The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 18 October 2010

The chips are down in spud-separator shoot-off

Hot(ish) off the press, the IPKat brings you news of the Court of Appeal’s (Jacob and Etherton LJJ and Sir David Keene on the Bench) judgment in Grimme Landmaschinenfabrik GmbH & Co KG v Derek Scott (trading as Scotts Potato Machinery) [2010] EWCA Civ 1110, handed down on Friday by Lord Justice Jacob. By way of background: Grimme had originally alleged that Scott was infringing its European Patent (EP(UK) 730 399) and unregistered design rights in a potato separator by sale of a machine called “Evolution”. [For those not versed in the day-to-day mechanics of the potato farming industry: the potato separator is an ingenious machine that (somewhat conveniently, given its name) separates potatoes from the assorted detritus that one would expect things wrenched from the ground to be duly associated with – i.e. weeds, earth, stones, stalks, etc.]. Scott, for his part, resisted those claims, and in turn sought revocation of the patent and relief for unjustified threats alleged to have been made by Grimme in respect of both patent and design right infringement.

At first instance [noted by the IPKat here], Mr Justice Floyd, had held that, while claim 1 of the patent was invalid as it lacked inventive step, claims 17 and 24 were valid. He found that Evolution infringed claim 17 “provided that at some point in the separating path it has two counter-rotating pairs of rubber rollers”. If, however, Evolution did not have two counter-rotating sets of rubber rollers at some point in the separating path, then because it was adaptable to include two such sets, its sale would infringe claim 17 under section 60(2) – Scott knowing, or it being obvious to a reasonable person in the circumstances, that users might swap the steel rollers for rubber ones. Furthermore, in cases where rubber rollers were already fitted to Evolution when sold, the sale of spiral replacement rollers was additionally, and of itself, an indirect infringement under s60(2) Patents Act 1977 (Scott once more being found to possess the requisite knowledge). Grimme’s design rights survived the allegation that they were commonplace, and were found to be infringed by Scott’s original roller (although not a subsequent incarnation). The fate of the counterclaims for unjustified threats was, as may be expected, tied to the outcome of the allegations of infringement and so succeeded in relation to the design right but not in relation to the patent infringement proceedings – in respect of the latter, although threats were made, they were justified.

The arguments raised upon appeal were confined to “issues about the Patent and the unjustified threats claim and include a point of general application about the meaning of s.60(2) of the Patents Act 1977.” All in all, 12 issues had been agreed at the outset of the hearing, but the Court was of the opinion that it would be advantageous to “consider first whether the Judge’s construction of claim 1 was correct or whether it was, as Grimme contended, narrower. If we concluded it was narrower, then we should consider the question of its obviousness. The advantage of this course was that if we concluded that claim 1 was valid, then the separate points sought to be raised by Mr Scott about claims 17 and 24 would fall away.”

(1) Construction & Validity

Approaching, therefore, the issue of construction, the Court considered that the Judge had construed claim 1 of Grimme’s patent too widely. In particular, Grimme had argued that the Judge had not addressed the “requirement that that the rib part (we use that as shorthand for lip, rib or like extension) should project beyond the contours of the cylindrical shell part”. It had been submitted that this meant that the rib had to project from the cylindrical surface of the roller as in fig.12 of the patent (reproduced below right) where the rib extends out of the cylinder. The Court considered that there may have been a number of reasons for this omission, but agreed with Grimme’s contention that the experts on both sides thought that the star wheels of Rollastar were not themselves within the language of the claim. Thus, whilst “the court is not bound by the views of the experts as to the meaning of ordinary words in the claim …, it is obviously a strong thing for the court to take a different view from a consensual view of the experts.” Furthermore, it was “consistent with the inventor’s purpose to read the claim in the narrower sense: “That purpose is to remove mud, stones and haulm by dragging them through the gaps between the ribbed rollers and the clod roller.
If you use star wheels of the sort in Rollastar you are not aiming to do that. You are aiming to remove stones and mud by a sieving action.” (see [35] to [43]).The Court therefore considered that the claim required that the “lip, rib or like extension” must rise out of the cylindrical portion – and thereby that it must have axial length and there must be a recognisable cylindrical portion from which it projects. This was a narrower construction than that adopted by the Judge and, accordingly, obviousness had to be looked at afresh – the Judge having concluded on a (now incorrect) wider reading of the claim that it was obvious. “The Biogen principle of deference by an appeal court … to the multifactorial assessment of a trial judge” not applying in such circumstances.

