Sabaf SpA (a company incorporated under the laws of Italy) (Respondents) v. MFI Furniture Centres Limited and others (Appellants)Sabaf SpA (a company incorporated under the laws of Italy) (Appellants) v. MFI Furniture Centres Limited and others (Respondents)(Conjoined Appeals)

A patent claim containing several features must first be analysed to determine whether they form one invention. Features constitute a single invention where their functional interaction produces a combined or synergistic effect. If each performs its function independently, each is a separate alleged invention whose obviousness must be assessed separately under section 3 of the Patents Act 1977. It is then unnecessary to ask whether combining the independently obvious features was itself obvious.

A foreign seller does not import a product merely by arranging transport to the United Kingdom on behalf of the buyer who already owns and imports it. The identity of the importer depends on the substance of the transaction, rather than solely on the technical form of the carriage contract.

SABAF owned a United Kingdom patent for a compact gas burner which combined an above-hob air intake with a radial Venturi. It alleged that Meneghetti had infringed the patent by supplying products to MFI. Meneghetti denied infringement and counterclaimed for a declaration that the patent was invalid for obviousness.

Laddie J held that the products had been imported by Meneghetti but that the patent was invalid. The Court of Appeal, in [2002] EWCA Civ 976; [2003] RPC 264, held that the patent was valid but that Meneghetti had not imported the products.

The conjoined appeals concerned whether independently functioning features had to be assessed separately for obviousness and whether a foreign seller became an importer by arranging carriage of goods already owned by the United Kingdom buyer.

1. Appeal allowed and cross-appeal dismissed. Lord Hoffmann delivered the leading speech. Lord Nicholls, Lord Hope, Baroness Hale and Lord Brown agreed with his reasons. The House unanimously declared that the patent had always been invalid and upheld the conclusion that infringement by Meneghetti had not been established.

2. Per Lord Hoffmann, the so-called law of collocation is neither a gloss upon nor an exception to section 3 of the Patents Act 1977. Before applying the statutory test of obviousness, the court must identify the invention. Two features do not become one invention merely because they appear in the same item of hardware.

3. Features form a single invention where they interact functionally or produce a synergistic combined effect. The obviousness inquiry then applies to the idea of combining them. Where each feature performs its proper function independently, each amounts to a separate alleged invention and must satisfy section 3 separately. Section 14(5)(d) of the Act and article 82 of the European Patent Convention supported that understanding of a single inventive concept.

4. Laddie J had correctly applied those principles and the structured approach in Windsurfing. The above-hob air intake and radial Venturi did not affect one another. Each was obvious in the light of the relevant prior art and common general knowledge. The proposed three-part arrangement supplied no additional inventive concept. The Court of Appeal had therefore erred by asking whether it was obvious to combine the two independently functioning features.

5. Although unnecessary after the finding of invalidity, Lord Hoffmann addressed infringement because the issue had wider significance. Meneghetti did not itself import the products under section 60(1) merely by arranging their carriage on MFI's behalf after ownership had passed in Italy. MFI was the owner, consignee and importer. The conclusion did not turn solely on the technical identity of the contracting party under the carriage contract.

6. A seller may nevertheless be the importer where the buyer imports into another country and the goods pass through the United Kingdom entirely through the seller's acts. Authorities concerning wider statutory language or secondary liability for another person's importation did not establish that both buyer and seller were importers.

1. House of Lords: Allowed the appeal against the finding of validity, declared the patent always to have been invalid, and dismissed SABAF's cross-appeal concerning infringement.

2. Court of Appeal: In [2002] EWCA Civ 976; [2003] RPC 264, held that the patent was valid but that Meneghetti had not imported the products.

3. High Court: Laddie J held that Meneghetti had imported the products but that the patent was invalid for obviousness.