A P Racing Ltd v Alcon Components Ltd

In patent infringement, a peripheral stiffening band must be identified as a distinct band that lies materially beyond the cylinder-end limb material, serves a stiffening function and has the claimed plan-view asymmetry. Where the patent supplies imprecise visual clues, deciding the band's limits is an evaluative factual judgment. The patentee bears the burden of proving infringement. An appellate court should not replace that judgment merely because it might have reached another view, and should not entertain a new factual case, drawings or arguments first advanced on appeal. Claim construction must balance fair protection with reasonable legal certainty under the Patents Act 1977 and the European Patent Convention.

The appeal concerned two disc brake calipers, CAR 1249 and CAR 37, alleged to infringe claim 1 of a patent for a fixed-type disc brake caliper body. HHJ Hacon, sitting as a deputy High Court judge in the Intellectual Property Enterprise Court, had considered seven calipers and held that these two did not infringe: [2017] EWHC 248 (IPEC). AP Racing argued that the judge had wrongly identified the peripheral stiffening bands and their asymmetry, and that the appellate court should reconsider the construction and application of the claim. The central issues were whether the judge had overlooked relevant features, whether infringement had been proved, and whether new drawings and arguments could be advanced on appeal.

Lewison LJ gave the leading judgment, with Lindblom and Flaux LJJ agreeing. The appeal was dismissed.

1. Construction. The governing construction was the judge’s formulation, which AP Racing accepted. For integers 5 and 6, a peripheral stiffening band was a single band of material appreciably beyond and distinct from material at the outer ends of the cylinders, serving to stiffen the caliper and clearly asymmetric to the eye in plan view about a lateral axis.
2. Application of the claim. Identifying the limits of an unlabelled band was a matter of judgment. The patent supplied visual clues, including openings and webs, but no hard-and-fast rules. For CAR 1249, the non-mounting-side band was broadly symmetrical. For CAR 37, openings on both sides meant that any extensions were likely to be broadly balanced. Neither caliper satisfied integer 6.
3. Interpretation and appellate review. Section 125(1) of the Patents Act 1977, together with Article 69 of the European Patent Convention and its Protocol, required an interpretation balancing fair protection and legal certainty. The application of that construction was an evaluative judgment. The appellate court had to be especially cautious before interfering: Henderson v Foxworth Investments Ltd [2014] UKSC 41; Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672. A different view was insufficient unless no reasonable judge could have reached the decision. The absence of an express reference to the alleged web did not establish that the judge had overlooked it.
4. Burden and procedure. AP Racing bore the burden of proving infringement. Once its pleaded and extravagant case had been rejected, the judge was entitled to conclude that infringement was not proved and was not required to devise an alternative case. An appeal is a review, not a retrial. New drawings, allegations, evidence or arguments could not properly be introduced for the first time on appeal, particularly in the IPEC context governed by Part 63.20(1) of the Civil Procedure Rules 1998. The appeal was therefore dismissed.

1. Court of Appeal (Civil Division): Dismissed AP Racing’s appeal against the findings that CAR 1249 and CAR 37 did not infringe: [2018] EWCA Civ 1420.
2. Intellectual Property Enterprise Court: HHJ Hacon considered seven calipers and held that one infringed, while CAR 1249, CAR 37 and four others did not: [2017] EWHC 248 (IPEC).