AP Racing Ltd v Alcon Components Ltd

A claim amended to express an invention more generally than the embodiments in the application does not necessarily add matter. The decisive question is whether the skilled person learns new technical information from the granted specification, read as a whole, which was not clearly and unambiguously disclosed in the application as filed.

The claims delimit the monopoly and perform a different function from the specification’s technical disclosure. A broader claim may therefore be permissible where it merely generalises an independently disclosed feature. It is impermissible where it introduces a new teaching or extracts a feature from a combination without disclosure of its independent technical significance.

The proprietor of a patent for motor-vehicle disc-brake calipers appealed from an order of the Patents County Court, [2013] EWPCC 3, revoking the patent for added matter. The judge had rejected challenges based on insufficiency and obviousness and would otherwise have found four of the respondent’s five products to infringe.

The disputed claim described each peripheral stiffening band as asymmetric about the caliper body’s lateral axis. The application described bands which followed a lateral edge and turned around a leading or trailing edge, but expressly discussed the asymmetry of the caliper body as a whole. The principal issue was whether the claim’s general reference to asymmetric bands disclosed technical information extending beyond the application as filed. By respondent’s notice, the respondent also renewed an obviousness challenge based on a Japanese patent publication known as Baba.

1. Appeal allowed unanimously. The order revoking the patent for added matter was set aside. The respondent’s obviousness challenge failed: per Floyd LJ, with whom Lewison and Longmore LJJ agreed.
2. The application clearly and unambiguously disclosed a class of peripheral stiffening bands which followed a lateral edge and turned around a leading or trailing edge. Every band in that class was necessarily asymmetric about the lateral axis. The application also independently explained the configuration’s technical significance: it resisted the bending moment generated during braking.
3. A claim forms part of the patent’s disclosure, but its primary function is to delimit the monopoly. The law does not prohibit a claim feature merely because it states more generally what the specification describes. The question is whether the granted specification, read as a whole through the eyes of the skilled person, supplies new technical information about the invention. Texas Iron Works Inc’s Patent [2000] RPC 207 and A.C. Edwards Ltd v Acme Signs & Displays Ltd [1992] RPC 131 illustrated permissible generalisation. Decision T 065/03 Toyota Jidosha KK and Vector Corporation v Glatt Air Techniques Ltd [2007] EWCA Civ 805 concerned new information or an undisclosed combination and were materially different.
4. Describing the bands as asymmetric broadened the monopoly but disclosed no new configuration. The skilled person would still understand the patent to disclose bands following a lateral and leading or trailing edge, exemplified by the hockey-stick shapes in the embodiments. The amendment did not extract a feature whose technical significance existed only in an undisclosed combination, as had occurred in Palmaz’s European Patents (UK) [1999] RPC 47.
5. On obviousness, the judge correctly construed a peripheral stiffening band as material appreciably beyond and distinct from the limb material at the cylinder ends. Baba did not disclose such a band. A structure retrospectively located by an expert was insufficient where the skilled person would not have recognised it as the claimed feature without looking for it. In any event, the evidence indicated that a designer adding a second cylinder would have reverted to a symmetrical design.

1. Court of Appeal (Civil Division): The appeal was allowed unanimously and the order revoking the patent was set aside: [2014] EWCA Civ 40. The challenge by respondent’s notice to the obviousness finding was rejected.
2. Patents County Court: HHJ Birss QC revoked the patent for added matter, while rejecting the insufficiency and obviousness challenges: [2013] EWPCC 3.