Burnden Group Plc v Ultraframe (UK) Ltd & Anor

A patent claim is construed purposively and contextually through the eyes of the skilled addressee. A specific embodiment or incidental manufacturing benefit does not add a limitation which the claim language does not express. A channel adapted to receive a screw or other fixing means is not confined to a fixing means wholly contained within the channel or to a screw requiring no pilot hole. Prior art falling within the properly construed claim and providing the claimed pivoting flexibility destroys novelty. On an assumed narrower construction, adapting the prior-art channel or using a known alternative fixing means may be an obvious workshop variant. The appeal was dismissed.

The appeal arose from two related patent actions in the Patents County Court. Burnden challenged findings concerning UK Patent 2,259,926, the Scholes patent, while the defendants sought its revocation for lack of novelty and obviousness based on the Scope/Sundale and System 10 conservatory systems. HHJ Fysh QC, in a judgment dated 16 September 2004, held the patent invalid. On appeal, claim 1’s invalidity was accepted and the dispute focused on claim 7, which depended on claim 1. The central questions were whether claim 7 required the fixing means to remain wholly within its channel and, if the claim was valid, whether infringement arose. Having upheld invalidity, the court did not hear the infringement cross-appeal.

Lord Justice Jacob gave the leading judgment. Lord Justices Chadwick and Kennedy agreed.

1. Disposition. The Court of Appeal held that HHJ Fysh QC was right to find the Scholes patent invalid and dismissed the appeal. Once validity had been decided, the court did not hear argument on the cross-appeal concerning infringement.
2. Expert evidence. The trial judge’s preference for Mr Emsley’s evidence was soundly based on the depth and quality of his explanation. The relevant consideration was the reasons supporting an expert’s opinion, rather than the expert’s personal ingenuity. The court applied the approach discussed in Technip France’s Patent [2004] RPC 46.
3. Construction. Claim 7 was not limited to a fixing means wholly contained within the channel. Whether a channel was adapted to receive a fixing means depended on the channel and on the unspecified fixing means used. The description of continuous screw access without pilot holes concerned a specific embodiment and did not impose an additional claim limitation. The central concept was flexibility achieved by pivoting about the securing point.
4. Novelty. The Scope/Sundale device used a groove containing a glazing seal and self-tapping screws. Although the screws engaged a tapped hole at the bottom of the groove, the device provided the claimed flexibility. On the proper construction, it fell within claim 7 and destroyed its novelty. Claim 1’s invalidity was accepted.
5. Obviousness. The court addressed obviousness only because it had been argued. Assuming the narrower construction, modifying the Scope channel so that the screw could engage it, or using a captivated bolt, would have been obvious in light of common general knowledge. The same channel already accommodated the fixing and the seal in Scope. The use of another known fixing means was therefore a self-evident workshop variant. The approach was consistent with the structured analysis in Windsurfing International v Tabur Marine Ltd [1985] RPC 59.
6. Appellate review. The Court of Appeal could interfere with the finding on obviousness only for an error of principle. No such error was shown; indeed, a contrary conclusion would have been perverse.

• Court of Appeal (Civil Division): On 20 July 2005, the court dismissed the appeal against the Patents County Court’s finding that the Scholes patent was invalid: [2005] EWCA Civ 867. The infringement cross-appeal was not argued.
• Patents County Court: HHJ Fysh QC, in a judgment dated 16 September 2004, held the Scholes patent invalid for lack of novelty and/or obviousness.