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England and Wales Court of Appeal (Civil Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (16 June 2009) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2009/498.html Cite as: [2009] EWCA Civ 498 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE PATTEN
HC 06 C04452
Strand, London, WC2A 2LL |
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B e f o r e :
and
THE RT HON LORD JUSTICE JACOB
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Ancon Limited |
Claimant/ Appellant |
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- and - |
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ACS Stainless Steel Fixings Limited |
Defendant/Respondent |
____________________
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400, Fax No: 020 7404 1424
Official Shorthand Writers to the Court)
for the Claimant/Appellant
Andrew Lykiardopoulos (instructed by Kuit Steinart Levy LLP)
for the Defendant/Respondent
Hearing date: 18 May 2009
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Crown Copyright ©
Lord Justice Jacob:
Principles of Claim Construction
"(a) The first, overarching principle, is that contained in Art 69 itself. Sometimes I wonder whether people spend more time on the gloss to Art 69, the Protocol, than to the Article itself, even though it is the Article which is the main governing provision.
(b) Art 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(c) It follows that the claims are to be construed purposively — the inventor's purpose being ascertained from the description and drawings.
(d) It further follows that the claims must not be construed as if they stood alone — the drawings and description only being used to resolve any ambiguity. The Protocol expressly eschews such a method of construction but to my mind that would be so without the Protocol. Purpose is vital to the construction of claims.
(e) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(f) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Art 69 itself. It is the terms of the claims which delineate the patentee's territory.
(g) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. Hoffmann LJ put it this way in STEP v. Emson [1993] RPC at 522 :
'The well known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it.'
(h) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. A good example of this is the Catnic case itself — 'vertical' in context did not mean 'geometrically vertical', it meant 'vertical enough to do the job' (of supporting the upper horizontal plate). The so-called 'Protocol questions' (those formulated by Hoffmann J in Improver v Remington [1990] FSR 181at p.189) are of particular value when considering the difference of meaning between a word or phrase out of context and that word or phrase in context. At that point the first two Protocol questions come into play. But once one focuses on the word in context, the Protocol question approach does not resolve the ultimate question — what does the word or phrase actually mean, when construed purposively? That can only be done on the language used, read in context.
(i) It further follows that there is no general 'doctrine of equivalents.' Any student of patent law knows that various legal systems allow for such a concept, but that none of them can agree what it is or should be. Here is not the place to set forth the myriad versions of such a doctrine. For my part I do not think that Art. 69 itself allows for such a concept — it says the extent of protection shall be determined by the terms of the claims. And so far as I can understand, the French and German versions mean the same thing. Nor can I see how the Protocol can create any such doctrine.
(j) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic called (at p.243):
'the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.'
Pedantry and patents are incompatible. In Catnic the rejected 'meticulous verbal analysis" was the argument that because the word 'horizontal' was qualified by 'substantially' whereas 'vertical' was not, the latter must mean 'geometrically vertical.'"
[69] I would diffidently add three observations of my own. The first is merely the trite principle that the addressee of the specification is the person skilled in the art, who approaches the document with the common general knowledge. Secondly, there may be obscurities and difficulties in a claim that cannot be resolved by an appeal to context. It is very rare that some sensible meaning cannot be attributed to the words used in a patent claim, but where a claim permits alternative interpretations it is possible to be left with no alternative but to take the most straightforward. Finally, and most importantly, over-meticulousness is not to be equated to carefulness. Care in working out what the patentee was aiming at when he chose the words he used is absolutely necessary.
The Specification of the patent in suit
[6] Channel assemblies have been in use in the construction industry for some time. Typically they are made up of a metal channel with lugs or restraining anchors which is cast into the concrete structure of a building. The channel has shaped sides with an open aperture on its face into which the head of the bolt can be inserted. The bolt is moved along the channel to its required position and then turned 90º so as to lock against the internal walls of the channel. The assembly can then be used to fix on to the structure of the building components such as brackets to support masonry or some other form of external cladding.
[7] These fixings must therefore be able to support extremely heavy loads and the evidence is that they can carry weights of up to ¾ tonne which is the weight of a small car.
[8] The Patent describes the invention as relating to "a channel assembly which is adapted to be cast into or otherwise attached to a building structure". It explains by reference to the assemblies shown in Figures 1-4 that channel assemblies have been used for many years for fixing ancillary components to a building structure. The channels are either surface mounted or cast into a concrete face and "generally have a rectangular-shaped cross-section with an open slot 5 between two lips 7 which are turned inwards from generally parallel side walls 8".
