Taylor v Ishida (Europe) Ltd & Anor

Patent claims must be construed contextually, through the eyes of the skilled person and in light of the specification. A word such as “fixed” may have a practical meaning which differs from its acontextual meaning where the specification makes some movement necessary for the invention to work.

A claim to continuous rotary stripping and sealing was not confined to the preferred embodiment, curved jaws, or passive spring movement. It covered machines using flat jaws and servo-controlled movement where those features did not materially alter the inventive concept. On obviousness, an appellate court should be slow to interfere with the trial judge’s conclusion absent an error of principle.

Mr Taylor’s European Patent (UK) No. 0165819 concerned continuous rotary packaging apparatus for snackfood products. Pumfrey J held the patent valid and infringed by two machines marketed by Ishida (Europe) Ltd and Ishida Co. Ltd.

Ishida appealed on infringement, obviousness and insufficiency. The infringement issue concerned whether the machines operated about “spaced parallel fixed axes” despite servo-controlled movement of the axes. Mr Taylor cross-appealed against the limited form of injunction granted. The central questions were the proper construction of integer (7), whether the claim was obvious over common general knowledge, and the appropriate injunction.

1. Appeal and cross-appeal. The appeal was dismissed. The cross-appeal was allowed, and the injunction was substituted in the usual form.
2. Construction. Under section 125 of the Patents Act 1977 and the Protocol on Interpretation of Article 69 of the European Patent Convention, the claim was to be construed through the eyes of the notional skilled person, read as part of the specification. Although the acontextual meaning of “fixed” suggested no movement, the specification disclosed that movement was necessary in rotary machines to permit sealing. The word therefore allowed movement which did not materially affect the way the invention worked.
3. Infringement. The claim covered flat-faced as well as curved jaws. It also covered active servo-controlled movement, not merely passive movement produced by springs. The servo mechanism was an obvious variant of the spring arrangement shown in the specification. The relevant question was whether the movement enabled continuous rotary stripping and sealing at the level of generality of the claim. The Ishida machines infringed in stripping-off and high-speed modes, and stripping-on was only a trivial variant.
4. Obviousness. The judge had made no error of principle. The evidence showed a series of successive design steps, and Mr Poley’s expertise exceeded that of the notional skilled person. The development’s novelty, labour, commercial context and recommendation for patent protection supported the conclusion that the invention was not obvious. The appellate approach was consistent with the guidance applied in David J. Instance Ltd v Denny Bros. Printing Ltd and Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR 113.
5. Insufficiency. No separate challenge was advanced to the judge’s conclusion, so the insufficiency appeal failed.

• Chancery Division: Pumfrey J held on 30 July 1999 that European Patent (UK) No. 0165819 was valid and infringed.
• Court of Appeal (Civil Division): The appeal was dismissed. The cross-appeal concerning the injunction was allowed, and an injunction in the usual form was substituted. Permission to appeal to the House of Lords was refused.