Jeff Gosling Limited v Autochair Limited [2025] EWHC 1687 (IPEC)

[2025] EWHC 1687 (IPEC)Case No IP-2024-000057
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 8 July 2025
Before
HIS HONOUR JUDGE HACON
Between
JEFF GOSLING LIMITEDClaimantAUTOCHAIR LIMITEDDefendant
Richard Davis KC and Laura Adde (instructed by IK-IP Limited) for ClaimantDouglas Campbell KC (instructed by Gateley Legal) for DefendantHearing Hearing dates: 5 June 2025
Approved JudgmentThis judgment was handed down remotely at 2pm on 8 July 2025 by circulation to the parties or their representatives by e-mail and by release to the National Archives..............................HIS HONOUR JUDGE HACON
[1]This action concerns European Patent No. 2 578 197 B1 (‘the Patent’) which claims a hoist for loading and unloading an item into and out of the load-carrying space of a vehicle, typically the boot of a car. For the most part the Patent is concerned with a device for loading and unloading a disabled person’s wheelchair or scooter.[2]The Patent is owned by the defendant (‘Autochair’). The claimant (‘JGL’) seeks a declaration of non-infringement of the Patent in respect of its ‘Apex Assist’ hoist. Autochair has counterclaimed, seeking a finding of infringement. The validity of the Patent is not in issue.

The person skilled in the art

[3]It was agreed that the person skilled in the art is a design engineer who is familiar with hoists of the type claimed. He or she has knowledge of how they are installed and used in practice.

The witnesses

[4]The parties each had one witness of fact. Chistopher Cooke is the Managing Director of JGL, Matthew Walker is a director of Autochair and one of the named inventors in the Patent. Mr Cooke was mildly criticised in closing but overall he gave his evidence fairly. Mr Walker was not cross-examined.[5]JGL’s expert witness was Oliver Shaw who is an engineer in the automotive sector of industry. Mr Shaw also lectures in mechanical engineering at the University of Bolton and has a consultancy business.[6]Autochair’s expert was Mark Hibbert. Mr Hibbert is Technical Installations Manager at a company called Mobility in Motion Limited, a company in the same group as Autochair. Mr Hibbert has worked with mobility aids, including hoists, for over 25 years and has fitted over 3000 hoists. He also repaired hoists and checked fitting done by others.[7]Car hoists for wheelchairs and mobility scooters is a fairly narrow field. It seems that the parties were faced with having to choose between an expert close to home or one with broad engineering expertise but little or no direct experience in working with the relevant type of hoist. Autochair went for the former, JGL the latter.[8]Autochair submitted that Mr Shaw’s evidence could carry little weight relative to that of Mr Hibbert because of Mr Hibbert’s greater experience with relevant hoists. JGL criticised Mr Hibbert for downplaying his association with Autochair in his report and submitted that he was plainly a biased witness.[9]There was possibly something in both criticisms. Mr Hibbert undoubtedly knew more about hoists of the relevant type than did Mr Shaw, but I agree with JGL that he showed signs of loyalty to his boss for 20 years and current de facto boss, Mr Walker, who is a director of Autochair and the sole director of the company for which Mr Hibbert works. An example was Mr Hibbert’s reluctance to accept that screws used in wheels of HGVs can sometimes come loose over time, which seems a likely possibility since, as was pointed out to him, they are designed to signal where this has happened.[10]Mr Shaw’s expertise was more general than that of Mr Hibbert and he seemed occasionally reluctant to make what seemed to be appropriate concessions. For the most part, though, his reasoning was sound and I see no cause for rejecting his evidence because of his lack of direct experience with hoists.[11]Both Mr Hibbert and Mr Shaw provided useful evidence.