Therefore, applying the Pozzoli v BDMO ([2007] EWCA Civ 588, [2007] FSR 27), restructuring of the classic Windsurfing test, the Court concluded that to move from the prior art (Rollerstar) machines to Grimme’s patented invention would not have been obvious. There were a number of steps along the way that provided impediment to the allegedly obvious path that were such that “the skilled man simply would have no motive or reason for even embarking [it].”

In the Court’s words: “The upshot is that the Patent is wholly valid and Mr Scott’s machine sold with elastomeric clod rollers falls within claim 1. Its sale and offering for sale is a direct infringement prohibited by s.60(1) of the Act.”

(2) Contributory/Indirect Infringement under s60(2)

The Court considered that Scott’s sale of the Evolution machine with steel rollers fitted fell outside of claim 1. However, the fact that “the machines [were] designed so that the rollers were interchangeable …, and that those supplied with steel clod rollers could be changed by the ultimate user (or indeed a middleman) over to rubber rollers …, [when combined with the fact that] they were marketed on that basis”, easily supported a claim for contributory infringement under s60(2).

In relation to this latter point, the Court gave full treatment to the origins and scope of the section [by far the fullest treatment of the provision that this Kat has ever seen in an English decision]. It therefore noted that the section originates from Art. 30 of the 1975 draft of the Community Patent Convention, and which became, in unchanged form, Art. 26 of the 1989 version, neither of which ever entered into force, but is still one of those provisions of which the Patents Act 1977 is “so framed as to have, as nearly as practicable, the same effects in the UK as the corresponding provisions of the Community Patent Convention”. As with nearly all such provisions, the text of the CPC was taken and remixed when bringing it within the domestic legislation (a practice described as “preposterous” by the Court, which also notes that this practice “serves [only] to confuse”). Nevertheless:

[88] “Section 60(2) creates a statutory tort, but it does not spring from any previous notional or common law tort. Its distinctive features, by way of contrast with common law tortious claims, are that the tort is actionable (1) even though what is supplied is capable of perfectly lawful, non-infringing use, (2) even though what is supplied never has been and may never in fact be used in a way directly infringing the patent in suit, (3) without any damage being suffered by the patentee, and (4) at the moment of supply, irrespective of anything that may or may not occur afterwards.

…[90] [This] makes the description “contributory” as opposed to “indirect” infringement something of a misnomer. If and to the extent that Mr Scott’s case is that there can be no infringement under s.60(2) unless there is actual direct infringement, it is plainly wrong. In this connection it is particularly important to observe that there can even be infringement by “offering” to sell an essential means – at the time of the offer there is unlikely to be any particular end user in mind.


“[102] …Grimme’s invention is “put into effect” when the Evolution machine is fitted with rubber rollers. The supply of a steel-rollered machine, which is designed and indeed promoted to enable the steel rollers to be changed for rubber rollers, is plainly the supply of the means by which that can be achieved, and is the supply of a means essential for that purpose. The fact that a steel-rollered Evolution machine, so long as it remains steel-rollered, does not infringe and is capable of lawful use as a complete machine in that state is irrelevant. The section is clearly intended to apply to, among other things, products which are perfectly capable of being used in a manner which will not constitute a direct infringement within s.60(1). The requirements as to suitability and knowledge of intended use limit the scope of the statutory tort in relation to such products, not whether the product itself is capable of lawful use without alteration, addition or adaptation.”

However, s60(2) PA 1977 also requires knowledge for there to be infringement: specifically that the supplier “knows … that those means … are intended to put the invention into effect”. Accordingly, a number of questions concerning knowledge arose in this dispute. These are listed by the Court in [107] of the judgment, and the answers discussed in [108] to [132], but are condensed here:

(i) Whose intention is referred to?

