Agilent Technologies Deutschland GmbH v Waters Ltd

For an apparatus claim, the requirement that control means adjust a component in response to a selected parameter is not met where the operator independently selects both variables. The required response must be performed by the control means; the operator is not part of it. A description of circuitry permitting decoupling of an otherwise automatic relationship does not encompass a device lacking any capacity for that relationship. A device capable of manual operation is distinct from one operating only manually. The appeal was dismissed because the manual pumping device fell outside the patent claim.

Agilent sued Waters for infringement of EP (UK) 0 309 596. In earlier proceedings, the Court of Appeal held that an automatic version of Waters’ device infringed and that the patent was valid: [2002] EWCA Civ 612. Waters then modified the device. Pumfrey J held that the modified manual device did not infringe because it lay outside the patent’s scope: [2004] EWHC 2992 (Ch).

Agilent appealed. The central issue was whether claim 1, properly construed, covered a device in which the operator independently selected flow rate and stroke length without automatic coupling between them.

Disposition

Lord Justice Jacob gave the principal judgment. Lord Justice Neuberger and Lord Justice Ward agreed. The appeal was dismissed.

1. Claim 1 required the claimed control means, rather than the operator, to adjust the pistons’ stroke length in response to the desired flow rate. The words were not satisfied merely because the apparatus was capable of adjusting stroke length. The operator was not part of the claim’s control means.

2. The relevant specification passage described an otherwise automatic system in which the control circuitry could put the coupling between flow rate and stroke volume out of action, permitting free selection of stroke length or volume. That disclosure contemplated a device capable of decoupling an automatic relationship. It did not contemplate a device in which the operator had to enter flow rate and stroke length independently and which had no circuitry capable of coupling them.

3. The distinction was analogous to an automatic gearbox with a manual mode, which is different from a gearbox having only manual operation. The modified Waters device operated only manually and therefore lacked the response required by the claim. It did not infringe.

4. Waters had raised estoppel defences conditionally, but the court did not hear full argument on them because the construction issue disposed of the appeal. No determination of those defences was necessary.

• Court of Appeal (Civil Division): dismissed Agilent’s appeal, holding that the modified manual device did not fall within claim 1 of the patent: [2005] EWCA Civ 987.
• High Court of Justice (Chancery Division): Pumfrey J held that the modified manual device did not infringe because it was outside the patent’s scope: [2004] EWHC 2992 (Ch).
• Earlier Court of Appeal proceedings: the court had held that an earlier automatic version of the device infringed and that the patent was valid: [2002] EWCA Civ 612.