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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery)  EWCA Civ 1110 (15 October 2010)
Cite as:  Bus LR D129,  FSR 7,  EWCA Civ 1110
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Floyd
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE ETHERTON
SIR DAVID KEENE
| Grimme Maschinenfabrik GmbH & Co KG
|- and -
|Derek Scott (t/a Scotts Potato Machinery)
||Defendant & Appellant/ Respondent
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400, Fax No: 020 7404 1424
Official Shorthand Writers to the Court)
Mr G Fernando (instructed by Gordons) for the Defendant & Appellant/Respondent
Hearing dates: 27/28/29 July 2010
Crown Copyright ©
Lord Justice Jacob:
The Issues and how they were argued
i. Meaning of "at least one conveyor lip, rib or like extension part";
ii. Meaning of "an elastically deformable shell part ... [the conveyor lip, rib or like extension part] projecting beyond the contours of the cylindrical shell".
2. If successful on either of the two points of construction above, is claim 1 obvious over Rollastar?
Mr Scott's Respondent's notice
3. Obviousness of claim 1 over Dahlmann rollers (in the light of common general knowledge ("cgk") including the Rollastar and beet rollers),
4. Obviousness of claim 1 over cgk and Spatz,
5. Obviousness of claim 1 over the Pearson Patent and cgk.
Mr Scott's Appeal
6. Obviousness of claim 17 over cgk (including (a) Rollastar, (b) Dahlmann rollers and (c) beet rollers);
7. Obviousness of claim 17 over cgk and Spatz;
8. Obviousness of claim 17 over cgk and Kverneland.
Grimme's Respondent's notice
9. Claim 18.
10. Obviousness of claim 24.
Contributory infringement under s60(2) of the Patents Act 1977.
11. Does the sale of all or any machines with steel clod rollers infringe pursuant this provision?
Unjustified threats under s70 of the Patents Act 1977.
12. Did Grimme make unjustifiable threats?
Principles of claim construction
The Skilled Addressee
 …. He or she would be a designer of agricultural machinery, with experience of potatoes and other root crops. The skilled addressee would not necessarily be a potato specialist, although he would be familiar with the generally known existing machines for harvesting and separating potatoes.
The Common General Knowledge
Rollastar and Pearson
One well known potato separator ("the Rollastar") used transverse rotating star wheels which rotated in the same direction ("co-rotated"), carrying the potatoes along the tips of the stars and allowing some earth to fall between them. After the star wheels came a clod roller rotating in the opposite direction to the star wheels ("counter-rotating"). This pair of counter-rotating rollers nipped the haulm and other material and dragged it down between them. The crop was passed over the clod roller for further treatment (Judgment ).
The details of the operation of the Rollastar machine. These would typically have two rows of stars followed by a clod roller, followed by a repetition of that series. The star wheels co-rotate and the clod roller counter-rotates. The axes of the two star rollers are in the same horizontal plane, whilst the clod roller is normally positioned below that plane. The position of the clod roller is highly adjustable to alter aggressiveness. The intention is that, in normal use, most of the crop will pass over the clod roller, typically glancing it on the way through. Raising the clod roller will increase aggressiveness, but crop landing in the space between the last star wheel and the clod roller, may be pulled through and therefore lost, [17(i)]
Rollastars tended to clog up in the wet and were only moderately good at extracting haulm (Judgment ).
So there was a clear motive to improve things over the Rollastar.
 A second well known type of potato separator was the Dahlmann. In contrast to the Rollastar, this machine had rollers with their axes aligned with the direction of flow of the crop rather than transverse to it. The axial rollers were arranged in pairs alongside each other. Each pair of rollers was counter-rotating. One roller in each pair carried a spirally arranged ribbed structure which was designed to operate as a worm or screw and carry the crop axially towards the discharge end. Originally these roller tables were built with bearings at both ends, but this resulted in build up of materials near the bearings at the discharge end. So the tables were modified so that the axial rollers were cantilevered from the input end.
 …. Dahlmann rollers tables were, by the priority date, viewed as superior [to the Rollastar] in dealing with wet conditions.
The details of operation of the Dahlmann machines. The predominant action of the Dahlmann roller was to convey material in the axial direction by the screw action of the ribbed roller. There would be some sideways movement as well. Dahlmann machines incorporated a device which temporarily reversed the direction of the rollers when a large stone was trapped between them in order to expel it and allow it to move on down the crop path. I shall call this the "Dahlmann reverser mechanism." [17(ii)]
Other matters of common general knowledge
iii) The haulm roller. This was a plain cylindrical roller positioned at the end of a web, usually close to and below the end of the web. It was known that if they were placed too high, and in the path of the crop, they would tend to pull the crop through in addition to the haulm: in other words they would be very aggressive.
iv) A variety of devices were in use for sugar beet (as opposed to potatoes) featuring tables of contra-rotating rollers and spiral rollers of more or less even size. The skilled person would be aware of these machines, but would understand that they are designed for more robust types of crop than potatoes.
v) The rollers in separating tables can be adjusted in their construction, position and speed of operation in a wide variety of different ways.
