Fabio Perini Spa v LPC Group Plc & Ors

Patent method claims should be construed by their natural meaning read in context. Apparatus embodiments do not automatically limit a distinct method claim. A broad claim is not insufficient merely because the disclosed principle may be implemented by different mechanisms. Obviousness must be assessed without hindsight; the fact that individual modifications appear obvious does not make their combination obvious. A supplier may become a joint tortfeasor where its contractual conduct forms part of a common design to enable infringing use, although sale or export alone ordinarily does not suffice. Appellate courts should respect trial findings on obviousness and costs unless there is an error in principle.

The proceedings concerned two patents for machinery and methods used to seal the loose ends of paper rolls. Perini alleged that machines supplied and used by the defendants infringed claims 16 and 17 of the 929 Patent and challenged the validity of the 168 Patent.

Floyd J held that the 929 Patent was valid and infringed by the Original and Proposed Rotoseals, that the 168 Patent was invalid for obviousness over the Casper memorandum, and that PCMC Italia was jointly liable with LPC UK. His decision is reported at [2009] EWHC 1929 (Pat). The appeal and cross-appeal raised issues of claim construction, sufficiency, obviousness, joint tortfeasor liability and costs.

Disposition. The appeal and cross-appeal were dismissed. The Court of Appeal upheld the validity of the 929 Patent, infringement by the Original Rotoseal and the Proposed Rotoseal, invalidity of the 168 Patent, and the allocation of liability and costs made below.

1. Construction of the 929 Patent. Claim 16 was a method claim distinct from the apparatus claims. The word slit meant a long narrow opening in its context. It was not confined to an opening between inclined plates forming a nozzle. The reference to figure 63 did not impose that limitation. The words from which the glue is dispensed required glue to pass through the slit, but did not require the slit itself to participate in dispensing or require dispensing by overflow. Nor did rolling over the slit have to be the sole mechanism applying the glue. A log rolling over the slit while glue passed through it could infringe even where the glue was carried by a moving wire. The Original and Proposed Rotoseals therefore infringed claims 16 and 17.
2. Validity. The 929 Patent disclosed a principle capable of general application, so the breadth of the method claims did not make it insufficient. The attack based on Biogen v Medeva [1997] RPC 1 failed. The obviousness attack based on the 562 Patent failed because it depended on hindsight and on treating a series of modifications as cumulatively obvious. The new obviousness argument based on the 445 Patent was unsupported by expert evidence or a trial finding and did not establish obviousness.
3. The 168 Patent. The Casper memorandum disclosed a moving glue bar applying glue through a slot. It was obvious to develop that disclosure by using the bar while the log continued to roll. The 168 Patent was therefore invalid for obviousness.
4. Liability and costs. Applying the common-design approach in Unilever v Gillette [1989] RPC 583, PCMC Italia’s contractual installation, start-up supervision and training formed part of a design to enable the infringing use and made it jointly liable with LPC UK. Mere reference to PCMC UK in the contract did not discharge Perini’s burden of proving its liability. The costs decision was within the trial judge’s discretion and remained on the standard basis.

1. Court of Appeal (Civil Division). The appeal and cross-appeal were dismissed, with the High Court’s substantive findings and standard-basis costs order upheld.
2. High Court, Chancery Division (Patents Court). Floyd J decided the patent dispute in [2009] EWHC 1929 (Pat), holding the 929 Patent valid and infringed, the 168 Patent invalid for obviousness, and PCMC Italia jointly liable with LPC UK.