W L Gore & Associates GmbH v Geox SPA

Patent claims must be construed according to what the skilled person would understand the patentee to mean in context. A “mid-sole” may include the membrane and protective layer positioned between the insole and tread. A filler layer is not subject to an unstated thickness or structural requirement. A perimetric seal must surround the breathable area and prevent water from bypassing the membrane and wicking into the upper or shoe interior. For a product-and-process description supporting a declaration of non-infringement, the description must provide precise technical facts, not argumentative conclusions. Obviousness is assessed without hindsight by identifying the skilled person, common general knowledge, inventive concept, differences from the prior art and whether those differences require invention.

The claimant sought declarations of non-infringement and revocation of four patents concerning waterproof and breathable footwear. The trial concerned the validity of EP (UK) 0 858 270 and EP (UK) 1 185 183, infringement of the former by a cemented shoe design, and infringement of the latter by an injected shoe design. The court construed the disputed claim terms, assessed the product and process descriptions, and considered obviousness over Kozaki, Polegato and Regal. The central issues were whether the described products necessarily lacked the claimed sealing and assembly features, and whether the claimed arrangements and manufacturing method were obvious.

1. Construction of 270. The term “mid-sole” was construed in the context of the patent and covered the membrane and protective layer positioned between the insole and tread. “Membrane” was not limited to a two- or three-layer GORE-TEX laminate. “Connected with” required an arrangement which protected the membrane, without requiring a unitary element. “Filler layer” required only a vapour-permeable or perforated layer between the insole and membrane; no dimensional or structural limitation could be imported.

2. The required perimetric seal had to extend around the breathable area while leaving that area free. It had to involve the lower part of the upper, the mid-sole incorporating the membrane and the tread, and prevent moisture from bypassing the membrane and either wicking into the upper or reaching the shoe interior.

3. Construction of 183. A “unitary upper assembly” required the upper, membrane and protective element to be held together as a unit before attachment to the perforated elastomer sole. Merely holding those components together in a mould during injection did not satisfy the claim.

4. The cemented product description encompassed materials and adhesive conditions capable of forming the required seal through the intermediate textile layer. The conclusory assertion that no perimetric waterproof seal was formed was argumentative and could not determine the technical scope of the declaration. The declaration of non-infringement was therefore refused for that design, assuming validity.

5. The injected design lacked the required unitary upper assembly and therefore did not infringe 183. The patent was valid.

6. Applying the Pozzoli v BDMO SA approach, claims 1 of both patents were not obvious. Kozaki did not disclose the claimed arrangement or teach the necessary sealing and two-stage assembly. Polegato did not make the addition of a protective layer obvious. Regal did not suggest the claimed unitary upper assembly or the proposed single-moulding modification.

7. Patent 270 was valid, but Gore failed to establish non-infringement by everything within the cemented product description. Patent 183 was valid and not infringed by the injected design. Gore was entitled to a declaration limited to that injected design.