Sabaf Spa v MFI Furniture Centres and Another

A combination of known features is not necessarily obvious. The statutory question is whether the combination would have been obvious to the skilled person, applying common general knowledge and without hindsight. A separate law of collocation does not displace that inquiry.

Joint tortfeasance requires sufficient involvement in the tort to make the infringing act the secondary party’s own. Mere supply, knowledge and facilitation are insufficient. A seller which has transferred title and risk before carriage does not ordinarily import a patented product merely by arranging transportation for the buyer.

The proprietor of a patent for a compact gas-hob burner sued a manufacturer whose burners were supplied to a United Kingdom retailer. The Patents Court found that the accused burners fell within the patent, that the manufacturer had imported them from November 1998, and that it was not a joint tortfeasor with the retailer. It nevertheless dismissed the action because the patent was invalid for obviousness as a mere collocation of known concepts.

The proprietor appealed on validity and joint tortfeasance. The manufacturer cross-appealed on infringement and importation. The principal questions were whether the claimed combination was obvious, whether the accused burner contained the claimed sleeve and chamber, and whether the manufacturer had committed any infringing act within the jurisdiction.

1. Disposition. The proprietor’s appeal was allowed on validity, but its joint-tortfeasance case failed. The manufacturer’s cross-appeal was dismissed on the construction and infringement issue but allowed on importation. The action therefore remained dismissed because the manufacturer had committed no infringing act within the jurisdiction. The patent was declared valid.
2. Obviousness. Peter Gibson LJ, giving the judgment of the court, held that a mere collocation is only a species of obviousness under section 3 of the Patents Act 1977. There is no separate law of collocation. Even where individual concepts are known, the court must ask whether combining them would have been obvious to the skilled person using common general knowledge. Separate prior-art disclosures cannot be mosaicked unless combining them would itself have been obvious. Dissecting a combination into its individual elements risks obscuring the invention and introducing hindsight.
3. Applying the structured approach in Windsurfing, the court identified the inventive concept, the attributes and common general knowledge of the skilled person, and the differences between the invention and each cited item of prior art. The skilled person had neither the cited disclosures nor the relevant concepts as common general knowledge and faced technical prejudices against the claimed approach. None of the prior-art items made the complete three-component combination obvious. The patent was therefore valid.
4. Construction and infringement. On a purposive construction, the shallower depression in the accused burner performed the relevant function and constituted a sleeve portion with a vertical axis defining a chamber. The burner consequently fell within the claim.
5. Joint tortfeasance. A secondary party must be sufficiently involved to make the infringing act its own. Common design, concerted action or another combination to secure the infringing act can satisfy that requirement. Mere supply, knowledge of the intended market and assistance to the purchaser do not suffice. The manufacturer had not made the retailer’s sales its own.
6. Importation. Title and risk passed to the retailer in Italy under ex works terms. Although the manufacturer contracted with the haulier, it arranged transportation for the retailer and retained no legal or beneficial interest in the goods. Section 60(1)(a) refers to a person who imports, not one who causes importation. The manufacturer was therefore not an importer.

1. Court of Appeal (Civil Division): In [2002] EWCA Civ 976, the proprietor’s appeal was allowed on patent validity but dismissed on joint tortfeasance. The manufacturer’s cross-appeal was allowed on importation but dismissed on the construction and infringement issue. The claim and counterclaim were dismissed and the patent was declared valid.
2. High Court, Chancery Division, Patents Court: Laddie J dismissed the infringement action after holding the patent invalid for obviousness. He had found that the accused burners fell within the patent and that the manufacturer imported them from November 1998, but rejected joint-tortfeasance liability. No citation is stated in the judgment.