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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 >> Pozzoli Spa v BDMO SA & Anor  EWCA Civ 588 (22 June 2007)
Cite as:  BusLR D117,  FSR 37,  Bus LR D117,  EWCA Civ 588
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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 Lewison
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE KEENE
THE RT HON LORD JUSTICE JACOB
(a company incorporated under the laws of Italy)
|- and -
(a company incorporated under the laws of Belgium)
(2) Moulage Industriel de Perseigne SA
Henry Carr QC and Michael Hicks (instructed by Redd Solicitors LLP) for the Respondents
Hearing dates : 19/20 April 2007
Crown Copyright ©
Lord Justice Jacob:
The TRIPS point
i) Art. 32 of TRIPS provides:"An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available".
ii) This means that a full judicial hearing on the merits is called for. A preliminary screening system for weeding out cases with no real prospect of success as now provided by the Rules will not suffice for this purpose.
iii) Although TRIPS is an international Treaty and so does not itself form part of UK law, wherever it is possible for our courts to act so that the UK is not in breach of an international Treaty, they should do so. [I add that TRIPS is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972 (by virtue of SI 1995 No. 265) and so falls to be construed as it would be construed by the ECJ. That involves a purposive and teleological rather than literalist approach].
iv) Thus the other possible ground for granting permission to appeal, namely "some other compelling reason" (CPR 52.3(6)(b)) is brought into play. The compelling reason is that if permission is not given, the UK will be in breach of its Treaty obligations.
Should Permission be given?
Basic Uncontested Principles
 Thus the question of variants (immaterial or otherwise) is a step on the way to construing the claim. It is not a reason for extending the scope of the claim once it has been construed.
Where the application of a legal standard such as 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.
(1) The first step is to identify the inventive concept embodied in the patent in suit.
(2) Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question.
(3) The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention.
(4) Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise.
(1)(a) Identify the notional "person skilled in the art"(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Obviousness: Lions in the path and paper tigers
 Mr Carr submitted that the idea of overcoming a prejudice must consist in overcoming a false prejudice; in other words a mistaken technical belief that deters the unimaginative skilled person from pursuing a particular path. Mr Carr characterised this kind of false belief as a "lion in the path" (see Bunyan: The Pilgrim's Progress, The Third Stage: "Fear not the lions, for they are chained, and are placed there for trial of faith where it is, and for discovery of those that have none: keep in the midst of the path, and no hurt shall come unto thee."). In such a case the patent reveals that the belief was mistaken, and thus contributes to the art. If on the other hand the perceived technical problem exists in the same form both before and after the claimed invention, then the prejudice has not been overcome at all. In such circumstances overcoming the prejudice cannot be part of the inventive concept, although the technical means for dealing with the perceived problem can be. I accept this submission.
Invention can lie in finding out that that which those in the art thought ought not be done, ought to be done. From the point of view of the purpose of patent law it would be odd if there were no patent incentive for those who investigate the prejudices of the prior art.
(a) The person skilled in the art in this case
 someone who might wish to package discs or make or design the packaging for discs. Such a person might work for a media packaging company; or might be a customer who wanted a particular kind of packaging.
Although there had been a bit of a dispute about this below, that conclusion is not (and could not be) challenged on appeal.
(b) The Common General Knowledge ("cgk")
 It is agreed that the notional addressee would know about common forms of packaging CDs. At the priority date these included:
The Jewel Box. This was the standard container for one CD where the CD was retained by a central coupling known in the industry as a "rosette".
The Digipak. This had a plastic tray with a central rosette attached to a folder of cardboard that formed a back cover, spine and front cover. The Digipak had finger or thumb recesses around the periphery of the disc to assist in the removal of the disc.
The Brilliant Box. In the Brilliant Box there was a hinged tray which swung out from the outermost edge of the base and held two CDs each on a central rosette.
Plastic Sleeves. CDs were stored in envelopes and then inserted into ring binders.
Multi-disc Digipaks. These are Digipaks with a tray glued to both the front and back covers which contain more than one disc.
The multi-disc jewel box. This was a box with a central core element and front and back lids opening like a book.
The 2:1 tray. This was a tray with recesses for accommodating two CDs side by side. Since a tray made to accommodate one CD is virtually square, a tray made to accommodate two has dimensions in the ratio 2:1.
 In addition it was common for CDs to be packaged in cardboard sleeves. This form of packaging was used for CDs given away free with magazines and newspapers; and also for CD singles.
 A CD has a hole in the middle. The conventional method of retaining a CD within its packaging (apart from plastic or cardboard sleeves) was by means of a rosette fitted into the central hole. The rosette prevents the CD from moving laterally, and also prevents it from moving vertically. Rosettes differed in the details of their design; but all operated in essentially the same way. One or two people had given some thought to other means of retention (e.g. by peripheral clamping or tabs) but these were not part of common general knowledge.
 One of the sources of common general knowledge would have been the trade publication One to One. There was no relevant text-book.
