Case No. IP-2018-000199

The law 92.I here set out paragraph [66] of Lord Neuberger’s judgment in Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48. Having considered, among other cases, Improver Corp v Remington Consumer Products Ltd [1990] FSR 181 (from which had been drawn the “Improver questions”) and Eli Lilly & Co v Ratiopharm GmbH (Case No. 6 U 3039/16), 18 May 2016, Oberlandesgericht Munich, Lord Neuberger said: “[66] In these circumstances, given the weight that has been given by courts in this jurisdiction (and indeed in some other jurisdictions) to the three ‘Improver questions’, I think it must be right for this court to express in our own words our reformulated version of those questions. In doing so, it is right to emphasise, as Lord Hoffmann did in KirinAmgen [2005] R.P.C. 9, at [52], that these questions are guidelines, not strict rules (as indeed the Oberlandesgericht indicated in Case No. 6 U 3039/16, when saying that it was ‘generally’ true that ‘three requirements must be met’). While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows: (i)Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? (ii)Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? (iii)Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was ‘yes’ and that the answer to the third question was ‘no’.” 93.As Lord Neuberger made clear in his subparagraph (i), the “invention” he refers to in the three reformulated questions is the inventive concept. The Inventive Concept 94.There was a brief debate about the precise meaning in law of the inventive concept of a claim and whether it differed in the alternative contexts of the doctrine of equivalents, obviousness and disputes as to entitlement to a patent, a matter I discussed in BDI Holding GmbH v Argent Energy Ltd [2019] EWHC 765 (IPEC). Counsel disagreed about this but it is of limited relevance here. Both counsel went forward on the basis that the inventive concept is the new technical insight revealed by the invention as claimed, in the context of the specification as a whole, as it would have been perceived by the skilled person at the priority date. The common general knowledge of the skilled person will be an important influence on this perception. 95.The Patent itself is of no assistance in determining the inventive concept. As I have noted, it begins with an inaccurate statement of the problem which the invention is said to solve, namely the need for a temporary fastener and temporary fasteners were by common consent part of the common general knowledge at the filing date. 96.Kwikbolt’s pleaded the inventive concept of claim 1 this way: “The removable blind fastener is inserted as a unit into apertures in two or more workpieces, with the first member head abutting a face of the proximal workpiece. Rotating the screw member in one direction slides the second member towards the first member, biasing the fingers outwardly such that the finger heads engage a face of the distal workpiece, and draw the workpieces together. Rotating the screw member in the other direction reverses this operation, disengaging the fastener from the workpieces and allowing the fastener to be removed as a unit from the workpieces.” 97.Although the pleading was qualified in that it was made pending expert evidence and/or such further points as may emerge, in closing Mr Vanhegan confirmed that Kwikbolt’s statement of the inventive concept of claim 1 remained unchanged. 98.Airbus’s version of the inventive concept was this: “A three piece removable blind fastener the configuration of which ensures that the bulk of the fastener is below the top surface of the work-piece. More specifically this is achieved by having a first member comprising an elongate body with a head at one end, which is insertable through an aperture in each of the two workpieces which need joining together such that the head of the first member is located against a face of one workpiece.” 99.The doctrine of equivalents as explained in Actavis requires the variant to be specified. This will be the invention of one of the claims of the patent in suit with one or more integers missing or modified. In the simplest case one integer of the claim is missing in the variant – this will be the integer in issue. The parties will know what that integer is and each may tend to tailor its inventive concept accordingly. If so, the integer in issue is liable to be irrelevant to the inventive concept advanced by the patentee but central to the inventive concept advanced by the alleged infringer. 100.The variant in issue here is a removable blind fastener with all the features of claim 1 save integer 1(8): the head of the screw member is not adjacent to the head of the first member. 101.Kwikbolt has drafted its inventive concept so as to conspicuously omit integer 1(8). When the reformulated Improver questions in Actavis are put by reference to Kwikbolt’s inventive concept and the variant in issue here, the answers favour Kwikbolt. 102.Airbus sought to hedge its bets. The inventive concept was apparently intended to highlight three features of claim 1, making any or any combination of them central. They are: (a) having the bulk of the fastener below the top surface of the workpiece, (b) the first member having an elongate body and (c) having the first member insertable through an aperture in each of the two workpieces while the head of the first member is located against one workpiece. The second of these is irrelevant on my findings above. The third is difficult to understand. As shown in Figures 3A and 3B of the Patent the first member is not insertable through an aperture of both workpieces, only the upper workpiece. I do not see that it must be insertable through both. I will come back to the first. 