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

A patent claim is construed contextually through the eyes of the skilled person. The governing question is what that person would understand the claim language to mean, having read it with the description, drawings and common general knowledge.

A design is not commonplace merely because it was previously available to the public. The relevant field encompasses designs familiar to the notional designer of the article, and commonplace material must be ready to hand. Unregistered design right may subsist in an original assembly even if its individual components are commonplace.

An undertaking under section 239 of the Copyright, Designs and Patents Act 1988 may be given after the design right has expired, provided it is given before the final order.

Ultraframe claimed that Eurocell's conservatory-roof system infringed a patent and unregistered design rights in panels, components and the assembled roof. Eurocell counterclaimed for revocation of the patent.

Lewison J, in [2004] 1785 EWHC (Ch), held that the patent was valid but not infringed. He found no infringement of design right in the components, but held that the panels and complete assembly infringed. In a supplementary judgment he accepted a section 239 undertaking limiting the monetary remedy, although the design right had expired.

Ultraframe appealed against the patent construction and the section 239 ruling. Eurocell cross-appealed against the design-right findings and conditionally challenged patent validity. The central questions concerned patent claim construction, validity, the meaning of the relevant design field, protection of an assembly, and the availability of a section 239 undertaking after expiry.

1. Appeal allowed in part; cross-appeal dismissed. By a majority, Mummery and Jacob LJJ held that the patent was valid and infringed. Neuberger LJ dissented on patent infringement. All three judges upheld the findings concerning unregistered design right and the section 239 undertaking.
2. Jacob LJ applied the construction approach stated in Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46. The single governing inquiry was what the skilled person would understand the claim language to mean when read with the description, drawings and relevant common general knowledge. The Protocol questions might assist, but could create unnecessary difficulties.
3. The skilled person would understand the claimed lower coupling formations to “interengage” where they abutted and were held together by the stiffening member. Prior interlocking or partial restraint was not required. The words still limited the claim by requiring formations on the lower coupling members and requiring those members to be held together by the stiffener. Eurocell's product therefore infringed. The prior patent did not anticipate or render the claim obvious because its lower members were held together by hooks rather than by the stiffener.
4. Neuberger LJ considered that “interengage” required more than contact. In his view, the natural language, description, preferred embodiment and drawings indicated an interconnection before the stiffening member was introduced. He would therefore have dismissed the patent appeal.
5. The judge had defined the “design field in question” too narrowly under section 213(4) of the Copyright, Designs and Patents Act 1988. The inquiry concerns designs with which the notional designer of the relevant article would be familiar. Nevertheless, the panels were not commonplace even in the wider field. Prior availability alone was insufficient; a commonplace design would be ready to hand.
6. The trial judge's evaluative finding that the competing panel was made substantially to the protected design disclosed no basis for appellate interference. Design right could also subsist in the assembled roof. Its conception involved skill and labour directed to the whole, even on the assumption that individual components were commonplace. The conflicting authorities concerning the “must-fit” exception did not require resolution because protection of the assembly did not depend solely on its interconnections.
7. Per Neuberger LJ, with whom Mummery and Jacob LJJ agreed, section 239 could be invoked after expiry of the design right. It concerns an undertaking to take a hypothetical licence and limits remedies, including retrospectively calculated damages. It does not require an extant licence or completion of the section 247 machinery. The undertaking could therefore be accepted before the final order despite expiry of the right.

1. Court of Appeal (Civil Division): By [2005] EWCA Civ 761, allowed Ultraframe's appeal on patent infringement by a majority, dismissed its appeal concerning section 239, and dismissed Eurocell's cross-appeal concerning unregistered design right and conditional challenge to patent validity.
2. High Court, Chancery Division (Patents Court): Lewison J, in [2004] 1785 EWHC (Ch), held the patent valid but not infringed, found infringement of unregistered design right in the panels and assembled product, and subsequently accepted Eurocell's section 239 undertaking after expiry of the design right.