The Court considered that it was self-evidently not the supplier himself. The required intention relates to putting the invention into effect, and so the reference to intention must be to the intention of the party that is in a position to put the invention into effect, i.e. the person supplied. “The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain.” However, the person whose intention is referred to need not be the person directly supplied as “if that view were right, a party who only supplied essential means to middlemen could never fall within the provision”, which cannot have been the intention of the legislation.

(ii) How specific must the intention be?

Here the Court considered that “it was enough if the supplier knew (or it was obvious in the circumstances) at the time of his offer to supply or supply that some (disregarding freak use) ultimate users would intend to use, adapt or alter the “means essential” so as to infringe.” Several decisions of the Bundesgerichtshof (German Supreme Court) were utilised to support this view (Deckenheizung [BGH X ZR 153/03], 13 June 2006; Haubenstretchautomat [BGH X ZR 173/02], 9 January 2007; and Pipettensystem [BGH X ZR 38/06], 27 February 2007. The three earlier cases are Luftheizgerät, [BGH X ZR 176/98], 10 October 2000; DI B.V. [2004] ENPR 194 of 25 March 1999 (Oberlandsgericht, Düsseldorf); and Antriebsscheibenaufzug [BGH X ZR 247/02], 7 June 2005).

(iii) When must the intention be formed?

Again referring to the German decisions, the Court considered that “[w]hilst it is the intention of the buyer (this must mean ultimate buyer) which matters, a future intention of a future buyer is enough if that is what one would expect in all the circumstances.”

In summary, the Court noted (at [131]) that:

“…[T]he knowledge and intention requirements of Art. 26 and section 60(2) are satisfied if, at the time of supply or offer of supply, the supplier knows, or it is obvious in the circumstances, that ultimate users will intend to put the invention into effect. That is to be proved on the usual standard of balance of probabilities. It is not enough merely that the means are suitable for putting the intention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material.”

Therefore, the fact that Scott not only pointed out that users could adapt the Evolution machine by simple modification, but also sold the means to do so, clearly marked him with the requisite knowledge. The Court was not moved by the contention that only a few users actually made the change. Mr Scott knew that users would intend to make their devices infringing if it suited them and positively encouraged that intention.”

As an endnote, this Kat was going to begin this post with a comment that potatoes and the law do not often find their paths crossing, however, upon searching a well-known legal database of case law for the word “potato” he received a not altogether unrespectable 1275 hits, and so shelved this comment on the basis that it was not, in fact, true. (For the curious (and despite the obvious dangers to any feline: who isn't?), “cat” receives 1748 hits, whilst “cat” & “potato” receives 25 - the mind boggles).

That potatoe: here

Famous potatoes: here and here


Anonymous said...

There is some discussion of the drafting of the 1977 Act in the recent edition of the Modern Law of Patents, which I have just seen. The editors try to put the case for the much maligned drafter of the 1977 Act or at least explain his reasoning (based on his notes). It appears that the drafting is less "preposterous" when one takes into account the strict rules of statutory interpretation as they applied in 1976-7.

Jeremy said...

Have you a reference to this article? I remember the drafter, a sweet gentleman by the name of Skemp. He had no experience or knowledge of anything to do with patents and the 1977 Bill was his last before he reached retirement.

I encountered him at a major two-day Sweet & Maxwell conference on the then new Patents Act 1977. Speaker after speaker got up to castigate his drafting. He sat there, chortling with amusement and was heard to say, after the legendary Blanco White and Kynric Lewis had finished savaging his handiwork, "They've got it all wrong, they've got it all wrong".

Jasper Groot Koerkamp said...

In the Netherlands, Grimme sued a Dutch company over the same patent. This Dutch company imported Evolution machines of Potato Machinery. Here, the issue was the same as mentioned under (2) above: contributory infringement by fitting/providing rubber rollers.

Therefore, an injunction was issued on fitting the Evolution Separator with rubber spiral rollers and to import sale etc. rubber spiral rollers suitable for fitting in the Evoluation Separator.

<a href=">the decision</a>

Please note, this is a provisional ruling; in accordance with TRIPs and its implementation in Dutch legislation, Grimme has to file for a normal procedure within six months from the date of the decision (which will be tomorrow).

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