Rocky Mountain Traders Ltd v Hewlett Packard GmbH & Ors

Patent claims are construed purposively in the light of the specification as a whole and the Protocol on Interpretation of Article 69 of the EPC. A feature is not essential merely because it appears expressly in the claim; the specification must show that strict compliance is required. “Unitary” means that the claimed device must be in one piece where the invention is intended to avoid the need to assemble and manipulate separate components. For novelty, prior art must contain clear and unmistakable directions which inevitably produce the claimed subject matter. A signpost towards the invention is insufficient. Obviousness may be established by an obvious improvement to a satisfactory existing product, and evidence of independent designs may support that conclusion, provided the court guards against hindsight.

The claimant appealed from the decision of Pumfrey J dated 11 October 1999, which revoked two patents concerning devices for applying labels concentrically to compact discs. The judge held that the European patent was invalid for lack of novelty and obviousness, and that the UK patent was invalid for obviousness. He nevertheless found infringement of the European patent by the alleged devices, except that the HP Mark IB did not infringe the UK patent because it was not “unitary”.

The appeal concerned the construction of the claims, including the significance of an upper piston surface and the meaning of “unitary”, the alleged anticipation of the European patent by Casillo, and the assessment of obviousness.

1. Disposition. The appeal was dismissed. The appellants were ordered to pay 93 per cent of the respondents’ costs, subject to detailed assessment.
2. Construction and infringement. Under Patents Act 1977, section 125, the claims had to be construed in the light of the specification as a whole, applying the Protocol on Interpretation of Article 69 of the EPC. The court used a purposive construction seeking fair protection for the patentee with reasonable certainty for third parties, applying the protocol questions. The requirement that the piston have an upper surface was not shown by the specification to be essential. A device in which the piston and first rod had the same diameter therefore infringed claim 1 of patent 353 if the other features were present.
3. The word “unitary” in claim 1 of patent 907 required the device to be in one piece. It distinguished the Casillo construction, which required relative movement between separate components and greater manual dexterity. The Mark IB, consisting of a separate cap and base which had to be combined before use, was not unitary and did not infringe.
4. Novelty. Claims 1 and 2 of patent 353 were not anticipated. The applicable test, stated in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457, required clear and unmistakable directions in the prior publication to do what the patent claimed. A direction capable of being carried out in several ways, including ways which would not infringe, was only a signpost and did not destroy novelty. Casillo’s direction to use wood and its requirement that the hollow space be sufficiently large did not clearly direct the provision of the claimed guide structure.
5. Obviousness. The structured approach in Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] RPC 59 was properly applied. The court rejected the suggestion that a satisfactory existing product could not have obvious improvements. The evidence of Mr Thring, Mr McKie and three independent designers supported the conclusion that the differences between Casillo and the claimed device, including a tube, piston and spring, could be arrived at without hindsight. Claims 1 to 3 of patent 353 were therefore obvious, and patent 907 stood or fell with patent 353 and was likewise invalid for obviousness.

• Court of Appeal (Civil Division) [2000] EWCA Civ 347: appeal dismissed; the decision of Pumfrey J was upheld.
• Chancery Division: judgment dated 11 October 1999; both patents were held invalid, although infringement of patent 353 was found if valid and the Mark IB was held not to infringe patent 907.