Schenck Rotec GmbH v Universal Balancing Limited

In a European patent product claim, functional wording such as “constructed to receive” ordinarily describes capability, not the designer’s intention. The claimed apparatus must be capable of performing the function without modification and must work in practice, but it need not meet an unclaimed service-life or performance standard.

For novelty, prior art must disclose subject matter falling within the claim and enable the skilled person to perform it. A machine capable of carrying multiple weights does not anticipate a claim unless the relevant gripper-like device, rather than the machine generally, can carry the plurality at the same time.

For inventive step, the Pozzoli structured approach must be applied without hindsight. A pre-existing machine and evidence that a modification was technically easy do not establish obviousness without a reason why the skilled person would have made that modification.

Schenck Rotec GmbH, proprietor of European Patent (UK) No 1 520 161, claimed infringement by Universal Balancing Limited’s KISS-234 balancing machine. Universal Balancing counterclaimed for revocation, relying principally on the BMW patent application, the Green Machine, the 1999 Machine and a GKN Land Rover Freelander drawing.

The dispute concerned the construction and validity of claims relating to a gripper-like device capable of receiving multiple balancing weights, including the requirements for novelty and inventive step. It also concerned infringement by the KISS-234, a possible defence under section 64 of the Patents Act 1977, and the restriction on damages under section 62(1).

1. Validity. The patent claims were valid. The court construed “constructed to receive” as requiring the gripper-like device to be physically capable of carrying a plurality of weights at the same time, without modification. It was not a reference to anyone’s intention, and the claim did not require the weights to be loaded individually or the apparatus to meet a specified service-life standard.
2. Novelty. Under sections 1(1)(a) and 2 of the Patents Act 1977, and applying the disclosure and enablement requirements, none of the cited prior art disclosed the claimed combination. The BMW application disclosed a machine which supplied one weight at a time to the gripper-like device. The Green Machine and 1999 Machine could physically receive stacked weights, but the evidence did not establish that they had been used for all-at-once projection welding, or that an unmodified machine would produce a satisfactory welded stack.
3. Inventive step. Applying the structured approach in Windsurfing International Inc v Tabur Marine and Pozzoli v BDMO, it was not obvious either to adapt the 1999 Machine for all-at-once projection-welding of stacked weights or to provide two lower weld blocks. Technical simplicity after the inventive concept had been identified did not supply a reason to make the modification.
4. Infringement. The KISS-234 infringed claims 1, 7 and 9. Two lower electrodes enabled the gripper-like device to receive multiple weights. The unitary braided upper electrode contained distinct counter elements corresponding to the two lower receivers; the counter elements need not be separate pieces of metal. Vector splitting also fell within claim 9. Supply of the machine with vector-splitting software and a mounting plate capable of accommodating two lower electrodes infringed under section 60(2).
5. Defences and order. The section 64 defence failed. The Green Machine was outside the claims and did not constitute effective and serious preparations for making or selling the materially different KISS-234. Universal Balancing established the section 62(1) defence only for infringements before the July 2010 meeting at which the patent was raised. The patent was valid and infringed; there was no section 64 defence.