The Acknowledgment of the Prior Art
But to say that [the inventor] must also ascertain, under the penalty of his patent being bad, everything that preceded his invention, every approach from every side that persons have made to it, and must correctly indicate the little step which he has made in addition to these, … would be to require something of him which would be perfectly idle so far as regards utility to the public, and grossly unjust so far as the patentee is concerned. … If the combination which he has claimed and for which he asks a monopoly, is novel, that is sufficient. There is no obligation to go further and to state why it is novel, or what in it is novel, per Fletcher Moulton LJ in BUSM v Fussell (1908) 25 RPC 631 at p.652.
indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for examination, and, preferably, cite the documents reflecting such art.
The Description of the Patent
" The specification goes on to describe a machine in accordance with the invention in considerable detail, much of which is broadly irrelevant for present purposes. In short, a number of pairs of counter-rotating rollers are orientated transversely to the path of the crop. The first roller met by the potatoes carries "extension parts which extend beyond the cylindrical shell part and which are constructed as conveyor lips". This is shown in enlarged form in Figure 12 as follows:
 In the embodiment of Figure 12, the shell part 42 is elastically deformable, and is also connected to the hexagonal hub through resilient spokes 47 (in fact the spokes are more like walls as they have axial length, but the specification calls them spokes). This creates what are described as deformation chambers 49, which can be compressed during operation of the rollers. ..
 The second roller is shown as not having any projections or lips. It is said, in a passage bridging pages 8-9, that it may be provided with an even layer of elastomer. The operation of the pairs of smooth and lipped rollers is shown in Figure 15:
 The specification describes the nip between the rollers, generally indicated at 34, as the "working gap", and the V-shaped gap above this, indicated as 54, as the "gusset". In this gusset, a passage at the top of page 8 explains that the lipped roller imparts an "enhanced delivery feed movement to the potatoes disposed in the gusset" during each rotation. It is also said that the conveyor lips narrow the angle of the V-shaped gusset, and so "exert the intended conveyor pulse on the potatoes in the direction of conveyance". Accompanying clods and haulm are caught in the working gap 34 and ejected downwardly.
 The extent to which a separator carries out its task is called its aggressiveness. Too much aggression may cause the potato to be damaged; too little may not clean and separate the potatoes sufficiently. The patent explains at page 9 that the groups of rollers can be varied in their aggressiveness by varying their rotational speeds, either individually or collectively.
(a) An apparatus for separating potatoes from other materials such as earth, clods, stones, weeds or the like, particularly for potato harvesting machines,
(b) with a number of rolling bodies disposed beside one another on parallel axes,
(c) [forming] rotating groups driven in opposite directions in pairs and which jointly occupy a separating path extending from a material input end to a potato delivery end,
(d) characterised in that whichever is in the direction of the separating path the first rolling body of each group has a cross-sectional form which during each rotation exerts an amplified forward feed at least once on potatoes disposed at the area of intersection between the roller bodies of the group,
(e) and further characterised in that the roller bodies comprise an elastically deformable shell part,
(f) the first roller body of each group is provided on the periphery with at least one conveyor lip, rib or like extension part projecting beyond the contours of the cylindrical shell part.
characterised in that
whichever isthe first rolling bodyroller of each group in the direction of the separating path the first rolling body of each grouphas a cross-sectional form which, at least once during each rotation, exerts an amplified forward feed at least onceon potatoes disposed at the area of intersection between the rollers of the group
Construction of Claim 1
i) Whether the claim was limited to an apparatus which had rollers whose axes were transverse to the direction of flow The Judge rejected what he called a "light" suggestion from Mr Fernando that the claim covered an apparatus, like Dahlmann, in which the roller axes were in the same direction as the flow direction. There is no appeal on this point.
ii) Next, to provide more of a distinction from Rollastar (which in practice had two star wheels before each clod roller), Mr Chacksfield argued that features (b) and (c) required that there be at least two pairs of rollers with no possibility of anything (such as a second star roller) in between. The Judge rejected this proposed limitation. Again there is no appeal.
iii) There was an issue about "amplified forward feed," a feature of element (d). Did this require a "cylindrical potato contacting surface" or was it sufficient that the cross-sectional form of the roller provided discontinuous pushes to the potato at least once per revolution? The Judge held that no such surface was required: it was sufficient to comply with the claim if the cross-sectional area provided a discontinuous push at least once per revolution and that that push would be to a potato in the "gusset." We revert to this point a little later.