 At the priority date there existed three main types of disc: optical discs, such as CDs, magnetic discs such as floppy discs, and mechanical discs such as vinyl discs. Magnetic discs, such as floppy discs, typically had their own integral packaging (i.e. the outer rigid plastic casing). There were other discs, such as "minidiscs" which were magneto-optical discs. These discs had integral packaging too.
 … other means of retention (e.g. by peripheral clamping or tabs) but these were not part of common general knowledge.
The degree of care which a person would give to a CD now or in 1994 depends upon the value of the information on it and the price at which it is sold. I do not agree that there was a prejudice in the industry against overlapping CDs whether partially or completely. I also do not agree that there was a prejudice in the industry against allowing the surfaces or the edges of the CD to come into contact with the packaging for a CD.
 … However, these drawbacks were ones that Mr Plumb himself was aware of in 1994. He also considered that these problems were generally known at that time.
Step (2) The inventive concept of the patent
The present invention relates to a container for a plurality of discs, particularly compact discs (13-4).
It is known that containers for a plurality of compact discs are generally constituted by a tray-like body that forms the side-by-side recesses or seats for accommodating the compact discs (15-8).
This arrangement causes the dimensions of the container to have a 2-to-1 ratio, so that said container assumes external dimensions that in addition to being scarcely effective from an aesthetic point of view are often awkward, since they do not allow to easily place the container in the areas where it is to be held (19-14).
The aim of the present invention is to solve the problem described above, by providing a container for a plurality of discs that allows to accommodate two or more discs and allows to remove them individually and to reduce the external dimensions, thus making it easier and simpler to position said container in the areas where it is to be held (120-26).
Within the scope of this aim, a particular object of the invention is to provide a container in which the external dimension ratio is such as to provide, in addition to a pleasant aesthetic effect, an easier use of the container (132-35)
So, two points are made – that you have to be able to get individual CDs out and that the shape looks better than a 2:1.
(1) Container for a plurality of discs, particularly compact discs,
(2) comprising a tray-like body
(3) defining seats for accommodating at least two discs,
(4) said tray-like body including a first region for accommodating at least one first disc
(5) and at least a second region for accommodating at least one second disc
(6) located at a higher level than said first region,
(7) the discs being axially retained in said seats,
(8) so that each of the discs can be individually gripped and axially detached for removal from said seats in which they are retained,
(9) characterised in that said at least one second disc is arranged in said second region so as to be spaced from,
(10) and to partially overlap said at least one first disc
(11) in an axially offset manner.
A feature of the invention is constituted by the fact, as shown in figures 2 and 3, that the tray-like body 10 defines a first region 20 for accommodating a first compact disc 21; said region has, in a per se known manner, peripheral recesses 22 that allow to remove the disc 21, which is retained, in a per se known manner, by a coupling element 23 that acts axially (237-43).
 Mr Mitcheson described the inventive concept embodied in the patent as:
"the provision of a container of simple construction for holding two or more compact discs where the height of the container is less than twice its width and where the discs are partially overlapped and spaced apart and where the discs are securely held and can be individually, easily and safely accessed."
 In my judgment this is too broad a description. What was new about the patent was not that it claimed a container for holding two or more discs where the height of the container was less than twice its width. Such containers were already known (e.g. the Brilliant Box and the multi-disc jewel box). What was new was that the discs were partially overlapped and spaced apart and that their axes were offset.
Rather, in my judgment, the claimed inventive concept was finding a way of reducing the height of the 2:1 container without exposing the discs to serious risk of damage.
Mr Mellor attacked that. He said it was far too wide. I think he was right. Moreover it in no way represents a précis of the claim. It is a statement of the problem addressed by the patent rather than a statement of the inventive concept. But ultimately I do not think that matters. Identification of the "concept" in this case was not crucial to the Judge's conclusion.
Step (3) Differences over the prior art
Step (4) Was it obvious over the differences.
(1) The patent teaches for the first time the idea of overlapping CDs without any form of protection between them.
(2) The Judge wrongly rejected the case that the skilled man would be prejudiced against overlapping by a fear that the CDs would be at risk from damage to their playing surfaces upon removal or replacement– particularly the "lower" one.
(3) The evidence which the judge accepted as establishing obviousness was tainted by hindsight. In particular, it is only if you have the idea of reducing the height of a 2-to-1 that it occurs to you that this can be done by overlapping and separating the discs.
(4) The Judge wrongly identified the inventive concept of claim 1 as: … finding a way of reducing the height of the 2:1 container without exposing the discs to serious risk of damage.
 In my judgment the evidence inexorably leads to the conclusion that if you wanted to reduce the height of a 2:1 container, it was obvious to overlap the discs and separate them physically. Working out how to do it would also have been obvious.
Starting with the HAVANT document, the skilled person, in an attempt to reduce the height of a container intended to contain at least two discs, would obviously, as taught in several of the quoted documents, and even without referring to these documents, have made the discs overlap, the first remaining at the bottom of the tray, sufficiently to gain space but also so that the discs can be easily taken from their support, and by leaving a space, determined by the height of the seat of the upper disc, so as not to deteriorate the discs and facilitate their withdrawal. Neither does the fact of adding a device for holding the disc and withdrawing it by its middle so that it remains fixed to the tray, demonstrate an inventive activity, as this device is already known.
