W L Gore & Associates GmbH v Geox SPA

Patent claims are construed by asking what the skilled person would understand the patentee to mean from the claim’s context, including the description and drawings. Where terms lack a recognised technical meaning, the court determines their meaning; schematic drawings do not justify importing dimensional limits without textual support. In a breathable-shoe patent, a filler layer meant a spacer between insole and membrane. It did not need to fill a separate cavity, perform a bottom-filler function, or vary with the shoe’s construction. A mid-sole comprised the part beneath the insole and above the tread, without a height-based limitation. In a process claim, a unitary upper assembly meant a complete, free-standing assembly before it was joined to the sole. Components merely held together in an injection mould did not satisfy that requirement.

The appeal and cross-appeal arose from Floyd J’s judgment in High Court claim HC 07 C 02572 concerning two Geox patents for breathable footwear: EP (UK) 0 858 270 and EP (UK) 1 185 183.

The judge held both patents valid, refused a declaration that Gore’s cemented shoe did not infringe the first patent, and granted a declaration that Gore’s injected shoe did not infringe the second. Gore appealed the refusal of the first declaration; its validity appeals were not pursued. Geox cross-appealed the second declaration. The central issues were the construction of filler layer and mid-sole in the first patent, and unitary upper assembly in the second.

The Court of Appeal unanimously dismissed Gore’s appeal and Geox’s cross-appeal. Floyd J was correct in all respects.

1. Construction of the claims. The court applied the principle in Kirin Amgen v TKT [2005] RPC 9: the task is to determine what the skilled person would understand the patentee to mean by the language of the claim. Where the terms have no precise technical meaning, their meaning is gathered from the context of the patent, including its description and drawings, as required by Art. 69 of the EPC. The court ultimately determines the meaning. Drawings agreed to be schematic and not to scale cannot justify importing dimensional or relative dimensional limitations without a basis in the claim or specification.
2. Patent ‘270. Filler layer meant a spacer between the insole and the membrane. It did not need to be thick enough to operate as a bottom filler, fill a separate cavity, prevent injected material from reaching the membrane, or perform different functions according to whether the shoe was cemented or injection moulded. A commercially available Gore-tex laminate did not alter the construction: the membrane was the actual waterproof and vapour-permeable material, while any protective layer was distinct. Mid-sole meant the part of the shoe underneath the insole and above the tread. It was not limited by the height of the upper or by the lasting margin. A Gore-tex bootie was not excluded where the remaining claimed arrangement was present.
3. Patent ‘183. Unitary upper assembly meant a complete whole, held together as a free-standing assembly before being brought into contact with the perforated elastomer sole. Components merely held together in an injection mould did not satisfy that requirement. The same meaning applied to cemented and injection-moulded shoes because the patent gave no contrary indication. The specification’s descriptions supported a pre-assembled upper, including the protective element being associated with it before the sole was joined.
4. The suggested alternative concerning the protective layer’s classification in the mould did not require determination. The declarations and findings below therefore stood.

• Court of Appeal (Civil Division): In [2009] EWCA Civ 794, Gore’s appeal and Geox’s cross-appeal were dismissed.
• High Court of Justice, Chancery Division (Patents Court): Floyd J’s judgment of 7 October 2008 held both patents valid, refused a declaration of non-infringement for the cemented shoe under patent ‘270, and granted a declaration of non-infringement for the injected shoe under patent ‘183. An order followed on 31 October 2008.