Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd & Anor

A patent claim must be interpreted objectively through the eyes of the skilled addressee, read as a whole and in accordance with the Protocol on the Interpretation of Article 69 of the European Patent Convention. The court must balance fair protection for the patentee with reasonable certainty for third parties. An integer following “wherein” is not to be disregarded merely because it appears immaterial to the inventive concept.

For design right, originality is assessed for the design as a whole, although individual features may be commonplace or excluded by the “must fit” and “must match” provisions. A design may be copied substantially at the level of an overall assembly even though individual components, considered separately, are not infringements.

Ultraframe manufactured modular conservatory roofing systems, including the Ultralite 500 system. Eurocell developed and marketed the competing Pinnacle 500 system after examining Ultraframe’s product.

Ultraframe alleged patent infringement and infringement of design right in the Ultralite 500 system, its panels and components. Eurocell denied infringement and counterclaimed for revocation of the patent on grounds of lack of novelty and obviousness. The principal questions were the proper construction and validity of the patent, and whether the competing system reproduced protected designs substantially.

1. Patent construction. The patent was to be interpreted objectively through the eyes of the skilled addressee, equipped with the relevant common general knowledge. The claim, specification and drawings had to be read together, while giving primacy to the language of the claim and maintaining the balance required by the Protocol on the Interpretation of Article 69 of the European Patent Convention.
2. The words “interengage” and “held together” in claim 1 indicated that the lower coupling members had to interlock or at least partially restrain movement before the stiffening member was inserted. The stiffening member therefore had a static holding function, rather than an active function of bringing wholly unconnected panels together. The disputed integers could not be struck out merely because they appeared not to affect the inventive concept.
3. Applying the Protocol questions, the absence of preliminary restraint in Pinnacle 500 did not materially affect how the invention worked, and that fact would have been obvious to the skilled reader. However, the language of the claim showed that strict compliance with the disputed integers was intended to be essential. Pinnacle 500 therefore fell outside the patent monopoly and did not infringe.
4. The patent was novel. The prior publications did not contain clear and unmistakable directions to use the stiffening beam to provide lateral restraint or to fit the panels together by horizontal movement alone. The patent also involved an inventive step because that function of the stiffening beam was not obvious.
5. Design right. The Ultralite 500 assembly was original in the copyright sense and was not commonplace in the relevant design field. Pinnacle 500 had been copied from it, apart from the top caps, and was substantially the same when viewed by the intended users. It therefore infringed design right in the assembly as a whole.
6. The Ultralite 500 panel, considered as a whole and in combination with its distinctive features, was also original and not commonplace. Pinnacle 500 reproduced it substantially. The coupling members and U-shaped channels were excluded by the “must fit” exception.
7. The 1995 redesign did not create a new design right in the assembly as a whole, and did not create new design right in the panel features. The top caps and end caps, considered individually, were not reproduced substantially and were not infringed. The claim succeeded only to the extent stated in the conclusions.

First-instance judgment. No prior appellate decision is stated in the judgment.