Ferag Ag v Muller Martini Ltd.

Patent claims are construed purposively in the context of the specification, drawings and common general knowledge, while giving effect to deliberate claim limitations. Anticipation requires both disclosure and enablement. The prior art must contain clear and unmistakable directions to perform what is claimed; an obvious route towards the invention is insufficient for anticipation.

For obviousness, the court identifies the inventive concept, the skilled person and common general knowledge, the differences from the prior art, and whether those differences require invention. A component may perform several functions, including serving both as a clamp and a counterknife. A knife mechanism may remain fixed overall even though its blade oscillates or rotates.

Ferag alleged that Müller Martini’s NewsTrim machine infringed a European patent concerning continuous cutting or trimming of printed products. Müller Martini denied infringement and challenged validity on the grounds of lack of novelty and obviousness, relying principally on Stobb and Rösner.

Ferag sought amendments to claim 1. The court considered objections based on clarity and additional matter, construed the disputed claim phrases, assessed whether Stobb or Rösner anticipated the claim, and then considered obviousness over Stobb. It also determined whether NewsTrim satisfied the requirements of physical association and substantially identical velocity.

1. Construction and amendment. The claims were construed purposively by reference to their language, the specification, drawings and the skilled addressee’s common general knowledge. The expression “jointly associated” required a physical association lasting beyond the instant of cutting. The first knife part and product had to travel together at substantially the same speed and in the same direction before and through the cut. “Moved past” required movement past the second knife for the purpose of bringing the parts into cutting engagement. “Fixed” referred to the cutting mechanism as a whole, so it could include a rotary or oscillating blade mounted in a fixed overall location. “Intended cutting edge” meant the whole length of the uncut product edge. The amended claim was sufficiently clear and did not add matter.
2. Novelty. Stobb disclosed a counterknife. Its clamp member could perform both clamping and counterknife functions, and the schematic disclosure permitted the skilled person to make ordinary engineering adaptations. Stobb nevertheless did not disclose cutting along the whole length of an uncut edge and therefore did not anticipate. Rösner disclosed a knife mechanism fixed overall, but the book block and lower knife did not move wholly past the upper knife in order to bring the knives into engagement. It also did not anticipate.
3. Obviousness. The inventive concept was the separation of knife and counterknife, with the counterknife travelling with the printed product while the other knife remained fixed overall. The differences between Stobb and the claimed invention, including a counterknife, end-to-end cutting, displaced cutting stations and suitable blade or conveying arrangements, were inherent, obvious or routine workshop modifications. Considered singly or cumulatively, they required no invention.
4. Infringement. NewsTrim’s counterknife was not physically associated with the printed product and did not travel with it at substantially the same velocity except at the precise instant of cutting. Claim 1 was therefore not infringed.
5. Claim 1, in both unamended and amended forms, was invalid for obviousness. If valid, it was not infringed. The dependent claims and claim 9 were also held invalid, subject to the precise consequential order being considered with counsel.

First-instance judgment in the High Court (Chancery Division), Patents Court. No appellate history is stated in the judgment.