Unilin Beheer BV v Berry Floor NV & Ors (No. 2)

For the purposes of section 63(2) of the Patents Act 1977, reasonable skill and knowledge concerns relevant defects in framing a patent specification. Irrelevant and harmless material does not engage the provision, however extensive it may be. Residual material may be relevant if, through negligent drafting, it misleads a skilled reader or creates difficulty in interpreting the claims under Article 69 of the EPC. Where the alleged defect has no such effect, the court need not undertake a broader balancing exercise concerning the specification as a whole.

The patentees held a partially valid UK patent for a floor covering. After an earlier infringement and revocation dispute, claims 20 and 21 were held valid and infringed, and amendment of claim 1 was permitted. The patentees then sought damages and costs for past infringements. The defendants relied on section 63(2) of the Patents Act 1977, arguing that the specification had not been framed with reasonable skill and knowledge because passages concerning non-MDF/HDF materials and turn-fit connections remained after amendment. The Patents County Court found deficiencies in two passages but held that the specification as a whole met the statutory standard. The central issue was whether the alleged deficiencies were legally relevant to section 63(2).

Lord Justice Jacob gave the leading judgment. Lord Justice Neuberger and Lord Justice Mummery agreed. The appeal was dismissed.

1. Construction of section 63(2). The statutory requirement of reasonable skill and knowledge relates to the relevant work of framing a patent specification. That includes compliance with the EPC and the provision of accurate technical information. It does not require an irrelevant degree of perfection. Harmless material which has no legal or technical significance does not engage the statutory condition.
2. Relevance and claim interpretation. Residual passages may be relevant where, through negligent drafting, they mislead a skilled reader or create difficulty in determining the meaning of a claim. This follows because Article 69 of the EPC requires the description and drawings to be used in interpreting the claims. In the present case the claims remained clear and the passages could not mislead a skilled reader. The extent of the allegedly irrelevant material was therefore immaterial, and no wider balancing exercise was required.
3. Application to the specification. The passages describing turn-fit connections were not necessarily inconsistent with the claims, since the invention could include turn-fit connections on one pair of sides and snap-fit connections on the other. One passage suggested that snap-fit was optional, and the judge was entitled to regard that error as insufficient to defeat the statutory requirement. The appellate court would not interfere with that evaluative assessment unless it was plainly wrong.
4. Authorities. The approach in Kirin Amgen’s Patent [2002] EWHC 471, upheld by the Court of Appeal, was consistent with assessing the importance of the alleged defect and the specification as a whole where a relevant failure was established. Rediffusion Simulation v Link-Miles [1993] FSR 195 involved a negligent blunder producing a nonsense claim and a direct nexus between the amendment and the defect, and was materially different.

Obiter, the court questioned whether the statutory provisions should be reconsidered, noting that they restricted damages but not an account of profits and did not require reliance by the defendant. It also noted, without deciding, a possible issue under the Directive on the Enforcement of Intellectual Property Rights 2004/48/EC.

• Court of Appeal (Civil Division): The defendants’ appeal was dismissed. Lord Justice Jacob gave the leading judgment, with Lord Justice Neuberger and Lord Justice Mummery agreeing.
• Earlier Court of Appeal stage: The court had affirmed the findings on validity and infringement in [2004] EWCA Civ 1021.
• Central London County Court (Patents Court): David Young QC, sitting as a Judge of the Patents County Court, held on 23 March 2005 that two passages lacked reasonable skill but that the specification as a whole satisfied the statutory requirement.