Tuesday, 15 December 2009

‘Leave all love and 'ope behind, out of sight is out of mind’

Authors: Alex Batteson and Ian Karet (Linklaters)

Citation: Journal of Intellectual Property Law 2009, doi:10.1093/jiplp/jpp173

Folding Attic Stairs Limited v The Loft Stairs Company Limited [2009] EWHC 1221 (Pat) 9 June 2009

The Patents Court (England and Wales) considered the terms ‘preset’ and ‘predetermined’ and interpreted the expression ‘made available to the public’ under Article 54 European Patent Convention (‘EPC’).

Legal Context

Construction of patent claims

In Kirin-Amgen Inc v Hoechst Marion Rousell Ltd [2004] UKHL 45, Lord Hoffmann said:
48. The Catnic principle of construction is therefore in my opinion precisely in accordance with the Protocol. It is intended to give the patentee the full extent, but not more than the full extent, of the monopoly which a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim.
Anticipatory disclosures

Article 54 EPC states:
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. ...

Folding Attic Stairs (FAS) owned a patent for a process for manufacturing a folding attic stairway. It sued The Loft Stairs Company and its owner for infringement; the defendants counterclaimed for revocation on the grounds of anticipation and obviousness.

The technology concerned stairways for accessing roof spaces or attics of buildings. In their simplest form, these stairways involve the insertion of a generally wooden and rectangular frame within an aperture or ‘ope’ created between the ceiling joists. The following example (not specifically cited as prior art in the proceedings) was employed by the deputy judge as an illustration:

The stairway is provided in three hinged sections. The uppermost is fixed to a trapdoor, being hinged to the frame and spring-biased towards it by means of folding metal support arms. When not required for use, the stairway is folded up and the metal arms force the folded stairway into a nesting position above the ope. The arms also act as a counterbalance when folding and unfolding the stairway.

The widths between ceiling joists, and therefore the ope widths that need to be accommodated, vary from building to building. Rather than manufacture the stairways with varying widths to fit each type of ope width that might be encountered, which would have been too expensive, the prior art settled on a standard width and adjusted for the difference by bending the metal support arms. A problem with the prior art was a limit to the width that could be tolerated by bending. If the ope width departed too far from the standard, the arms were unable to operate freely and more strain was applied to them, eventually leading to failure of the pivot joints. The patent sought to solve these problems as follows:

It introduced an ‘inner frame’ [in addition to the ‘outer frame’ (6) which remained inserted in the ope] and attached the metal support arms (19) to the long sides (or side beams) (14) of the inner frame rather than the top section of the stairway (30). Thus, the width of the inner frame could be varied during the course of manufacture to accommodate various ope widths by varying the length of the end beams (16, 17) of the inner frame. This avoided the need to bend the metal support arms. The key point was that the stairway could remain of standard width.

Claim 1 of the patent reads (emphases supplied by the deputy judge):
A manufacturing process for manufacturing a folding stairway comprising the steps:
forming a rectangular outer mounting frame for complementary engagement and mounting within an associated rectangular ceiling ope of a predetermined size, the outer frame having a pair of spaced-apart side members interconnected by end members extending between associated ends of the side members;
forming an inner stairway carrying frame for pivotally mounting on the outer frame for movement between a nesting position within the outer frame and a downwardly extending in-use position hanging downwardly from the outer frame, the inner frame having a pair of spaced-apart side beams interconnected by an associated pair of spaced-apart end beams, connecting the side beams to the end beams such that each side beam is spaced a preset distance inwardly of the side members of the outer frame when the inner frame is mounted within the outer frame in the nesting position;

preparing an extendable stairway which is foldable between a collapsed stored position for nesting within the outer frame and an extended in-use position;

mounting the inner frame within the outer frame by securing a hinge between an outer frame end member and an end beam of the inner frame thus pivotally mounting the inner frame on the outer frame;

mounting a folding support arm between each side beam on the inner frame and an associated side member on the outer frame, each arm being pivotally mounted on each frame and being foldable intermediate its ends between an extended position corresponding to the downwardly extending in-use position of the inner frame and a folded position corresponding to the nesting position of the inner frame,

each arm having bias means for urging the arm towards the folded position for retaining the inner frame in the nested position within the outer frame; and

mounting an inner end of the stairway between the end beams on the inner frame such that the stairway is foldable between the collapsed and extended positions when the inner frame is in the in-use position.

Claim construction

The deputy judge summarized the claim as follows (emphasis transposed from that applied to the full claim above): a manufacturing process for making folding stairways in which you
make an outer frame ‘for complementary engagement and mounting within’ a given ceiling ope,
make an inner frame (for carrying the stairway) by connecting side beams to end beams ‘such that each side beam is spaced a preset distance inwardly of the side members of the outer frame’,
make a foldable stairway that can nest within the outer frame,
hinge one end of the inner frame to one end of the outer frame,
mount spring-biased foldable support arms, one end pivoted to the side beam of the inner frame, the other end pivoted to the side beam of the outer frame, and
mount one end of the stairway between the end beams of the inner frame so that it can fold up in use.
The deputy judge held that a ceiling ope of a predetermined size meant the size of the given ope in which the stairway was to be fitted; effectively, an ope of a size predetermined by the house-builder. He distinguished Nikken Kosakusho Works v Pioneer Trading Company ([2005] EWCA Civ 906), in which Jacob LJ expressed surprise that the words ‘annular groove of predetermined depth’ could appear in a patent claim because the expression begged the question. He did not believe that Nikken criticized the use of the word ‘predetermined’ as such, not least because the words ‘predetermined’ and ‘preset’ very frequently appeared in granted patent claims. In Nikken, it was impossible, even following a reading of the patent as a whole, to deduce the purpose of having a groove of predetermined depth and according to which criterion the depth fell to be predetermined.

