Virgin Atlantic Airways Ltd v Delta Air Lines Inc [2011] EWCA Civ 162

Case No A3/2010/2981[2011] EWCA Civ 162
IN THE COURT OF APPEAL (CIVIL DIVISION)
[2010] EWHC 3094 (Pat)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Arnold
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 23 rd February 2011
Before
THE RT HON LADY JUSTICE SMITHTHE RT HON LORD JUSTICE JACOBTHE RT HON LORD JUSTICE PATTEN
Between
Virgin Atlantic Airways LtdClaimant/ AppellantDelta Air Lines IncDefendant/Respondent
(Transcript of the Handed Down Judgment ofWordWave International LimitedA Merrill Communications Company165 Fleet Street, London EC4A 2DYTel No: 020 7404 1400, Fax No: 020 7404 1424Official Shorthand Writers to the Court)
Richard Meade QC and Henry Ward (instructed by DLA Piper LLP) for Claimant/AppellantMark Vanhegan QC and Brian Nicholson (instructed by Wragge & Co LLP) for Defendant/RespondentHearing Hearing date: 2 nd February 2011
JudgmentLord Justice Jacob (giving the first judgment at the invitation of Smith LJ):
[1]This appeal is from a judgment of Arnold J of 30th November 2010, [2010] EWGC 3094 (Pat). He held that the patentees, Virgin, had no realistic prospect of successfully establishing that Delta infringed or would infringe Virgin’s EP (UK) 1 495 908 (the “Patent”). Accordingly, by way of summary judgment, he granted Delta declarations to that effect and dismissed Virgin’s action for infringement.[2]The Judge described the extensive nature of the litigation concerning the Patent at [2-28]. I need not repeat it all in detail here. For present purposes it suffices say that Virgin succeeded in its action against a company called Contour (also sometimes called Premium) by a decision of this Court in October 2009. The Patent as it then stood was held valid and infringed in the UK by Contour. Contour makes “ship-sets” of aircraft seats (i.e. not only the seats, but the plinths and all other fittings for a particular type of aircraft of the customer airline). Delta is one of its customers.[3]However subsequently, in September 2010, in opposition proceedings in the EPO the patent claims were amended. Claims to a seat unit for a passenger seating system for an aircraft were deleted. The Patent as amended contains only claims for “a passenger seating system for an aircraft”.[4]Prior to that decision Virgin had sued Delta claiming that it was a joint-infringer with Contour. The action had stalled pending determination of the Contour litigation and the EPO proceedings. When the Patent was amended, Delta applied for summary judgment. For present purposes at least, it accepts that if what Contour does infringes the amended Patent, then it too is liable. But, it says, Contour does not infringe for a variety of reasons. Not all were advanced as clear enough for summary judgment and we are not concerned with them.

The facts

[5]Contour make aircraft seats in Wales for their customers. The seats concerned in this action are called Solar Eclipse.[6]More specifically Delta for the purposes of this summary judgment application accept the facts as set out by the Judge at [128]: i) instructions are provided by Contour for assembly of the Solar Eclipse seat units on the aircraft; ii) those instructions set out only a single way to assemble the seat units; iii) following those instructions inevitably results in a seating system within claim 1; iv) those instructions are sufficiently detailed to show the precise position of every component and their relative positions; v) Contour either undertakes or partially undertakes the assembly, or at least provides assistance for the assembly by way of supervision or inspection; vi) the assembly of seat units is designed as a bespoke whole for the specific use of each specific customer, such as Delta; vii) assembly is within the routine skill of the ordinary engineer; viii) a number of seat units are assembled together, albeit not on an aircraft, by Contour at an FAI [“First Article Inspection” which means a mock-up of the cabin of the aircraft into which the seats will be fitted] in the UK so that the customer, such as Delta, is able to determine how the units will fit together; ix) airline seating systems are normally sold as kits; and x) practical constraints necessitate, or least make it desirable, to sell seating systems as kits.[7]Mr Richard Meade QC, for Virgin, added two more facts before us, both of which Mr Vanhegan QC, for Delta, was prepared to accept. They are: xi) In practice neither aircraft manufacturers nor airlines make aircraft seats. They are designed and made by specialist companies such as Contour, selected by the airline and fitted to the aircraft by its manufacturer. Here, for instance, Contour send out ship-sets to Seattle. Their employees help Boeing install the seats; xii) There is no sensible way of using the ship-sets supplied by Contour other than to fit them into the specific type of aircraft for which they are intended. Of course in theory you could fit the seats anywhere – a cinema for example. But that has no commercial reality.