iv) Next there was an issue about whether the feature of element (e), that the "roller bodies comprise an elastically deformable shell part" meant that each roller of a pair had to be elastically deformable? The point mattered because Mr Scott's machine is sold in two variants, one with all rubber rollers and the other in which the first roller of a pair is elastically deformable but the second (clod) roller was of steel. The latter variant would be outside claim 1 (and so all the claims) if Mr Scott were right on this point, as indeed the Judge held. There is no appeal. This made and makes the point about s.60(2) of the Patents Act 1997 live (see below).
v) As to the requirement of element (f), that the first roller body is provided with at least one conveyor lip, rib or like extension part, the Judge held that there was no reason why the part "should not be a series of axially short projections." The part was not limited, as contended for Grimme, to projections which were substantially elongated in the axial direction. So the words did not exclude things like the star wheels of the Rollastar. This decision was attacked by Mr Chacksfield.
vi) Mr Chacksfield also raised another point, not expressly addressed by the Judge. This related to the requirement of element (f) that the rib part (we use that as shorthand for lip, rib or like extension) should project beyond the contours of the cylindrical shell part.
The particular cross-sectional form of whichever are [sic] the first pair of rolling bodies in group imparts to the potatoes a temporarily amplified forward feed.
Obviousness over Rollastar and/or Pearson
(a) amplified forward feed;
(b) cylindrical shell part;
(c) deformable clod roller;
Because he thought that item (b) was not present in Pearson but was present in the Rollastar machine he concentrated on obviousness over the latter.
 It is clear on the evidence that in normal operation of the Rollastar the whole purpose is to cause the potatoes to pass over the clod roller, and to avoid potatoes arriving in the nip, where, if they do so, they are likely to be dragged through with the clods and stones.
a) ribs having substantial axial length;
b) a cylindrical shell portion in the same plane as the ribs;
c) a deformable clod roller.
i) do away with the Rollastar's principal and intended means for removing stones and clods, namely by dropping them between the gaps as the potatoes are jiggled forward on the tops of the star points;
ii) instead decide that all the extraneous matter (mud, stones and haulm) is to be taken down between a cylinder and the clod roller;
iii) do away with Rollastar's method of self-cleaning;
iv) extend the fingers of the stars axially so as form ribs of the kind contemplated by the Patent, i.e. such that they provide an amplified forward feed;
(iv) make the clod roller deformable.
Obviousness over Spatz
The need for appellate caution in reversing the judge's evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge's overall evaluation. …. Where the application of a legal standard such negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation. per Lord Hoffmann in Biogen v Medeva  RPC 1 at p.45.
i) Spatz, a purely haulm removing device, could be modified so as to remove stones and mud as well as haulm, thus doing away with Spatz's "shaking device".
ii) The stones, haulm and earth can be transported by the rollers alone without the assistance of a pintle belt as shown by Spatz.
iii) Stones and earth can be drawn down between pairs of rollers if they are separated, thus doing away with Spatz's friction driving of one roller by the other.
iv) Ribs should project from one of the rollers so as to impart an amplified forward feed.
Obviousness over Dahlmann
Although Mr Mitchell stopped short of admitting impossibility, the evidence did not come close to establishing obviousness.
Conclusion on Validity and Infringement by Mr Scott's machine fitted with an elastomeric clod roller
a selling feature of our machine that you can have rubber and stainless and you can do all these different crops
(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.
(3) Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.
 It is clear that the steel rollers in Evolution machines could be replaced with rubber rollers. This would alter the aggressiveness of the machine. Mr Scott accepted that the machine and its rollers were designed with this in mind. This was one of the things which gave the machine the flexibility which he was striving for. I have no difficulty in finding on the evidence that Mr Scott knew, and that it was obvious to a reasonable person in the circumstances that the machines were both suitable for running with at least two pairs of rubber rollers, and so intended. Infringement is therefore established on this basis.
Section 60(2) and its origins
Prohibition of indirect use of the invention
1. A Community patent shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply within the territories of the Contracting States a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances, that these means are suitable and intended for putting that invention into effect.
2. Paragraph 1 shall not apply when the means are staple commercial products, except when the third party induces the person supplied to commit acts prohibited by Article 25.
Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practising a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.
Section 271(b) also makes anyone who "actively induces infringement liable as an infringer."
"(2) The proprietor of the patent may also invoke his exclusive right against any other person who supplies or offers to supply an unauthorised person with the means of carrying out a patented process relating to an essential element of the invention:
when these means are directed solely to carrying out such process or,
when the other person knows or ought to have known that these means are suitable and intended for carrying out the process."
Thus although there were changes, the key wording was essentially the same all those years ago. How it came to be drafted (or indeed who did it) we do not know.