Spaced a preset distance meant that the separation between the side beams of the inner (14) and outer (6) frame, respectively, was chosen by the manufacturer (or one to whom he left the decision) with the aim of coping with various ope widths while avoiding excessive bending or cranking of the metal arms. Such a construction would be reasonably certain for third parties: a third party manufacturer would know whether he infringed the claim if he was presetting the distance between the respective side beams himself (in order not too bend the arms too much).

The judge rejected the idea that words of intent should not be used in patent claims. There was nothing in the EPC to support such a proposition. Moreover, the burden would be on the patentee, not the third party manufacturer, to prove the necessary intent. The deputy judge drew an analogy with so-called ‘Swiss-style’ claims in the form ‘use of a known ingredient X for making a medicine for treating disease Y’. He suggested that this really meant use of X with the intention of treating disease Y. If that was permissible in pharmaceutical cases, he saw no reason why it should not be in other industries.


FAS had invited an Irish Government Minister and a newspaper photographer to its factory in order to publicize a recently obtained business accreditation. The visit took place before the priority date of the patent. A prototype of the invention was on display in the factory on the day of the visit. A photographer took a photograph of the owner in front of the prototype; this was subsequently published in a newspaper, again before the priority date of the patent.

The deputy judge found as a fact that the photographer and Minister ‘could have gazed at all parts of the prototype’ if they had wanted to and were free to do so. The judge also found as a fact that no terms of confidentiality had been imposed on the photographer or the Minister, so that they ‘were free to impart to others whatever they did perceive and were able to recall’. However, it was relevant that there was no evidence that the photographer or Minister had in fact inspected the prototype ‘in any detailed sort of way’ and that it was unlikely that they would have had any interest or motivation to do so.

The publication of the photograph was not an anticipation as it did not depict the prototype in full. The question was what would the skilled person have discerned from the photograph. Given the problem addressed by the patent, the judge held that it was not only a patent for a process for manufacturing folding stairways but, based on a purposive construction, for doing so on a repeat basis. Thus, he identified the person skilled in the art as a manufacturing carpenter. It was necessary to avoid defining the common general knowledge to be attributed to that person too narrowly—there was no recognized profession of designing folding attic stairways. Thus, at the filing date, the skilled person would have been only vaguely aware of folding stairways in general terms; the common general knowledge did not include the prior art. The judge found that the photograph would not have divulged to such a skilled person the need to vary the width of the inner frame in accordance with that of the outer frame. He also held that the disclosure of the prototype to the Minister and photographer did not anticipate the claim. This was because the prototype product could not have anticipated a claim to a manufacturing process since it could not have disclosed to the skilled person the need to vary the side beam spacings.

The judge accepted that if the prototype had been in a public place, for example, a street, where anyone might have stopped to examine it, its design would have been deemed to have been made available to the public. However, the judge decided that the prototype was not in a public place at all. It was relevant that it was available for viewing only by a small and defined class, which was uninterested in manufacturing attic stairs or, moreover, the existence of the prototype (Lux Traffic Controls v Pike Signals [1993] RPC 107 distinguished). If information that is available for viewing in private premises by a small and defined class of visitors is to become part of the state of the art, that information must actually be imparted to at least one human mind which is free in law to divulge it to anyone else. It was not enough that it could have been imparted but was not. There was no irrebuttable presumption that information capable of being perceived by persons on private premises was in fact perceived by them, if the circumstances were such as to make it unlikely that those persons were interested in the subject matter. That would amount to an unnecessary legal fiction. On the facts, the judge found that it was unlikely that either the photographer or Minister would have been able to recall the spaced side beams of the prototype.

Practical Significance

The deputy judge seems to have found it important that the disclosure was on private premises. However, it is not clear how this decision fits with previous decisions. In Lux, Aldous J. said: ‘... it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public’. In G01/92 Availability to the Public [1993] EPOR 241 at 243–244, the Enlarged Board said:
‘There is no support in the EPC for the additional requirement ... that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure. According to Article 54(2) EPC the state of the art shall be held to comprise everything made available to the public. It is the fact that direct and unambiguous access to some particular information is possible, which makes the latter available, whether or not there is any reason for looking for it. ... The introduction of such an additional requirement would remove a commercially available and reproducible product from the public domain. It would mean an unfounded deviation from the principles applied in respect of the other sources of the state of the art as defined in Article 54(2) EPC and it would obviously represent an element of subjectivity leading to uncertainty in applying the concept of novelty as defined in this Article’.
If correct, this decision appears to introduce state of mind as an element in the question of novelty, which may lead to uncertainty. However, the facts are unusual and cases like this should be infrequent.

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