The Issues

[8]The main points before the judge were: a) Do Contour’s acts within the UK fall within the scope of the amended Patent, and more specifically does the Patent claim cover a ship-set before it is installed on the aircraft? b) Can the manufacture and sale in the UK of a complete kit of parts to assemble a device which falls within a patent claim infringe? c) Can the manufacture in, and export from, the UK of an incomplete kit of parts for assembling abroad a device which falls within a patent claim infringe?[9]Virgin took a point about Delta being bound by a finding in this Court’s decision that Contour infringed claim 1 of the unamended patent. The judge rejected that and there is no appeal.

The Judge held that:

[10](1) Contour did not infringe because the main patent claim (claim 1) required a seating system comprising a plurality of seat units assembled and arranged on an aircraft. The system was only assembled abroad.(2) As a matter of law it was arguable that manufacture in the UK of a complete kit of parts for assembling a patented device could infringe a patent.(3) But as a matter of law it was not arguable that the manufacture in the UK of an incomplete kit of parts subsequently exported could infringe. [Of course if the incomplete kit was used in the UK to assemble the whole patented article, there might be contributory infringement pursuant to s.60(2))] It followed that Contour did not infringe: they did not make an assembly within the claim and only made an incomplete kit of parts in the UK, a kit never used to make the patented apparatus within the UK.[11]Before us Delta did not challenge the second of these holdings. So we were left with two issues, namely whether the claim called for a ship-set assembled on an aircraft or not, and whether an incomplete kit of parts could infringe.[12]Because I take the view that the Judge was wrong on the first point, it is not necessary to consider the second or third points. I do not propose to do so because I do not think these rather abstract questions of law should be decided on a summary judgment application. The position across Europe (we were taken to cases and lawyers’ opinions from Germany, Holland and some other countries) is not well settled. There is room for development of the law. The question could be highly fact sensitive (e.g. in the case of an incomplete kit, how incomplete? Would “batteries not supplied” be enough to avoid a claim which required fitted batteries?). It is better to decide the matter on the basis of concrete facts.

Principles for summary Judgment in patent cases

[13]These were not in dispute. The Judge sets them out at [32-36]. Whilst the general rules as to summary judgment apply equally to patent cases as to other types of case, there can be difficulties, particularly in cases where the technology is complex. If it is, the court may not be able, on a summary application, to form a confident view about the claim or its construction, particularly about the understanding of the skilled man. On the other hand in a case such as the present, where the technology is relatively simple to understand, there is really no good reason why summary procedure cannot be invoked. No one should assume that summary judgment is not for patent disputes. It all depends on the nature of the dispute.[14]That can cut both ways, of course. If the court is able to grasp the case well enough to resolve the point, then it can and should do so – whether in favour of the patentee or the alleged infringer.[15]Here, for instance, I am satisfied not only that the Judge erred on the point but that Virgin are right about it. The claim is not limited to a ship-set fitted into an aircraft. It covers a system capable of being so fitted. I turn to explain why.