Common general knowledge

[12]The experts agreed a joint statement on the common general knowledge (CGK) of the skilled person. Central to the dispute at the trial was the means of adjusting the relative positions of components of a hoist. The joint statement included this:
‘Stepped securing arrangements (e.g. hole/locking device) were known as were compression/friction arrangements (e.g. grub screw on a bar).’
[13]The ‘stepped’ arrangements referred to what would typically involve a locking device being placed into spaced holes along one of the components. This way the components may be locked at fixed positions relative to each other, the available fixed positions depending on how the holes are spaced. The ‘compression/friction’ arrangement typically relies on a grub screw in a first component being turned and pressed against the side of the second component so that the components become fixed relative to each other due to friction between the grub screw and the second component. This arrangement allows relative spacing of the components without being limited to fixed alternative positions.

The Patent

[14]This is the hoist as shown in Figure 1 of the Patent[15]A pivot post 10 is mounted on one side of a car boot. A lifting arm 14 is pivotally connected at 16 to a bracket 18 at the lower end of the pivot post. An actuator 20 controls the inclination of the lifting arm and is pivotally connected to a bracket 28 at the upper end of the major length 15 of the lifting arm.[16]An upper end section 32 of the lifting arm projects at an angle to the major length 15. An extension element 34 projects from the upper end section. A cross beam 50 hangs from the end of the extension element having clamps 60 at either end. The clamps are used to support a wheelchair or scooter which can be lifted by the hoist from the exterior of the vehicle and placed into the boot and vice versa.[17]To achieve a change in the height of the clamp, a lowermost section 13 of the lifting arm can be extended downwards – as shown, there is a telescopic extension 13 out of and down from the major length of the lifting arm. Since the lifting arm is at an angle, this will also extend the horizontal reach of the lifting arm and the clamp at its end. The upper end section 32 can be raised to be positioned close to the roof lining of the vehicle 11.[18]To allow movement of the lowermost section 13 relative to the major length 15 of the lifting arm, there must be corresponding variation in the position of bracket 28 along the length of major length 15, i.e. the bracket slides up and down in accordance with the movement of the lowermost section 13 in and out of the major length.[19]The overall length of the lifting arm can also be adjusted by variation in the position of the extension element 34 relative to the upper end section 32 of the lifting arm. In the form shown in Figure 1, this is another telescopic adjustment, the extension element moving in and out of the upper end section.[20]The pivotal motion of the lifting arm relative to the pivot post allows radial motion of the hoist as a whole. Otherwise, the positioning of the cross-beam and thereby the manoeuvring of the wheelchair or scooter is achieved by varying the length and height of the hoist. This is done using three adjustments, all of which may be motor driven:(1) Adjustment of the position of lowermost section 13 relative to the major length 15 of the lifting arm. I will call this ‘Adjustment 1’.(2) Adjustment of the position of bracket 28 along the opposite end of major length 15. I will call this ‘Adjustment 2’.(3) Adjustment of the position of extension element 34 relative to upper end section 32. I will call this the ‘Adjustment 3’.[21]Figure 2 of the Patent illustrates the hoist in a raised position. It is here annotated to show the sites of the three adjustments just referred to, which together allow positioning of the clamps at the end of the arm and thereby the positioning of the wheelchair or scooter, both vertically and horizontally:

The claim

[22]This is claim 1 of the Patent divided into integers: [A] A hoist mechanism for loading into or unloading from a load carrying space of a vehicle, the hoist mechanism being installable in said vehicle and comprising [B] a lifting arm (14) pivotally connected to an actuator (20), the inclination of said lifting arm being controlled by the actuator (20), wherein: [C] when the lifting arm is in a fully raised position, a projecting upper end section (32) of a major part (15) of the lifting arm (14) extends substantially horizontally; [D] an effective length of the projecting upper end section (32) is made variable by the provision of an extension element (34) adjustably fixed to it; and characterised in that [E] the lifting arm (14) is variable in upstanding height by a provision of a lower end section (13) slidably connected to the major part (15) of the lifting arm (14), [F] wherein both length and height variations are made by stepless adjustments.