[9] The Patent then goes on to explain at [0003-0004] the problems with the existing systems:
"[0003] The channel 1 is used in conjunction with a bolt 10 with a generally T-shaped head having two wings 12. The bolt head fits into the open slot 5 in the channel 1 and is turned through 90º in a clockwise direction which locks the bolt 10 in position (the tips 12a of the wings 12 abut against the side walls 8 to prevent further rotation of the head). Conventionally, the fit of the head in the channel 1 is fairly loose. This can allow significant movement of the bolt 10 in the channel 1 under shear loads. Under tensile load the lips 7 of the channel 1 can deflect outwards and the wings 12 of the bolt 10 bend because the load is transferred from the head of the bolt 10 to the lips 7 of the channel 1 at a location remote from the sides 8 of the channel 1.
[0004] Under tensile load, the channel 1 behaves as a beam between the bolts securing the channel 1 to the structure or between anchorage lugs 15 which secure the channel 1 in the concrete."
[11] In paragraphs [0006-0011] the Patent describes the invention as follows:
"[0006] According to the present invention there is provided a channel assembly in accordance with claim 1.
[0007] The sides of the head (or a portion thereof) are preferably inclined at substantially the same angle as the side walls of the channel.
[0008] The fixing and channel preferably co-operate (preferably by a cam action) to force the fixing against the means for restraining it upon rotation of the fixing in the channel.
[0009] Thus the invention also provides a method of securing a fixing in a channel assembly as defined above, the method comprising providing a channel assembly as defined above, locating the fixing in the channel, and rotating the fixing in the channel to engage the sides of the head and the side walls of the channel such that a camming action forces the head of the fixing against the lips of the channel.
[0010] The invention also provides a fixing for use in the channel assembly as defined above.
[0011] The head of the fixing is of an elliptical cone. In the embodiment comprising an elliptical cone, the rotation of the head in the channel optionally forces the sides of the head at its largest radius against the side walls of the channel, and can also force the head against the lips of the channel. This can reduce the extent of play of the fixing in the channel, and allow a stronger fixing than if the bolt is movable in the channel."
[12] The two key features used to achieve the effect described in [0011] are therefore (1) the shape of the channel which has sides which "incline inwardly towards a spine" compared with the examples in the prior art which are rectangular in shape and (2) the head of the bolt which is described in [0016] as having a generally frusto-conical shape in side view with tapered sides. These are references to Figures 5 and 6 in the Patent which illustrate the first embodiment of the design and is a more detailed description of the head of the fixing which in [0011] is simply referred to as "of an elliptical cone".
[13] In [0017-0018] the Patent explains the relationship between the shape of the head and that of the channel:
"[0017] The angle of the tapered sides of the head 33 at its widest point approximately equals the angle of inclination of the sides 28 of the channel 21. At the base 33a of the head 33 there is a plate which is similar in plan view to the head of the prior art bolt 10. The head 33 has two flattened areas 33c on opposing sides to enable the head 33 to be inserted into the slot 25. Once in the slot 25, the head 33 can be turned clockwise through 90º but the plate prevents further rotation in the channel as described for the prior art.
[0018] Rotation of the head 33 in the channel 21 induces a camming effect between the head 33 and the channel 21 which forces the base 33a of the head 33 against the inner surfaces of the lips 27. This not only ensures that the rotated bolt 30 is restricted in its axial movement by the lips 27, but also transfers any axial load from the bolt to the channel 21 at the corners between the lips 27 and the side walls 28."
[14] There are two further embodiments. Paragraph [0019] teaches a modified form of the head "in the form of a truncated elliptical cone" in which the base plate (33a in Figure 6) is removed. This is illustrated in Figures 10 and 11 below:
[15] Paragraph [0019] says that:
"…The cross-section through the head 34 is generally elliptical as shown in Fig. 11. The head 34 has flattened areas 34c as previously described for the head 33 which allows the head 34 to fit into the slot 25 of the channel 21. Upon rotation of the head 34 in the channel 21, the head 34 is forced upwards in the channel towards the slot 25 by the camming action of the inclined sides of the head 34 and channel 21 respectively, and the base 34a of the head 34 is firmly locked against the inner surface of the lips 27."
[16] Figures 12 and 13, which are reproduced below, illustrate the third embodiment which is a further variant of the truncated elliptical cone described in Figures 10 and 11.
[17] This version of the head (which, like the other two, is designed to fit into the channel illustrated in Figure 5) also has flattened areas on two sides and a flattened top. But it differs from the one shown in Figure 10 (34). Paragraphs [0020-0021] state that:
"[0020] ….whereas the head 34 is generally symmetrical about a line B-B joining the mid points of its flattened areas 34c so that the vertices between the curved and flat portions are generally rounded, the head 35 has two diametrically opposed rounded corners 35r and two diametrically opposed right angled corners 35L at its base 35a. The head 35 is shaped such that the sides incline smoothly from the base 35a to the tip 35b. As previously described, the head 35 has flattened areas 35c on opposing sides.