Claim 1 and its construction: whole aircraft point

[16]Claim 1 as amended reads (broken down into elements): [1] A passenger seating system for an aircraft, comprising a plurality of seat units (40), [2] each seat unit defining only one notional longitudinal seat axis (C-C) and [3] comprising a supporting structure (42) adapted for attaching the seat unit to a floor (30) of an aircraft (12) and [4] means for forming or being configurable for forming a seat comprising a seat-pan (71) and a back-rest (72), [5] wherein each seat unit further comprises a foot-rest (65) positioned forwardly of the seat, [6] said seat units being arranged to form a column (29) defining a notional longitudinal column axis (B-B), [7] in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to the notional column axis (B-B), [8] wherein at least some of the seat units are arranged to be disposed adjacent a sidewall (26,28) of the aircraft and face inwardly thereby to define between the rear of each seat and the sidewall a space (36) when the seat unit is configured as a seat, [9] each seat unit further comprising means for forming or being configurable for forming a substantially flat bed (47,48,67,74,76), [10] so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat, [11] wherein said seat forming means and said bed forming means comprise one or more movable passenger-bearing elements which are selectively configurable to form, in a seat mode, at least part of the seat for a passenger or, in a bed mode, at least part of said flat bed, and [12] wherein the flat bed in the bed mode is disposed at substantially the same level above an aircraft floor (30) as the seat-pan (71) in the seat mode, and characterised in that [13] the flat-bed extends into said rearward space (36) behind the seat, [14] in that said acute angle is in the range 30 - 60°, and [15] in that a generally triangular passenger support element is disposed in said rearward space (36) substantially coplanarly with said one or more movable elements when said movable elements are configured in the bed mode and is adapted to form part of said bed.” [2] each seat unit defining only one notional longitudinal seat axis (C-C) and characterised in that