JGL’s hoist

[23]The hoist alleged to infringe is JGL’s Apex Assist. This is a diagram of the Apex Assist taken from its fitting instructions:

The arguments on infringement

[24]The effective length of the upper end section of the lifting arm is made variable by the provision of an extension element adjustably fixed to it – what I have called Adjustment 3. The extension element is shown to the left of the upper end section above. Integer D of claim 1 is satisfied, as are integers A to C and E. This length variation is not made by stepless adjustments. Adjustment 3 is instead done using grub screws which fit into blind holes in the upper end section (the holes are just visible in the diagram), which means that length variation here happens in discrete steps governed by the distance between the holes. Consequently, JGL argues, integer F is not satisfied and the Apex Assist does not fall within claim 1. The Apex Assist also features Adjustments 1 and 2, both of them stepless, but JGL submits that this is by the way.[25]Autochair has three responses:(1) On a correct normal construction of claim 1, Adjustment 3 need not be stepless.(2) Alternatively, the Apex Assist is a ‘means relating to an essential element’ within the meaning of s.60(2) of the Patents Act 1977 (‘the 1977 Act’). Its supply by JGL satisfies all the requirements of s.60(2) and is therefore an act of infringement of the Patent.(3) The scope of claim 1 is broad enough to cover the Apex Assist under the doctrine of equivalents.

Normal construction of claim 1

[26]Autochair submitted that integer F simply requires that both length and height variations in the lifting arm are made by stepless adjustments. Adjustment 1 in the Apex Assist is stepless. Necessarily Adjustment 2 is too (hereafter I will take it as read that the Adjustments 1 and 2 go hand in hand). Adjustment 1 provides variation in both the length and height of the lifting arm because its major length (15 in Figure 1 of the Patent) is neither horizontal nor vertical in use. Thus both length and height variations in the lifting arm can be achieved steplessly. Integer F is satisfied.[27]JGL argued that this reasoning relies on an incorrect interpretation of claim 1. Integer C introduces the projecting upper end section 32 of the major part 15 of the lifting arm. Integer D says that the effective length of the projecting upper end section is made variable by the provision of an extension element 34 adjustably fixed to it – in other words, the length of the upper end section is made variable by Adjustment 3. Integer E goes on to require that the height of the lifting arm is made variable by Adjustment 1. When integer F speaks of ‘both length and height variations’, this is a reference back to the length of the upper end section referred to in integer D and the height of the lifting arm referred to in integer E. Integer F requires that both these variations must be stepless. In other words, both Adjustment 1 and Adjustment 3 must be stepless.[28]I agree with Autochair that Adjustment 1 leads to variation in both the length and height of the lifting arm. But to my mind JGL’s interpretation of claim 1 accords with the more natural reading of the claim. Of course it must be interpreted by reference to the specification as a whole. This is paragraph [0013]:
‘[0013] As shown in Fig. 1, an upper end section 32 of the lifting arm projects at an angle to the major length 15, the arrangement being such that, when the arm is fully raised, said projecting end section extends substantially horizontally (very close to the roof lining when the hoist has been installed in an estate type vehicle or people carrier). The effective length of the projecting end section 32 is made variable by the provision of an extension element 34 located within said end section and steplessly adjustable, as will presently be described, in order to adjust the possible reach of the lifting arm.’
[29]The second sentence makes it clear that Adjustment 3 is stepless. Mr Shaw’s evidence was that from a purposive perspective, having both Adjustments 1 and 3 stepless allows maximum flexibility in locating the clamp and thereby the wheelchair or scooter. Mr Hibbert accepted in cross-examination that both adjustments would be used in practice when fitting a load. I accept this evidence, which reinforces JGL’s construction of claim 1.[30]Autochair had a subsidiary argument under this head. It was that the skilled person would have regarded the adjustment using the Apex Assist blind holes, which are 10mm apart, just as good as literally continuous adjustment, and it would have been treated as stepless by the skilled person. Mr Hibbert said in his report that a 10mm degree of adjustment would have been seen as a ‘game changer’ in terms of available adjustability.[31]Even assuming Mr Hibbert is right about this, it does not follow that the skilled person would have regarded 10mm step adjustment to be the same thing as stepless adjustment as that term is used in claim 1. In cross-examination Mr Hibbert accepted that from a practical perspective they would not have been viewed to be the same.[32]I find that claim 1 requires that both Adjustments 1 and 3 are stepless. The Apex Assist does not infringe on a normal construction of the claim. Indirect infringement The law