[0021] When fitted to the shank of a bolt, the head 35 can fit into the slot 25 of the channel 21 as previously described. Upon clockwise rotation of the head 35 in the slot 25, the sides 28 of the channel 21 contact diametrically opposed sides of the head 35, such that the head 35 can be turned when the rounded sides 35r are in contact with the sides 28 of the channel 21, but once the corners 35L of the head 35-are in contact with the sides 28 of the channel 21, further rotation is resisted by the generally flat sides 35F adjacent the respective corners 35L. The surface area of the head 35 available to abut against the side walls 28 of the channel 21 is increased as compared to the surface area available on the bolt 30; this improves resistance to further rotation, and increases the camming force which drives the base 35a against the lips 27 when the head 35 is rotated in the channel 21."
[18] The advantages claimed for the invention in the Patent are a higher load capacity within a given deflection limit and a lower metal volume for any given overall performance. Although containing less metal, the fit of the bolt head into the channel transfers load to the channel at a location very close to the side walls which can reduce the deflection caused by the bending of the lips of the channel under tensile load. In turn, the shape of the channel with its inclined sides is said to transfer the load more directly to the anchorages than would be the case with the traditional triangular shaped channel thereby further reducing the possibility of deflection. There is also a corresponding reduction in the amount of metal required to form the channel.
Claim 1
"1. A channel assembly (21) adapted to be attached to a building structure, said channel comprising a spine (29), two side walls (28) and lips (27) defining a slot (25) in the channel and adapted to restrain a fixing in the channel, said spine (29) being provided with anchors (31) for casting into concrete, said side walls (28) being inclined inwardly towards the spine (29) and further including a fixing (30) having a head (33) with inclined sides characterised in that the head (33) has a generally elliptical cone shape."
Thus, and there is no real dispute about this, it is just like an example of fig 13 of the patent but with the top of the head filed down so that there is no ellipse on the top.
(a) All three of the drawings do show a generally oval portion of the head. Even fig 13 shows an oval at the top of the head. As he put it "The oval shape is always retained."
(b) The patentee specifically discusses some departures from exact geometrical shapes. In particular in relation to the first embodiment (fig. 6) he refers to "Two flattened areas 33c on opposing sides" and he refers to truncation of the cone ("in the form of a truncated cone"). This shows the sort of departures contemplated. But as far as "elliptical" is concerned, no departure is mentioned and it cannot have been contemplated.
(c) True it is that the heads of the patentee's embodiments provide smooth camming. That does not mean that anything which will achieve that must be "generally elliptical".
(d) The skilled man would recognise the sharp and rounded corners of the fig 13 embodiment as coming from the prior art – though there they were the same in all cross-sections because the bolt was essentially a rectangular block. He would not have called that "generally elliptical" so a similar cross-section of the bolt of the patent would not be "generally elliptical" if there were no oval part on the top.
(e) The authorities show that one cannot disregard the language chosen by the patentee. "Purpose is not the be all and end all" (Technip, Halliburton); "a patent may for one reason or another, claim less than it teaches" and "the language he has chosen is usually of critical important" (Kirin-Amgen). So once you have a head which in any ordinary use of language does not have an ellipse, you are outside the meaning of the claim. It is not good enough merely to show that the alleged infringement has, as is said in another context, all the right curves in all the right places: something like an ellipse must also be present.
(f) If the patentee had wanted to say that something more was covered he easily could have done so, for instance by saying the head was "generally rectangular with curved corners and inclined sides."
The difficulty I have with Mr Alexander's approach is that it gives no real recognition to the patentee's reference in the claims to the bolt head being elliptical. It is clear from the specification that in the first embodiment the shape of the head is an elliptical cone without qualification (see paragraph [0011]). The word "generally" comes into use when one gets to the second and third embodiments which introduce a degree of truncation; flattened side areas; and two right-angled corners. Although these modifications do not eliminate the elliptical shaped head of the fixing, they do compromise it in geometrical terms and give rise in the text of the specification to the use of the word "generally". It is, however, clear from this that the phrase "generally elliptical cone shape" is used to describe shapes, all of which retain the essential feature of an ellipse. In the context of the specification as a whole, it can have no other meaning.
The error was in saying that the shapes shown in the patent all "retain the essential feature of an ellipse." They do not in any relevantly technical sense, if by "feature of an ellipse" one means a complete oval shape. For, unlike the "Brighton Rock" of a seaside candy, the oval shape does not run through what is shown: save for very close to the top, the cross-sections are not complete ovals – they have the vestiges of an oval.
"3. In contrary to the Opponent's opinion the feature "a generally elliptical cone shape" also is sufficiently clear. It is clear for a skilled person that, in contrary to a strict elliptical cone shape, with the expression "generally elliptical" the cross-section of the cone should include any rounded non-circular form. The restriction to "a elliptical cone shape" would be an undue restriction of the scope of protection, having regard to the disclosure of the patent in suit."
Lord Justice Waller: