Beloit Technologies Inc & Anor v Valmet Paper Machinery Inc & Anor

In patent validity proceedings, anticipation requires a prior publication to give clear and unmistakable directions to the precise claimed invention. A signpost towards the invention is insufficient. Obviousness is assessed objectively through the four-stage Windsurfing approach, using the common general knowledge of the notional skilled but unimaginative addressee and avoiding hindsight. Information known to some practitioners, or found in individual patent specifications, is not necessarily common general knowledge. Extending a single-tier, single-felted dryer arrangement, inverting a group to achieve two-sided drying, and using suction rolls for positive transfer was obvious. Section 77(2) of the Patents Act 1977 preserved EPO procedures but did not remove the English court’s jurisdiction to revoke an invalid European patent (UK) during pending opposition proceedings.

Beloit, proprietors of European Patents (UK) 0334 899 and 0345 266, sued Valmet for infringement of dryer machinery patents. Valmet counterclaimed for revocation and sought a declaration concerning a revised dryer.

Jacob J held both patents invalid, ordered revocation, and held that the Aylesford Mk I would have infringed if the patents had been valid, while the Mk II would not have infringed. Beloit appealed and Valmet served a Respondents’ Notice. The appeal concerned anticipation and obviousness of claim 2 of patent 899, obviousness and construction of claim 12 of patent 266, and whether section 77(2) of the Patents Act 1977 prevented revocation while EPO opposition proceedings were pending.

Aldous LJ delivered the judgment, with Schiemann and Hirst LJJ agreeing. Leave was granted to amend the Notice of Appeal. The appeal was dismissed and Jacob J’s order was affirmed.

1. Anticipation. Applying General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457, the prior publication had to contain clear and unmistakable directions to the precise claimed invention. Thomas did not anticipate claim 2. Its optional reference to foraminous cylinders did not clearly direct the required substitutions in the figure 6 arrangement. Its transfer mechanism also depended on pressure-differential vacuum boxes, rather than the claimed suction-roll transfer. The court did not need to determine whether Thomas’s foraminous rollers were technically suction rollers.
2. Obviousness. The test under section 3 of the Patents Act 1977 was objective and qualitative. The court applied the four-stage approach in Windsurfing International Inc v Tabur Marine (1985) RPC 59: identify the inventive concept, adopt the mantle of the skilled but unimaginative addressee with common general knowledge, identify the differences, and assess obviousness without hindsight. The court cautioned that the summary in Monlyke AB v Procter & Gamble Ltd (1994) RPC 49 could mislead if detached from that structured approach.
3. Claim 2. The skilled person would have sought to remove the downstream open-draws in the Bel Run by extending its single-tier, single-felted arrangement, inverting a group to maintain two-sided drying, and using suction rolls for positive transfer. Claim 2 was therefore obvious. Claim 12 of patent 266 was accepted to be obvious if claim 2 was obvious, so no separate analysis was required.
4. Claim construction. Because patent 266 was invalid, infringement did not arise. Alternatively, applying the purposive-construction questions in Improver Corporation v Remington Consumer Products Ltd (1989) RPC 69, the requirement that the inverted group be the third section was an essential limitation. A group positioned further downstream would fall outside the claim.
5. Revocation jurisdiction. Section 77(2) preserved EPO procedures concerning amendment and revocation but did not curtail the Patents Court’s jurisdiction under section 72 to revoke an invalid European patent (UK) while opposition or appeal proceedings were pending. Parallel proceedings could justify a stay where EPO resolution was sufficiently quick and a stay caused no injustice or public-interest difficulty, but there was no absolute jurisdictional bar. The appeal was dismissed, with the revocation order temporarily stayed to permit any application for leave to appeal.

• Court of Appeal (Civil Division): In [1997] EWCA Civ 993, the court granted leave to amend the Notice of Appeal, dismissed the appeal, affirmed the order of Jacob J, and refused leave to appeal to the House of Lords.
• High Court, Chancery Division, Patents Court: Jacob J held both patents invalid, ordered their revocation, and made findings concerning infringement by the Aylesford Mk I and Mk II machinery.