Indirect infringement

[33]Section 60(2) of the 1977 Act provides:
‘(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.’
[34]The dispute between the parties under s.60(2) principally concerned the two mental elements: whether the relevant person ‘knows, or it is obvious to a reasonable person in the circumstances’ that the relevant means are suitable for putting, and whether those means ‘are intended to put’, the invention into effect in the United Kingdom.[35]Jacob LJ addressed the two elements in KCI Licensing Inc v Smith & Nephew plc [2010] EWCA Civ 1260. I will quote the relevant passage (at [53]), including the references to paragraphs from the earlier joint judgment of Jacob and Etherton LJJ in Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110:
‘i) The required intention is to put the invention into effect. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain, [108]. ii) It is enough if the supplier knows (or it is obvious to a reasonable person in the circumstances) that some ultimate users will intend to use or adapt the “means” so as to infringe, [107(i)] and [114]. iii) There is no requirement that the intention of the individual ultimate user must be known to the defendant at the moment of the alleged infringement, [124]. iv) Whilst it is the intention of the ultimate user which matters, a future intention of a future ultimate user is enough if that is what one would expect in all the circumstances, [125]. v) The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. This has to be proved on the usual standard of the balance of probabilities. It is not enough merely that the means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material, [131].’
[36]A point arose with regard to subparagraph (ii). Taken on its face it is an unqualified statement that provided at least some ultimate users will intend to use or adapt the means so as to infringe, this element of s.60(2) is satisfied. But this is expressly based on what had been said in Grimme. The paragraphs in that earlier judgment cited at the end of subparagraph (ii) do not seem to be the most relevant so far as this point is concerned. However, the Court said: [112] … [Counsel] submitted that it was enough if the supplier knew (or it was obvious in the circumstances) at the time of his offer to supply or supply that some (disregarding freak use) ultimate users would intend to use, adapt or alter the “means essential” so as to infringe.[37]The submission related to what was earlier termed the ‘inherently probable’ interpretation or view of the relevant element of s.60(2). The judgment continues:
‘[113] Against this view it can be said that art.26 [CPC] requires that the alleged infringer must know (or it must be obvious etc) that the means are intended to put the invention into affect [sic]. The present tense is used. So it can be said that a future intention—even a probable future intention—is not enough.’ [114] Notwithstanding the force of that linguistic point, we conclude that the “inherently probable” view is indeed the correct construction of the provision. We do so for a number of reasons.’
[38]The Court then gave six reasons, of which this was the second:
‘[116] Secondly, it was essentially the reasoning of Jacob J. in Chapman (Chapman v McAnulty, unreported, February 19, 1996 , BL SRIS C/20/96, Pat Ct). He said: “It is sufficient if it is shown that the invention will be put into effect by some users. One would only disregard maverick or unlikely uses of the thing.”’
[39]Thus, it is sufficient if the supplier knows or ought to know that some ultimate users will intend to use or adapt the means so as to infringe, provided that they are neither ‘freak’ nor ‘maverick’ users – if there is a difference.[40]I will not attempt a comprehensive definition of freak and/or maverick users, but in my view it includes irresponsible users. By this I mean that the relevant element of s.60(2) is not satisfied if the supplier knows, or it is obvious to a reasonable person in the circumstances, that although some ultimate users will intend to use or adapt the means so as to infringe, in such instances this is likely to result in the invention being put into effect in a manner which a reasonable person having knowledge of all the relevant facts would regard as irresponsible.[41]Another point of law was raised. JGL advanced the submission that the ultimate user of the Apex Assist and all hoists of this type is the consumer who uses it on a day-to-day basis to load items into the boot of their car; it is not the fitter who instals the hoist into the boot. This was a surprising submission because there was no direct evidence regarding what car owners do. As Autochair rightly stated, all the evidence on this came from the experts but they spoke only of what fitters would do.[42]‘Ultimate user’ and ‘person at the end of the supply chain’ are not terms taken from s.60(2). In the present case, it can be inferred from what the experts said that if anyone is going to modify the Apex Assist so that securing of the extension element after Adjustment 3 is done by the compression/friction method, it will be the fitter. Therefore the choice between the fitter and the consumer depends on whether the relevant intention is that of the ultimate user of the product claimed or the person who puts the invention into effect.[43]As Jacob LJ said in paragraph 53(i) of KCI Licensing (quoted above), the relevant intention in s.60(2) is to put the invention into effect. It would follow that the relevant intention is that of the person who will put the invention into effect. It seems to me clear from subparagraphs 53(i) and (ii) of KCI Licensing, quoted above, that this is what the Court of Appeal had in mind. Further, in Grimme the Court said:
‘[108] First then the person who must have the intention. One can rule out the supplier himself. The required intention is to put the invention into effect. That the supplier himself does not intend to do. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect—the person at the end of the supply chain.’
[44]I think the distinction intended there was between the person who puts the invention into effect and a person merely in the upstream supply chain of the means relating to an essential element.[45]I discussed s.60(2) in Prevayl Innovations Ltd v Whoop Inc [2025] EWHC 399 (IPEC) at [74] to [87]. Given my comments on the exclusion of irresponsible implementation of the invention (which was not an issue in Prevayl) and the apparent potential for an incorrect understanding of ‘ultimate user’, I would modify my summary in Prevayl of the requirements of s.60(2) as follows: The supply of, or the offer to supply, a product to a person not entitled to work the invention is an act of infringement under s.60(2) if the following are found on the balance of probabilities:(1) The supply or offer to supply takes place in the United Kingdom and the product is a means relating to an essential element of the invention, i.e. a means which contributes to implementing the technical teaching of the invention without being of completely subordinate importance to the implementation; this is irrespective of where the core of the invention lies (Nestec SA v Dualit Ltd [2013] EWHC 923 at [168]-[175] and Prevayl at [76]).(2) Those means are suitable for putting the invention into effect, i.e. adaptation of the means or its use together with other means could put the invention into effect (Prevayl at [79]-[86]).(3) At the time of the supply or offer to supply, the supplier knows or it would be obvious to a reasonable person in the circumstances that (a) adaptation of the means supplied or its use together with other means could put the invention into effect and (b) at least some parties will intend to put the invention into effect in the United Kingdom in that way (KCI Licensing at [53]).(4) Excluded from (3)(b) above are maverick parties, which includes those with an intent to put the invention into effect in a manner which a reasonable person having knowledge of all the relevant facts would regard as irresponsible.