[14] in that said acute angle is in the range 30 - 60°, and

[17]This is to be construed on familiar Kirin-Amgen principles: what would the person skilled in the art have understood the patentee to be using the language of the claim to mean? The parties were ad idem as to the principles. Where they parted was on their application to claim 1.[18]Virgin say that the opening words of the claim control all that follows. The skilled reader sees a passenger seating system for an aircraft and will understand that what is being claimed is a system – a ship-set in the language of the trade – which is capable of being fitted into an aircraft.[19]It is indeed classical patent law that “for” claims are normally construed as meaning “suitable for”. The Judge himself cites a large number of cases where such claims were so construed, namely Adhesive Dry Mounting v Trapp (1910) 27 RPC 341, Instituform v Inliner [1992] RPC 83, Bühler v Satake [1997] RPC 232 at 239-240, Coflexip v Stolt [2000] EWCA Civ 242, [2000] IP&T 1332 at [23]-[27], FNM v Drammock [2009] EWHC 1294 (Pat) at [56]-[74], Zeno Corp v BSM-Bionic [2009] 1829 (Pat) at [26]-[37] and the EPO’s Guidelines for Examination (April 2009 edition) section C-III paragraph 4.13.[20]Mr Meade added some more: Du Pont’s Appn. [1984] R.P.C. 17 Furr v. Truline. [1985] F.S.R. 553, Instituform v Inliner [1991] RPC 83, Visx. v Nidek [1999] F.S.R. 405, Vericore v Vetrepharm [2003] EWHC 1877 (Ch) and Corevalve v Edwards Lifesciences [2009] EWHC 6 (Pat) [2009] F.S.R. 8.[21]Mr Meade submitted that the EPO Guidelines are particularly important. They say this:
“If a claim commences with such words as: ‘Apparatus for carrying out the process etc …’ this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim. Similar considerations apply to a claim for a product for a particular use. For example, if a claim refers to a ‘mold for molten steel’, this implies certain limitations for the mold. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim. Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see IV, 4.8).”
[22]Mr Meade adds that this rule of construction is repeatedly cited in the case law of the EPO Boards of Appeal. He cites by way of example T287/86, T523/89, T637/92, T646/07,T1435/06, T1084/06, T313/05, T458/96, T1273/01 (I do not spell out their names). He goes so far as to say in his skeleton argument that:
“Once again, we have been unable to find a single example of a claim for a product “for” a purpose which has been construed by the EPO as meaning anything other than “suitable for”.”
That was a challenge. Delta was unable to respond with any case to the contrary.[23]I interpolate that in Zeno Lewison J seemed a little sceptical about this rule of construction. He wondered, having only been shown Adhesive Dry Mounting and Coflexip, whether for might not be construed as intended for at least in some cases depending on the specification as a whole. In some cases it can indeed mean that, particularly in those concerned with a second medical use for a known medicine (see EPC 2000 Art. 54(4) and the last part of the Guidelines.) But even then the claim would mean suitable and intended for. Lewison J’s doubts would not assist Delta here.[24]Accordingly I think the construction of system for an aircraft should be approached with a very strong predilection for understanding it as meaning suitable for. Only if one is compelled by the rest of the claim read in the light of the specification as a whole to read it as limited to a system when fitted on an aircraft should it be read as a system on an aircraft.[25]Actually even without this authority establishing a very strong presumption I think a skilled man reading the claim in context would expect it to mean suitable for. He would ask himself what the patentee intended by the words used. They are not the words anyone would naturally use to claim an aircraft fitted with a system. The natural way to claim that would be something like:
“an aircraft fitted with a seating system comprising ….” or, perhaps “a seating system fitted into an aircraft …”
. Moreover the skilled man, knowing that it is specialist manufacturers who actually design and make ship-sets, would surely expect that the patentee would have wanted to catch them.[26]Starting from a strong presumption (which I do not think was the judge’s starting point – that was more like Mr Vanhegan’s mere “indication”) - I ask whether there is anything in any of the other claim elements, or in the specification or other claims, which compels the Judge’s construction.[27]Mr Vanhegan says there is. He points particularly to elements [6], [7], [8], and [14]. None of these, he submitted, could be complied with unless and until the ship-set was installed on an aircraft. Thus:(1) [6] called for seat units being arranged to form a column …defining a notional longitudinal column axis. That, he submitted, would only be the case when the seats were arranged.(2) Similarly for integer [7] which calls for a column in which seat units are arranged side-by-side … at an acute angle to the notional column axis. That, he submitted, will not be so unless and until the seats are installed. There will not even be a column axis unless and until the ship-set is installed.(3) Again in [8] the seat units are arranged to be disposed against a sidewall of the aircraft ..thereby to define between the rear of each seat and the sidewall a space. How, Mr Vanhegan asked forensically, can they actually be so arranged absent a sidewall of an aircraft? Moreover, he submitted, the whole point of the invention was space-saving on an aircraft. You cannot save that space in the abstract. The space is only saved in an aircraft – the space defined by the claim.(4) And [14] talks about the actual acute angle – which cannot exist absent installation.[28]Mr Meade, for his part, pointed to indications in the later elements of the claim which, he said, showed the patentee was not requiring actual installation of the claimed assembly on an aircraft. In particular he relied upon [3] and [8]. To my mind [12] is also relevant.[29]More particularly:(1) [3] calls for a supporting structure adapted for attachingthe seat unit to a floor of an aircraft. This is the language of pre-fitment. You do not say something is adapted for attaching if you actually mean it must be attached. And you do not speak of adapted for attaching to a floor of anaircraft if you mean the unit must be actually attached to the floor of an aircraft.(2) Similarly you would not speak in element [12] of an aircraft floor if you meant the floor of the aircraft to which the seat was already fitted.(3) As for [8], Mr Meade submitted it supported Virgin’s construction, not Delta’s. This was by reason of the words arranged to be disposed adjacent a sidewall. If the claim required that the units were in fact so disposed, you would merely say that. Arranged to would be completely redundant words on Delta’s construction. But they must have been intended to add something: that in context could only be a capability of being so disposed.[30]In the course of argument there was some discussion about the use of “notional column axis” in element [6]. Might the fact that the axis was notional rather than actual be an indication of capability rather than actuality, hence favouring Virgin? In the end I think the point goes nowhere. For there is also a notional axis of the seat alone (element [2]). All the patentee is doing by the word notional is indicating to the reader to imagine an axis for the purposes of his description.[31]I felt, most particularly in relation to the dispute about element [8] but also more generally, that we were descending into an over-meticulous verbal analysis (a technique famously proscribed by Lord Diplock in Catnic) rather than purposive construction. The fact is that the later claim elements relied upon by the parties are, in themselves, inconclusive as to whether the system must be fitted on an aircraft or merely must be capable of being fitted. They point in both directions. They do not compel the Judge’s construction.[32]Nor do the subsidiary claims assist. Before the Judge each side relied on some of these (Judgment [74-77]). He found the points inconclusive either way. Neither side pressed them before us. But Delta took a point about claim 2. The suggestion was that claim 2 would be redundant if claim 1 covered a system capable of being fitted on an aircraft. Claim 2 is about a system for an aircraft in which at least some of the seats “are arranged to be disposed back to back with the seat units in another column”. It is talking about the disposition of seats in the centre of the cabin as opposed to the seats by the cabin walls. Mr Meade provided the answer to this point. The seats by the walls do not have to be the same as those in the middle. So you can have a system which infringes both claims because the seats are suitable both for the side walls in middle but equally you do not have to have such seats. Mr Meade also pointed out that claim 2 contained no reference to a side wall, so the argument that the system had actually to be fitted in an argument was weakened if not destroyed.[33]There is only one way to reconcile the conflicting indications – that is to consider purposively what the patentee would have conveyed to the skilled reader from the claim as a whole. The claim is dominated by the opening words system for an aircraft. It follows, for the reasons I have given at [24-26] above, that claim 1 covers a ship-set capable of being installed on an aircraft.[34]I should mention two other matters. Firstly the Judge thought that Virgin’s construction would not “provide reasonable certainty for third parties” contrary to the requirements of the Protocol to Art 69 of the EPC. I do not agree. The Judge asked whether just two seats in the possession of a defendant might infringe if they could be arranged in a cabin so as to comply with the claim. That is a rather fanciful example. The claim is for a system for an aircraft. The skilled reader would expect the language to be confined to a realistic complete system for an aircraft. There is no unreasonable uncertainty for third parties. They know what they can and cannot do.[35]The other point is this. At [49]