103.The important point, in my view, is that a correct assessment of the inventive concept cannot be achieved with the variant in mind. The correct identification of the inventive concept must be done through the eyes of the skilled person, who has no notion of what the variant is. The skilled person has only the relevant claim, the specification as a whole and his or her common general knowledge to work with. Only after the inventive concept has been identified does the variant and with it the integer(s) in issue come into play so that the three Actavis questions (the reformulated Improver questions) may be considered. 104.As to Kwikbolt’s inventive concept, Mr Jack pointed out that it reads on to a fastener which formed part of the common general knowledge, known as the “threaded Cleco”, the structure of which Mr Jack explained in his first report. He was not challenged on this evidence. Consequently the skilled person would not have adopted Kwibolt’s assessment of the inventive concept of claim 1 of the Patent. 105.With regard to Airbus’s inventive concept, I was shown Kwikbolt’s PCT Application, publication no. WO 2009/095640 A1. It takes priority from the UK application for the Patent. Its specification is more developed than that of the Patent. The description of the prior art refers to a Figure 1 (not in the Patent) which illustrates what is described as a conventional fastener. It states: “As can be seen from Figure 1, the bulk of the fastener is above the top surface of the work-piece and is therefore exposed and vulnerable and presents an obstruction on the surface of the work-piece. This is a particular problem in automated assembly processes; tool heads sweep rapidly across the surface of the materials and protruding fasteners will impede the movement of these automated tools. Another problem with the prior art shown in Figure 1 is that the maximum clamping pressure is determined by the strength of the internal spring.” 106.Of course, the skilled person is not taken to have read this PCT Application when hypothetically considering the inventive concept of the Patent. However, the PCT Application is Kwikbolt’s own representation and provides a potential guide as to what the skilled person would have understood the inventive concept of the Patent to be, viewed through the lens of his or her common general knowledge. The first two sentences of the passage I have quoted are consistent with what Mr McKay had to say. He confirmed in crossexamination that at the priority date the skilled person would have been interested in making a fastener compatible with automated machinery used in aircraft assembly. Generally, if the fastener was proud of the workpiece surface this complicated the programming of automated machinery, requiring the machinery to dodge the fasteners. Further, there was no evidence of a prior art fastener within the skilled person’s common general knowledge which was blind, removable and which did not protrude above the surface of the workpiece when in clamping mode. 107.In respect of the final sentence of the passage I have quoted from the PCT Application, I am not able to reach any conclusion on the evidence as to how the skilled person would have regarded the clamping pressure of a fastener according to claim 1 of the Patent when compared with blind removable fasteners within his or her common general knowledge. 108.The advantage of a removable blind fastener which does not protrude above the upper workpiece is broadly consistent with the first feature which Airbus chose to highlight in its inventive concept, but I do not see why that feature should be characterised as having the bulk of the fastener below the top surface of the workpiece. I think a more accurate characterisation is that in clamping mode the fastener is substantially flush with the upper surface of the upper workpiece. 109.I take the inventive concept of claim 1 of the Patent to be the technical insight that a blind removable fastener having the features of claim 1 will be an improvement over blind removable fasteners of the prior art in that in clamping mode its upper surface will be substantially flush with the upper surface of the upper workpiece. 110.The significance of this is that having the screw head adjacent the first member head, in other words having integer 1(8), is an important part of implementing the inventive concept. If the screw head is not adjacent to the head of the first member, the head of the first member must then be at the distal end of the first member (from the perspective of the technician), where it bears on the upper workpiece. In that event the first member will stand proud of the workpiece in clamping mode. 111.Taking the inventive concept of claim 1 and the variant as I have identified them, the answer to the first Actavis (reformulated Improver) question is that the variant does not achieve the result of the inventive concept at all. The Centrix Fastener does not exploit the inventive concept of claim 1. The scope of claim 1 is not extended by the doctrine of equivalents to cover the Centrix Fastener.