The "means must be incomplete" submission
The requirement of knowledge
"Nor is "intended for" any too clear: would it cover, for instance, the case where the infringing use is just one of several, with the vendor neither knowing nor caring what any given purchaser intends the thing for; and would it matter, whether or not the vendor advertised it as capable of the infringing use?"
i) Whose intention is referred to? The possible candidates are the supplier himself, his direct customer or the ultimate user. Or perhaps no specific person at all – the inquiry being whether the "means" and the circumstances surrounding it being offered or supplied are such that some ultimate users will intend to use or adapt the "means" so as to infringe. We call this the "inherently probable" view.
ii) How specific must the intention be? Must it be a present settled intention at the time of alleged infringement? Or will a contingent future intention do? Here for instance a purchaser of Mr Scott's steel-rollered machine may say to himself: "I know I can change to rubber rollers. That may be handy if in some conditions the metal roller is not aggressive enough".
iii) When must the intention be formed? Must it exist at the time of the supply (or offer to supply) or can it be formed later?
It is implicit in this reasoning [i.e. that of Lewison J in Cranway v Playtech  EWHC 1588 (Pat)  FSR 3) that the relevant intention is not that of the supplier. In my judgment this is correct. S.60(2) makes it clear that there can be infringement not merely if the supplier knows that the means are intended to put the invention into effect, but also if that would be obvious to a reasonable person in the circumstances. That is inconsistent with a requirement of intention on the part of the supplier. Thus the relevant intention must be that of the person supplied.
Whether means are suitable for putting an invention into effect must be a purely objective test. But whether they are intended to put an invention into effect cannot be wholly objective. Only human beings can have intentions, although their intentions may be attributed to other legal persons, according to rules of attribution. Thus this limb of the test must depend on the subjective intention of someone. A supplier of essential means might reasonably be supposed to know what the intention of his immediate counter-party is. But it would be a far stronger thing to expect him to discern the intention of a person far down the supply chain. Moreover, at the time of the supplier's supply of the essential means the person who ultimately forms the intention to use the means to put the invention into effect may not be ascertainable and he may not have formed that intention. It thus seems to me to be more likely that s.60(2) was directed to a supply of essential means to a direct infringer rather than to another secondary infringer ….
"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."
 ….According to established statute of the senate, the intention of using the protected invention is a circumstance that is within the sphere of the buyer (Antriebsscheibenaufzug). However, the condition of indirect patent infringement is not met only when the buyer had already actually decided to use the devices in a patent-infringing manner and the vendor or supplied knew it. Rather, it is met when an intent to use the devices for patent-infringing uses is obvious to a third party based on the circumstances as a legal condition, in other words it must be obvious to the vendor or to suppliers of the devices suitable for use according to the patent. This is meant to facilitate verification of indirect patent infringement. This allows one to consider the condition as being in place when, from the point of view of a third party [the supplier] objectively considering the circumstances, a sufficiently certain expectation exists that the buyer will intend to use the offered or delivered devices for patent-infringing purposes.
 The subject matter of the infringing behaviour according to § 10 of the PatG (corresponding to Art. 26) is not participation in the violation by the buyer of the obligations to which it is subject according to patent law, but an actual infringing action by a third party. Accordingly, the senate came to the decision more than once that it is not necessary for direct infringement of the patent by the buyer - either attempted or successful - to occur for an indirect patent infringement to occur, but rather it is sufficient merely for an offer or delivery of suitable devices to have occurred provided that the subjective prerequisites of its intention for use according to the patent are met (citations omitted). In particular, in a legal, unsolicited first offer, an intention for the buyer to use the devices according to the patent will in general not exist in the form of a decision that has already been made. It will also consequently often be lacking objectively, and in any case will appear debatable according to the pertinent state of knowledge of the vendor. According to the nature of this intention as a condition which threatens a patent (citations omitted), the purpose of §10 of the PatG is, in this case as well, to protect the patentee from an impending infringement of its rights. Therefore, the regulation must take effect when it is sufficiently safe to expect, from the point of view of a third party, that the buyer will use the delivered devices in a manner according to the patent.
"24 The features outlined in the law for fleshing out the subjective condition (if one knows or if it is obvious according to the circumstances) thus provide the possibility of establishing the required state of knowledge of the vendor or supplier of the impending infringement of the rights of the patentee through two alternative routes. Either a third party knows that the buyer has intended to use the devices according to the patent, or such an intent is obvious to expect according to the circumstances of the individual case, such as because they are self-evident. Knowledge and obviousness are thus two ways to establish the required high degree of expectation of use of the devices according to the patent. In this light, the necessary high degree of expectation usually exists in particular when the vendor or supplier had itself proposed such use.
Lord Justice Keene: