IP-2024-000057 - [2025] EWHC 1687 (IPEC)

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.

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.

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:

These are pages 14 and 15 from the instructions:

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.

JGL submitted that there cannot therefore be infringement under s.60(2) because no fitter will intend to put the invention into effect.

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.

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.