Author: Paul England (Taylor Wessing LLP)
AP Racing Ltd v Alcon Components  EWCA Civ 40, Court of Appeal, England and Wales, 28 January 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu052, first published online: April 25, 2014
The Court of Appeal has overturned the first instance decision to hold that a disk brake caliper patent does not disclose added matter.
In AP Racing, the patent application and granted patent in question are for disk brake calipers used in motor vehicles, and particularly the asymmetrical peripheral stiffening bands (PSBs) associated with the caliper body embodied in the application as having a ‘J’ or hockey stick shape. The granted patent contains materially the same disclosure as the application, but the following feature of claim 1 of the granted patent is not disclosed in the application ‘in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan’.
This feature of the claim gave rise to two points of dispute:
* Is there a clear and ambiguous disclosure in the application of PSBs asymmetric about the lateral axis of the caliper body?
* Nonetheless, if only a class of generally hockey stick shaped PSBs is disclosed in the application, does the claimed feature contain added matter?
On issue 1, the Court of Appeal has held that, although not expressly stated in the application, it would be abundantly clear to the skilled reader that the PSBs were, individually, asymmetric about a lateral axis of the caliper body, and the presence of the PSBs had the effect of giving the overall shape of the caliper body an asymmetric appearance.
In this case, the application would be understood by the skilled person as disclosing that the asymmetrical design of the PSBs is significant in imparting stiffness to the caliper, and that the hockey-stick shaped PSBs are ‘necessarily asymmetrical’. It must then be asked whether any disclosure has been added to this in the granted specification. The description of the PSBs in claim 1 as ‘asymmetric’ has to be read as part of that disclosure. From this, the skilled person would understand that the claim covers asymmetric PSBs generally. The skilled person would also understand that the PSBs are exemplified by the hockey-stick shapes described in the specific embodiments. The skilled person would not, therefore, learn any new information about the invention from the granted patent.
The Court of Appeal appears to say in A P Racing that the skilled person would understand the breadth of the claim in question to be supported by a coextensively broad disclosure in the application. Although the Court of Appeal does not say so, the case invites comparison with sufficiency cases in which the principle of an inventive concept derived from the specification can have a general application across a claim.