Sabaf SpA v MFI Furniture Centres Ltd & Ors

Key points:

• The patent for a low‑height gas burner was held invalid for lack of inventive step under section 3 of the Patents Act 1977. The House of Lords agreed with the trial judge that the asserted invention in reality comprised two separate, independently functioning features (air intake from above the hob; a radial Venturi mixing arrangement) and that each feature was obvious in the light of the state of the art.
• The court endorsed the approach that, before applying the statutory test of inventive step, it is necessary to identify whether the claim discloses a single inventive concept or a mere collocation/aggregation of separately known features; if the features operate independently there is no synergy and each must pass the inventive‑step test separately.
• On infringement, the court held that the foreign manufacturer (Meneghetti) did not itself import the accused products into the United Kingdom by merely arranging carriage on behalf of the United Kingdom purchaser; the importer was the purchaser (MFI), and secondary liability based on common design was not made out on the facts.

This is a conjoined appeal concerning United Kingdom patent GB 2,100,411 for a gas burner. The patentees (Sabaf) alleged infringement by Meneghetti and sought relief for imports into the United Kingdom; Meneghetti counterclaimed for a declaration that the patent was invalid for obviousness.

Procedural history: At first instance Laddie J found Meneghetti had imported the products but declared the patent invalid for obviousness. The Court of Appeal reversed on validity (holding the patent valid) but found there had been no importation. The case came to the House of Lords by way of conjoined appeals (Court of Appeal: [2002] EWCA Civ 976).

Issues framed:

• Whether the patent involved an inventive step under section 3 of the Patents Act 1977, having regard to prior art disclosures (including publications and earlier designs showing air intake above the hob or radial Venturi arrangements); and
• Whether Meneghetti, a foreign manufacturer who arranged carriage of goods to the United Kingdom on behalf of its United Kingdom purchaser, could be treated as the importer for the purposes of patent infringement (section 60(1)).

Court’s reasoning and outcome on inventive step: The House of Lords adopted the analytical approach that the first task is to identify whether the claim embodies a single inventive concept or separate inventions. If separate features perform their functions independently and produce no synergistic effect, each must be assessed individually under section 3. The judge had correctly identified two distinct features (air intake from above; radial Venturi mixing under the flame spreader), and found relevant prior art teaching each feature separately (e.g., Energie Technik and Alpes‑Inox for air from above; Houdry and Zanussi for radial Venturi). Because there was no interaction producing a combined, non‑obvious effect, each feature was obvious and the patent lacked an inventive step.

Court’s reasoning and outcome on infringement/importation: The House of Lords held that arranging transport on behalf of the consignee did not make Meneghetti the importer. The carrier arrangements were made for MFI, the owner and consignee, and consequently MFI, not Meneghetti, was the importer. Earlier foreign decisions and foreign statutory formulations did not support treating the seller as importer under United Kingdom law. The court therefore dismissed the cross‑appeal on infringement.

The court therefore declared the patent invalid (always invalid) and dismissed the cross‑appeal on infringement.

Appeal allowed and cross‑appeal dismissed. The House of Lords held that the patent lacked an inventive step because the claimed features constituted separate, independently functioning integers (air intake from above the hob; radial Venturi mixing) each rendered obvious by the state of the art; there was no synergistic interaction producing a single inventive concept. On infringement, Meneghetti was not the importer of the accused goods because it merely arranged carriage on behalf of the consignee/owner (MFI), and secondary liability was not established.

First instance: trial before Laddie J (trial judge declared patent invalid). Court of Appeal: [2002] EWCA Civ 976; Court of Appeal held patent valid but found no importation. House of Lords: [2004] UKHL 45 (this decision) allowing the appeal and dismissing the cross‑appeal.