• House of Lords Burns the Midnight Gas

    Lord Hoffman has been busy. Not many patent cases go all the way to the House of Lords but in the space of two weeks we have had two judgements. We have already reported one (Amgen v. TKT). Now we report the other.

    Sabaf SpA v. MFI Furniture Centres Ltd (14 October 2004, HL, unreported) involved two points of law. The first was the important question of obviousness in a combination claim. Where an invention resides in a combination of features each in itself new but obvious, does one analyse the obviousness of the whole, or the obviousness of each of the parts? The second point at issue was whether the Italian supplier who supplied MFI in the UK was an “importer” of the goods (and therefore an infringer of the patent), where the more evident “importer” was the UK customer.

     

    OBVIOUSNESS

    Without dwelling on detail, the patent was for burners for gas cookers and hobs. The burner had certain features that gave it a low profile so that it could be used in a flat hob, which is a valuable attribute for a modern kitchen work surface. This goal was achieved through two features which we shall simply call A and B.

    • A was obvious having regard to two documents W and X.

    • B was obvious having regard to two documents Y and Z.

    • W and X did not suggest B.

    • Y and Z did not suggest A.

     

    Was the combination of A and B obvious?

    The House of Lords said you first have to decide whether you are dealing with two inventions or one. Two inventions do not become one invention because they are included in the same hardware. If two integers interact or there is synergy between them, they constitute a single invention. But if each “performs its own proper function independently of any of the others” then each is a separate invention for purposes of assessing obviousness.

    On the facts, there was nothing inventive in the specific arrangement or design of the combination. Only the separate inventive contributions of the separate features A and B were in question and as these were obvious, the invention as a whole was obvious.

     

    IMPORTATION

    In the earlier years of their contractual relationship, the Italian supplier, Meneghetti, loaded the hobs on to MFI’s lorries in Italy, and MFI imported them into the UK. Meneghetti was not importing goods into the UK and was not an infringer.

    In 1998, MFI stopped sending their own lorries and asked Meneghetti to arrange for transport to the UK. Did this make Meneghetti an importer? Title to the goods passed to MFI in Italy. MFI paid for the transport and insurance. The House of Lords took the view that MFI was still, without doubt, importing the goods, and that there could be only one importer, so Meneghetti was not “importing” and therefore not infringing. Allegations that Meneghetti was participating in the act of importation and therefore jointly liable as a secondary party had been dropped.

     

    Comment

    The trial judge at first instance, Mr. Justice Laddie, had applied a doctrine from British Celanese v. Courtaulds (1935) 52 RPC 171, 193, which he called “the law of collocation”:

    . . . a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of a working inter-relation brought about by the collocation of the integers.

    The House of Lords said that does not amount to a qualification of, or gloss upon, or exception to the test of obviousness, but approved passages in the EPO Guidelines (Chapter IV, Section 9.5 and Chapter IV, Annex 2.1) expressing the same principle, and found the judge had applied the principle within the well-established Windsurfer analysis for obviousness (Windsurfing International v. Tabur Marine [1985] RPC 59, 73-74).

    Windsurfer does not give a test for obviousness, merely a structured approach. Sabaf v. MFI represents one of a number of tests that have to be selected and applied according to the facts of the situation. Had there been a modicum of interaction (or even synergy) between the features in achieving an elegant overall design or a design that gave ease of maintenance (or some other advantage), the outcome might have been different.