Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd & Ors

The Court of Appeal dismissed all appeals. The court construed the amended claim language of European patent EP (UK) 1 495 908 and held that the claimed generally triangular passenger support element must be a discrete element disposed in the rearward space behind the seat and presented to the passenger so as to be substantially coplanar with the passenger-bearing surfaces when the seat is in bed mode. Applying that construction, the court held the Zodiac "Solar Eclipse" product did not infringe the 908 patent. The court also held that, had the product infringed, the amended claim would have introduced added matter and so would have been invalid.

In relation to EP (UK) 2 289 734 the court rejected Zodiac’s attack: the patent was not obvious over the BA First application or the common general knowledge and was not invalid for added matter. Finally, the court held that challenges to the UK designation of the 908 patent based on the EPO examination process were not justiciable in domestic infringement proceedings: the European Patent Convention and the Patents Act 1977 limit the grounds on which validity can be put in issue and Article 6 ECHR did not require English courts to entertain a collateral challenge to EPO designation decisions in the circumstances of this case.

The appeal arose from a set of related actions in which Virgin sued airlines (Jet Airways, Delta Air Lines, Air Canada) and the seat manufacturer Zodiac for infringement or threat of infringement of European patents relating to Virgin’s Upper Class Suite seating system. Floyd J in the Patents Court ([2012] EWHC 2153 (Pat)) held that the 908 patent, as amended, was valid but not infringed and that the 734 patent was valid and threatened to be infringed by Zodiac. The Patents Court also dismissed an appeal/claim that the UK had not been validly designated for the 908 patent. Each side appealed.

Nature of the proceedings:

• Virgin sought relief for infringement of EP (UK) 1 495 908 and declaratory relief/threatened infringement in relation to related patents (711 and 734).
• Zodiac and the airlines defended on construction/novelty/obviousness/added-matter grounds and pleaded that the 908 grant was a nullity in so far as it purported to designate the United Kingdom.
• Premium (a former Zodiac group company) sought correction of the UK register under Rule 50 Patents Rules 2007 on non-designation grounds.

Issues framed:

• Construction and infringement of the amended claim 1 of the 908 patent (in particular whether the triangular passenger support element could be formed by the headrest, the rear console, or a combination).
• Whether, if the 908 patent were infringed, the amended claim introduced added matter.
• Validity of the 734 patent for obviousness over the BA First application and common general knowledge, and for added matter.
• Whether English courts may entertain a collateral challenge to the UK designation of a European patent granted by the EPO, and whether Article 6 ECHR required such a challenge to be permitted.

Court’s reasoning and conclusion on key issues:

• Claim construction followed the purposive approach (Kirin-Amgen): integer 21 requires a passenger support element distinct from the movable passenger-bearing elements; it must occupy the rearward space and be substantially coplanar with the bed surface actually presented to a passenger when in bed mode. The court rejected constructions that would treat part of a movable element (the headrest) as the separate support element because an element cannot be substantially coplanar with itself and because the specification describes a distinct passenger-supporting element.
• The rear console did not satisfy the coplanarity requirement because the specification and claims refer to the surfaces presented to the passenger (upper surfaces) being coplanar; the console’s upper surface did not lie substantially coplanar with the movable bed surfaces. The console also did not amount to the triangular passenger support element described by the patent because only part of the console ever provided support and the whole triangular support element of the invention was available for passenger support.
• Accordingly the Solar Eclipse did not infringe the 908 patent. Separately, the court held that if the amended claim were read so as not to require a support element to be behind the seat at all times then that amendment would introduce added matter not disclosed in the application as filed, so the amendment would be invalid.
• The 734 patent was not shown to be obvious over the BA First application or common general knowledge, and was not invalid for added matter; the specification and claims disclosed space-packing (use of the rearward space) independently of the passenger support element.
• On non-designation the court analysed the EPC, the role of the EPO and the 1977 Act (notably ss. 77, 72 and 74) and concluded that challenges to the grant arising from procedural errors in EPO examination are not generally open to third parties in domestic infringement proceedings because the domestic scheme follows the EPC and limits the grounds for putting validity in issue. The court further considered Convention jurisprudence (Bosphorus and subsequent authorities) and concluded that Article 6 did not require English courts to provide a remedy in the present circumstances beyond the procedural protection already available under the EPC and domestic law. For those reasons the non-designation defences failed.

The appeals were dismissed. The court held that (i) EP (UK) 1 495 908, as amended, was not infringed by the Zodiac Solar Eclipse product because the claimed triangular passenger support element must be a discrete element in the rearward space substantially coplanar with the passenger-bearing bed surface and the Solar Eclipse did not meet that construction; (ii) had the Solar Eclipse infringed, the amended claim would have introduced added matter and been invalid; (iii) EP (UK) 2 289 734 was not shown to be invalid for obviousness or added matter; and (iv) challenges to the UK designation of a European patent based on the EPO examination process are not justiciable in the domestic infringement context under the EPC and the Patents Act 1977, and Article 6 ECHR did not require a different outcome in the circumstances of this case.

The judge below was Floyd J in the High Court, Chancery Division (Patents Court) ([2012] EWHC 2153 (Pat)). The dispute has an earlier history: the Contour action was tried by Lewison J ([2009] EWHC 26), reversed on appeal by this Court ([2009] EWCA Civ 1062). The 908 patent was subject to opposition and amendment before the European Patent Office, including a decision of the Technical Board of Appeal in September 2010 maintaining the patent with amended claims; the Supreme Court later decided the Unilin point in [2013] UKSC 46. The present appeals were heard in the Court of Appeal and dismissed on 20 December 2013 ([2013] EWCA Civ 1713).