That has the same essential reasoning as that of Lewison J.
Obviousness over Fujifilm
The floppies are laid, overlapping, in a tray. In the case of fig. 7 there is a stubby spigot for the central core of the disc. It does not grip the disc.
Overall conclusion on obviousness
"Discs being axially retained in said seats so that each of the discs can be individually gripped and axially detached for removal"
 The Defendants' product is called the "Double Push Tray". It consists of a single piece of moulded plastic. Each tray has a single recess with a flat floor. The recess can accommodate two discs. The discs are stored in the tray parallel to one another, and at an acute angle to the floor of the tray. Each disc is held at three points on its periphery. One disc is held by a slot cut into the vertical wall of the tray, and by two flexible tabs (one at roughly ten o'clock and the other at roughly two o'clock). The other is held by a slot in a pillar let into the floor of the tray and two tabs similarly positioned to those that hold the first disc. Both slots overhang the disc to some extent.
Axial retention implies that the disc can be moved neither upwards along the axis nor sideways. If the meaning of the expression 'axially' was that given by the company POZZOLI, it would be admitted when the discs can be moved sideways in the container, as no other feature addresses a peripheral or other holding of the disc, which is contrary to one of the aims of the invention. 'Another object of the invention is to provide a container that, by virtue of its particular constructive features, gives the greatest assurances of reliability and safety in use.
We cannot see matters as the Defendant does. In both the English procedural language and German translation, characteristic 4 as worded [i.e. that the discs be axially retained in said seats] can only be taken to mean that the discs are retained axially in the seats. This says nothing as to how they are retained or how, or where the means which retain the discs are arranged. It is not specified, in particular, that the discs are even retained axially by an axial (that is, in the axis of symmetry) retainer.
This understanding is supported by the specification of the patent at issue, which is also to be used in interpreting the claims, Art. 69 para. 1 EPC. Because, from what the specification states, the problem underlying the patent at issue is above all to provide a container for a plurality of discs which can take one or more discs and which at the same time enables them to be withdrawn individually (Exhibit K 2, p. 1, para 5). It is immaterial for this purpose whether the discs are retained by a component arranged [in the axis of symmetry], i.e. centrally, or whether this is done by components arranged otherwise. On the other hand, it is essential for a container which is to take a plurality of discs and CDs in particular that the discs retained are protected against movement in the axis of symmetry which could result in the discs being damaged or in disadvantageous noise. The other aims pursued by the teaching as explained in the patent at issue, such as being extremely rugged and reliable in use (cf. Exhibit K 2, p. 1 et seq), require the discs to be retained in an axial direction; on the other hand, the arrangement of the retaining means, and a central arrangement in particular, is not of essential importance. Nor is there anything else anywhere in the specification which can be taken to mean that the invention requires the elements retaining the discus have to be arranged centrally. An axially facing connection does not appear until sub-claim 9, in fact. The mere fact that the embodiment as in the invention shown in the diagrams of the patent at issue shows a coupling element 23, of which the specification states that the disc 23 is retained in this and that it acts axially in known fashion (cf. Exhibit K 2, p. 3, para. 5) does not contradict this. It merely shows that the teaching in the patent at issue can be achieved by way of such an arrangement. There is nothing in the patent at issue at this point which could be taken to mean that the patent at issue is restricted to such a centrally arranged retaining element either.
Seats and regions
The decisive point is not whether the partial surface of the container over which the at least one first disc is arranged and the partial surface over which the at least one second disc is located are located on different levels. Rather it solely the relative height arrangement of the discs in relation to one another which is of importance, which makes it possible to avoid containers in which the discs (CDs for example) lie side by side. … In defining 'region' the average person skilled in the art will therefore focus on the three-dimensional space in which the at least one first disc is accommodated in relation to the at least one second disc so that according to characteristic 2 b) cc) [i.e. what is (6) in the Judge's breakdown] the only important thing is whether the at least one second disc lies above the at least one first disc. Whether, in addition, the partial surface of the container beneath the at least one second disc lies at a higher level than the partial surface of the container below the first disc is immaterial.
An important feature of the invention is constituted by the fact that the tray-like body defines, at the bottom, a first flat surface 111 and a second flat surface 112 arranged side by side at different levels.
Mr Mellor submits that this only relates to the second embodiment with the swing-out tray. It is true that it appears in a passage concerned with that embodiment, but I do not see that it would be read as of limited application.
The two regions mentioned in the patent are therefore not virtual regions intended to only define the position of the discs in relation to each other, but actual regions physically located in the tray, contrary to what the company POZZOLI maintains.
This arrangement is a structural and essential feature of the invention and makes it possible to achieve the aim, that is to reduce the dimensions of the container and allow the discs to be taken out independently of each other, the first being laid on a 'step' and sufficiently spaced from the second.
Lord Justice Keene:
Lord Justice Mummery: