one used a straight (rectilinear) arm whereas the other (the alleged infringement) used a curved (curvilinear) arm which was, in fact, an improvement. The Dutch Court of Cassation held that nevertheless there was an infringement. The straightness or otherwise of the arm did not affect the operation of the patented invention. We think, however, it is clear that the Dutch Courts did not consider that the straight arm was an essential feature or integer of the patented device. The relevant reports indicate that the Courts regarded the essence of the disputed patent as the ball shape of the ends of the extension piece of the drawing element and that the Corut of Cassation faulted the lower Dutch Court for finding infringement in respect of pre-characterisation parts. The Court of Cassation accepted at p. 39 an expert view that
|
"If a curvilinear movement should happen to be better then a linear movement in view of the shape of the cavity in the poultry then such a curvilinear movement must be deemed to be an improvement of the device described in the Dutch patent specification which improvement does not affect the essence of the invention." (our emphasis) |
50. For these reasons this appeal is dismissed.
Validity
51. Finally we turn to the question of the validity of the "Epilady" patent which is the subject of the respondents' cross appeal. We have no doubt whatever that the patent is valid. There is no dispute that this was an invention which filled a very long felt want in the market and that it has been extremely successful commercially. The respondents rely on the Fischer patent as forming a part of the state of the art which must be deemed to have been known to experts in the field in 1982. They say it must also have appeared to such experts that it was an obvious step to motorize the Fischer spring and thereby overcome the deficiencies of that invention. Mr. Thorley relies substantially on the Court of Appeal decision in Jamesigns (Leeds) Ltd.'s Application [1983] RPC 68. That was a case involving reflective numberplates and it was held that the plates in question did not constitute an inventive step on a prior specification and that the development was an obvious one. For the appellants Mr. Jacob submits that on the contrary in this case motorization of the Fischer spring was by no means an obvious step and this is amply demonstrated by the fact that the market was well aware of the potential demand for an effective depilatory device. We further contends that although the step of motorizing an arcuate spring such as is shown in the Fischer patent may now seem simple, this is looking at the matter very much with hindsight.
52. In our view the essential feature of the "Epilady" patent is the high speed rotation of the coil of one helical spring independent of contact with the skin, resulting in both gripping and plucking of the hairs. We have no doubt that if this had been an obvious step to a skilled man on examining the Fischer patent then the "Epilady" device would have been on the market long before it was. The Jamesigns decision is certainly authority for the proposition that a patent is not valid if it does no more than make an obvious improvement to an existing specification. However the decision depends very much on its own facts and we do not think those facts are relevant to those before us here.
53. We entirely agree with what Mayo J. and Hoffmann J. have said regarding validity and would dismiss the cross appeal.
Costs
54. Unless they can be agreed, we will hear counsel on a date to be fixed on the question of costs.
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(R.G. Penlington)
Justice of Appeal |
Representation:
Robin Jacob Q.C. and P. Garland (Denton Hall, Burgin and Warrens) for appellant.
Simon Thorley Q.C. and Miss Winnie Lam (Robin Bridge and John Liu) for respondents.
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