Aktiebolag & Anor v Irish Ferries Ltd.

The exception in section 60(5)(d) of the Patents Act 1977 protects a foreign vessel using a patented feature exclusively for its needs while temporarily or accidentally in UK waters. In the context of the Paris Convention, temporary means transient or for a limited time; repeated and scheduled entries do not remove the exception. The provision is construed purposively and may cover a claim drafted to the vessel as a whole where the inventive concept is a feature in its body. On obviousness, an appellate court should respect the trial judge’s evaluation absent an error of principle or plain wrongness. A simple modification of prior art is not necessarily obvious, and hindsight must be excluded.

Stena, the registered proprietor and exclusive licensee of a European patent concerning multihull vessel superstructures, sued Irish Ferries for infringement by its ferry, the Jonathan Swift. The Chancery Division held that claim 3 was valid and covered the ferry, but found no infringement because section 60(5)(d) of the Patents Act 1977 applied: [2002] EWHC 737 (Ch); [2002] RPC 50.

Stena appealed on the statutory defence and claim construction. Irish Ferries cross-appealed on obviousness. The central issues were whether regular, repeated voyages constituted temporary entry into UK territorial waters, whether the exception applied where the claim described the vessel as a whole, and whether claim 3 was obvious over prior art and common general knowledge.

The Court of Appeal unanimously dismissed both Stena’s appeal and Irish Ferries’ cross-appeal. Lord Justice Aldous gave the principal judgment. Lord Justice Chadwick and Mr Justice Munby agreed; Chadwick LJ expressed reservations about validity but concluded that the judge had not erred in principle and was not plainly wrong.

1. Temporary entry. Section 60(5)(d) of the Patents Act 1977 must be construed in the context of Article 5 ter of the Paris Convention and the protection of international trade and carriage. Temporary means transient or for a limited period. The character of each entry does not depend on frequency, persistency or regularity. The Jonathan Swift’s scheduled crossings were each intended to last about three hours and were therefore temporary. British Road Services v Wurzal [1971] 1 WLR 1508 concerned different road-traffic regulations and did not govern the construction of the patent exception. The reasoning in Anthony J. Cali v Japan Airlines Inc 380 F. Supp 1120 (1974) was persuasive.
2. Scope of the exception. The statutory language should be given a purposive construction. It can apply where a claim is drafted to a vessel as a whole but the inventive concept is a feature located in the body of the ship. The relevant invention was the special strengthening design in part of the vessel, so section 60(5)(d) provided a defence.
3. Alternative claim construction. Although it was unnecessary to decide infringement once the defence applied, Aldous LJ held that the Jonathan Swift satisfied claim 3. Latticework beams need not be discrete prefabricated elements and could be made by welding metal or cutting metal from a sheet and adding flanges and channels. Claim 2 did not require direct connection under the Protocol on Interpretation. A window was a composite structure including glazing; the location of the glazing within or outside the aperture was immaterial.
4. Validity and obviousness. Under section 3 of the Patents Act 1977, obviousness was assessed at the priority date through the eyes of the suitably trained skilled person and by reference to common general knowledge, without hindsight. The skilled person was a naval architect with a practical interest in the subject matter, not necessarily prior experience in catamaran design. Latticework and diagonal bracing were well-known, but Martini (US Patent 522348) was remote from the claimed teaching and would require a wholesale redesign. It did not render claim 3 obvious.

The formal order was: appeal dismissed; cross-appeal dismissed.

• Court of Appeal (Civil Division): Dismissed Stena’s appeal and Irish Ferries’ cross-appeal.
• Chancery Division: Mr Justice Laddie held claim 3 valid and applicable to the Jonathan Swift, but found no infringement because section 60(5)(d) of the Patents Act 1977 applied: [2002] EWHC 737 (Ch); [2002] RPC 50.