The arguments

[46]Autochair pointed out, and it was not in dispute, that although the extension element of the Apex Assist has blind holes along one side, it need not be secured using the holes. The user could align grub screws with the parts of the extension element between the holes, then causing the screws to press against the extension element and hold it in place by compression/friction rather than by having the grub screws inside blind holes. Alternatively, the user could reverse the position of the extension element so that its smooth side is opposite the grub screws. The grub screws could be rotated until they press against the smooth side. Again, the extension element would be held in place by compression/friction.[47]Autochair argued that some users of the Apex Assist would see the advantage of using a compression/friction method because it offers greater flexibility for Adjustment 3. As supplied, the Apex Assist was a means relating to an essential element of the invention and the invention would be implemented whenever securing by compression/friction was used for Adjustment 3.[48]JGL drew my attention to the general fitting instructions which come with the Apex Assist. The section on how the hoist is to be fitted opens with this:
‘Important Information To ensure the warranty and product insurance remains valid, the Apex Assist boot hoist must be installed following all instructions in this general fitting instructions alongside the vehicle specific fitting instructions. Any deviance from these instructions will void warranty and product insurance.’
[49]These are pages 14 and 15 from the instructions:[50]There can be no doubt that fitters of the Apex Assist are strongly advised to secure the position of the extension element after Adjustment 3 by fully engaging the grub screws within the blind holes. Failure to do this will void the warranty and product insurance.[51]JGL submitted that there cannot therefore be infringement under s.60(2) because no fitter will intend to put the invention into effect.[52]JGL further argued that the dog-point grub screws used for Adjustment 3 in the Apex Assist are not suitable for securing the extension element by compression/friction, as opposed to cup-point grub screws which are not supplied with the Apex Assist. This was based on evidence given by Mr Cooke. As I understood Mr Cooke, he was making a point about the safety of using dog-point grub screws, which I will discuss below.[53]Autochair relied on Mr Hibbert’s opinion that the blind holes in the Apex Assist are included partly for the sake of appearances and his estimate that 30% of the hoists are not fitted according to their manufacturer’s instructions. Based on this, Autochair argued that it would be obvious to a reasonable person that some fitters of the Apex Assist will intend to use the grub screws to secure the extension element by compression/friction and so will intend to put the invention into effect. The burden on JGL, Autochair contended, was to show that no fitters would do this.

