Out of the frying pan, into the fire: patent infringement by numbers is not allowed

Percy the non-stick cat tries out a frying pan
for size, comfort and snuggle-ability ...
At a time of the year when office parties proliferate, the spirit of the Saturnalia prevails and the thoughts of even the most solemn intellectual property lawyers are apt to turn to other subjects, it takes a great deal of self-discipline to avoid deploying a blogpost headline such as "Patentee screwed by Virgin", though in a literal sense those words would be a perfect epithet for Jarden Consumer Solutions (Europe) Ltd v SEB SA & Another [2014] EWCA Civ 1629, a Court of Appeal for England and Wales ruling from 17 December in a dispute in which the trial was written up on this weblog in a guest post by Paul England here. At the time Paul wrote of Mr Justice Arnold's ruling (and this Kat agreed with him):
"This is a textbook obviousness and infringement analysis, and one that would serve as a case study in patent courses for the next few years". 
 The Court of Appeal, with a line-up that was singularly lacking in intellectual property specialists, did not agree.

At trial, Jarden's electrical appliance for the dry frying of food was found to have infringed SEB's 2004 patent. Jarden appealed, arguing that SEB's patent hadn't been infringed and that, even if it had, it was invalid. Essentially, in SEB's view, the judge had been wrong to hold that he could use identifying numerals in the patent diagrams to construe the claim to include the lid as a part of the device's main body (Jarden maintained that its fryer did not infringe the patent because its heater was entirely located in its lid, while the patent's specification showed a patented device which had the heater in its main body, with ducts directing the heat in its lid). On the invalidity issue, SEB said that Arnold J was wrong to conclude that SEB's patent was not obvious over the prior art in a German patent (Vogt), dating back to 1971.

Said the Court of Appeal (Lord Justice Vos, giving judgment for himself, Lord Justice Burnett and Sir Timothy Lloyd), the appeal should be allowed:

* Arnold J should not have held that the lid of SEB's appliance was to be regarded as a part of the main body, his mistake being to rely on reference numerals in the diagrams rather than simply using them to identify which parts in the diagrams were being referred to in the claims or the specification; this was contrary to the decision of an IP-savvy Court of Appeal (Lords Justices Jacob, Patten and Kitchin) in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group [2009] EWCA Civ 1062 [noted by the IPKat here, where Barbara Cookson of Filemot commented "Really handy piece in here at paragraph 17 providing reassurance that reference numerals in the claims do not limit it. Very useful to have that to hand when writing letters to foreign agents"].

* Arnold J was however entitled to hold that SEB's patent was not obvious over Vogt's earlier invention. Vogt's invention was a shallow frying method with an external heat source under the device: to make this a useful starting point for the skilled team working towards the SEB invention, they would have needed to change the fundamental elements of Vogt's teaching, closing the vessel to form a substantially sealed chamber and then removing the main heater means under the main body to allow a different method of cooking with heat directed at the food.

This Kat would be most reluctant to urge anyone to litigate when it's not necessary to do so, but he would love to see that the Supreme Court thinks of the "you can't construe numerals" principle.  First, he thinks there is a position somewhere between "yes you can" and "no you can't", along the lines of "it all depends on how the person skilled in the art, looking at the claims and specification containing the numerals, would react to them".  Secondly, he can't help wondering about something: numerals in patent diagrams are not a peculiarly British institution and they pop up in patent specifications in the rest of the world too, not excluding Europe.  Is practice in Europe the same as that articulated in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group, or is there a spread of practices, in which case it will be good to know which approach will be adopted when we have a single European unitary patent, construed by the Unified Patent Court.  Comments, anyone?

Painting by numbers here
The wisdom of numbers here
Book of Numbers here
Out of the frying pan, into the fire: patent infringement by numbers is not allowed Out of the frying pan, into the fire: patent infringement by numbers is not allowed Reviewed by Jeremy on Thursday, December 25, 2014 Rating: 5


  1. - This does not seem to be a "you can't construe numerals" principle:

    "...It was the use of numerals to direct the skilled reader to which parts of the patented device were to be read in the claims as being included when a particular term was used. Whilst, as the judge said, the point was not used to “limit” the claims in direct violation of Rule 43(7), it was used to construe the claims and, in particular, to give an extended meaning to the term “main body” so as to include the lid, which increased the scope of the patentee’s protection..." [33]

    And the "numerals" were against:

    "... First, claim 3 says that the “lid together with the main body form a substantially sealed chamber”. If the lid were construed to be part of the main body, that formulation would have been different.
    Claim 4 then provides that the hinge is “for connecting the lid and the main body”. If it had been intended to communicate to the skilled reader that the lid was to be regarded as part of the main body, the Patent would have used separate words to describe the body without the lid on the one hand and the body with the lid on the other hand.
    Moreover, all parties accept that the term “main body” has to have a uniform meaning..." [40]

    So, it already seems to be a position somewhere between "yes you can" [construe] and "no you can't" [limit].

  2. Two comments, both adverting to the unfortunate drafting of the patent, but one asking additionally what is the standard that an Appellant must reach, in order to get an appeal court to reverse the first instance.

    On the reference numbers point, I personally agree with Arnold J. at his para 81, that the point is very much a "finely balanced one". It follows then, that my eyebrows shot up when I read Vos LJ telling me (para 32) firstly that the issue is indeed "finely balanced" but that, nevertheless, he has "no doubt" that the judge fell into legal error. If it's "balanced" how can it be free from doubt? Was it necessary for him to declare "no doubt" before he could reverse?

    My second point is on the use of the 2-part c-i-t form of claim. What a shambles emerges, again, here. When will patent attorneys learn how to use it correctly or not at all? Thus:

    The invention here was a new sort of fryer, a so-called "dry fryer". A textbook case of when NOT to use a c-i-t claim.

    One suspects that many in Europe are unaware of the Jepson (the improvement which comprises) claim, in which what precedes that trnsition clause is admitted common general knowledge. If one chooses to use a c-i-t claim then please explain to your US client that it is 1) an admission ONLY in relation to the single prior art starting document expressly identified as such in the specification and 2) relevant only to obviousness and not to scope of protection. And don't allow the ED to bully you into a c-i-t claim which starts from a D1 which is NOT a realistic prior art starting point in the "problem and solution" landscape in which you have debated Art 56 EPC.

    Otherwise, you might end up in litigation, and lose, even though your client invented an entirely new form of oven, hugely successful commercially. You just didn't draft the patent application competently.

  3. c-i-t = characterized in that


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