the Judge said:

“In my judgment it follows from this logic [i.e. that of this Court in its first judgment in the Contour action] that the skilled reader is also deemed to know about, and take into account, the following matters: (i) It is possible to frame claims in a variety of different ways. In particular, claims may be directed, subject to constraints on unity of invention, both to the whole of an inventive product and to its key components separately. (ii) It is possible to infringe a patent both directly under section 60(1) of the Patents Act 1977 corresponding to Article 25 of the Community Patent Convention and indirectly under section 60(2) of the 1977 Act corresponding to Article 26 CPC. As discussed in more detail below, the latter type of infringement involves the supply or offer to supply of “any of the means, relating to an essential element of the invention” i.e. less than the whole of a claimed product. (ii) Patents are territorial in nature. This has two aspects to it. The first is that a UK patent prevents persons other than those “entitled to work the invention” (to use the language of section 60(2)) from doing things in the UK. The second is that a patentee can in principle obtain, and may well have in fact obtained, parallel patent protection in other countries. In saying this, I am not going so far as to presume that the skilled person will actually carry out a search to locate any corresponding foreign patents, even though a well-advised person would do so and nowadays would be able to locate most such patents quickly and easily using electronic databases.”
[36]Mr Meade submitted that this was wrong – that unlike the specific drafting conventions with which this Court was concerned in its first judgment, these were wider considerations of patent law which the skilled reader would not necessarily know and thus take account of in trying to understand what the patentee meant by the words used. Whilst not conceding it was wrong, Mr Vanhegan did not seek to defend this paragraph. He submitted, correctly in my view, that it did not form any part of the Judge’s reasoning when he came to claim construction. I would not want to be taken as endorsing this paragraph.

The Declaration

[37]The Judge granted a declaration of non-infringement. However, this was because Virgin was also running a point that even if the ship-sets as such did not infringe, Contour had infringed when they installed seats during the FAIs. Given my conclusion on the construction of the claim, this point falls away and the declaration should be discharged.

Conclusion

[38]Accordingly I would allow this appeal. The case must proceed to trial, where, I understand, Delta will take a number of other non-infringement points. Nothing I say here can of course affect these.

Lord Justice Patten:

[39]I agree.

Lady Justice Smith:

[40]I also agree.

Cited in 5 later judgments