Discussion

[54]Mr Hibbert may or may not be right to say that 30% of hoists are not fitted according to their manufacturer’s instructions. That is a general statement and does not establish any figure in respect of the Apex Assist, specifically not in relation to the securing of the extension element. Mr Shaw was firmly of the view that the skilled person would not consider securing the extension element other than by tightening the grub screws into blind holes according to the manufacturer’s instructions. This was on safety grounds and because any other method would invalidate the warranty. He said that to secure the extension otherwise than in accordance with the manufacturer’s instructions would be irresponsible. Mr Hibbert agreed in cross-examination that this would be irresponsible and said that he would not do it.[55]It follows from this and my finding of law that at the time of supply of the Apex Assist it would have been obvious both to JGL and to a reasonable person in the circumstances that relevant fitters would all implement Adjustment 3 by tightening the grub screws into the blind holes. Consequently, it would not have been obvious that relevant fitters will intend to put the invention into effect when fitting the Apex Assist.[56]The allegation of infringement pursuant to s.60(2) of the 1977 Act does not succeed.

The equivalents case

[57]The parties suggested alternative formulations of the inventive concept disclosed in the Patent. This was JGL’s:
‘In a hoist mechanism of the sort installable in and used for loading / unloading from a load carrying space of a vehicle, and of a construction having a pivotal actuator controlled lifting arm itself having a slidably adjustable upper section (generally horizontal when stowed) and a slidably adjustable lower section (generally upstanding when stowed), wherein both said adjustments can be made steplessly so as to allow each section to be secured at any desired position during installation to provide the maximum amount of adjustability for fit and operative purposes.’
[58]Autochair declined to characterise its own inventive concept, rather putting its case on equivalence this way:
‘Stepless adjustments, as per the literal words of integer (F), enable the highest degree of adjustability so as to provide even the very smallest amount of headroom gains: see paragraph [0023] of the Patent. However the skilled addressee would understand that the inventive concept is broader than such literal words. In particular the inventive concept consists of both: (a) stepless adjustments, as per such literal words, and (b) stepped adjustments which are close enough to the same high degree of adjustability that they are equivalent to stepless (as is correctly summarised at paragraph 10 of the Claimant’s skeleton argument herein dated 4 December 2024).’
[59]The parties were thus agreed that integer F is part of the inventive concept, which is consistent with its being within the characterising portion of claim 1. So far as these proceedings are concerned it is integer F that matters. I think it is sufficient if I here treat the inventive concept as being the idea that the length of the projecting upper section and the height of the lifting arm are both adjusted steplessly. Put another way, it is the idea that Adjustments 1 and 3 are both stepless.

The arguments

[60]The first stage of Autochair’s case on equivalence was that Adjustment 3 operating in 10mm steps (the variant) achieves substantially the same result in substantially the same way as the inventive concept, i.e. the same result as in a hoist in which Adjustments 1 and 3 are both stepless.[61]A tension is apparent in Autochair’s case. Autochair begins by pointing out that the stepless adjustments enable the highest degree of adjustability to provide ‘even the smallest amount’ of headroom gains, rightly referred to paragraph [0023] of the Patent where the skilled person is told this. Yet making Adjustment 3 operate in 10mm steps is said to be ‘close enough’. It is not self-evident that 10mm steps constitute the smallest possible degree of variation.[62]Supported by Mr Hibbert’s evidence, Autochair argued that variation by Adjustment 3 is first, not at a point where the hoist is subject to heavy lifting forces, in contrast to the point of Adjustment 1. Secondly, it is stepless Adjustment 1 which affects the height of the load and the Patent is concerned with affording the smallest amount of headroom gains, a product of height. Therefore Adjustment 3 being in 10mm steps does not stop the Apex Assist from achieving substantially the same result in substantially the same way.[63]Mr Shaw for JGL said that using grub screws in blind holes for Adjustment 3 prevents a catastrophic failure in the form of the breakage of the upper end section of the arm or the extension element sliding right out. This is to be contrasted with a failure at the point of Adjustment 1, which would just result in the major part of the lifting arm sliding down until reaching its lowest point.[64]Secondly, Mr Shaw said that the skilled person would appreciate the importance of making the best possible use of the space available in the maximum number of different vehicles. Adjustment 3 being limited to 10mm incremental changes potentially limits both. In cross-examination Mr Hibbert agreed that in some circumstances being able to effect Adjustment 3 in integers of less than 10mm could be needed, in which case ‘stepless adjustment would come in a lot easier’.

Discussion

[65]I accept Mr Hibbert’s point that the longitudinal, or axial, stress at the point of Adjustment 1 is likely to be greater than at the point of Adjustment 3. But the insistence in the fitting instructions issued with Apex Assist on securing Adjustment 3 using grub screws and holes corroborates Mr Shaw’s position that securing the extension element this way is important for safety. Mr Hibbert agreed that if the extension element was secured by compression/friction only and the grub screws became loose, the extension element would slide out.[66]The relevance of this depends on what is meant by the ‘result’. If it means, or rather includes, the result of securing the extension element safely, there is not just a difference in how the Apex Assist achieves this, according to Mr Shaw it is not achieved at all.[67]A skilled person reading the Patent would not have the safety of the means of Adjustment 3 drawn to their attention, although possibly they would have safety in mind as part of their CGK. That said, I was given no reason to doubt that claim 1 covers a hoist which complies with all the integers of the claim even if it is not safe in the way discussed by Mr Shaw. It would seem to follow that the inventive concept – the idea that both Adjustments 1 and 3 must be stepless – has no safety qualification. That being so, it would further seem that whatever ‘substantially the same result’ as the inventive concept means in this context, it has nothing to do with safety. However, there was no argument on the meaning of ‘result’ and I need not reach a final conclusion.[68]It is clear from the Patent specification and the evidence that the primary result achieved by the inventive concept is maximum manoeuvrability of the load, thus making the best possible use of the boot space available in the largest number of different vehicles. Although paragraph [0023] refers expressly to headroom, I do not believe that this would have led the skilled person to understand that such a goal depends solely on variation in height. It makes no obvious sense, Mr Hibbert did not explain why it should and his concession that a stepless Adjustment 3 could make fitting easier was, I think, a tacit acceptance that the advantage offered by stepless adjustment, as understood by the skilled person reading the Patent, would have included the advantage of stepless variation in the length and reach of the lifting arm. That advantage of the inventive concept is not adequately achieved if Adjustment 3 is by 10mm increments. Therefore the Apex Assist does not achieve substantially the same result as the inventive concept.[69]The necessary first stage of Autochair’s argument on equivalence fails.

Conclusion

[70]The Apex Assist does not fall within claim 1 of the Patent. JGL is entitled to a declaration of non-infringement of the Patent in respect of its hoist.

Cited in 1 later judgment