Stretchline Intellectual Properties Limited v. H&M (Hennes & Mauritz) Limited, UK, Court of Appeal, McCombe and Floyd LLJ, 30 March 2017
To what extent should the claims of a patent be construed so as to make a patent valid over the prior art? That was the critical question at the heart of H&M’s appeal from a judgement of Carr J in the High Court which had found that H&M had breached the terms of a settlement agreement entered into between H&M and Stretchline.
The settlement agreement had come about as a result of proceedings which Stretchline brought against H&M in 2010. Proceedings for breach of the settlement agreement were commenced in March 2013. In the course of those proceedings it was held that the terms of the settlement agreement precluded H&M from challenging the validity of the patent which underlay the settlement agreement. Subsequently in November 2015, Carr J found that on the basis of his interpretation of the patent underlying the settlement agreement, H&M had breached the terms of the settlement agreement. H&M sought to challenge Carr J’s interpretation of the patent.
Giving the lead judgement of the Court, Floyd LJ stated that the UK approach to claim construction is that set out by Lord Hoffmann in Kirin-Amgen Inc. and others v Hoechst Marion Roussel and others [2005] RPC 9 which required the Court to determine what the skilled person would understand the patentee using the language of the claim to mean. The principles to be applied were those summarized in Virgin Atlantic Airways v Premium Aircraft Interiors UK [2010] RPC 8 at [5].
In Beloit v Valmet (No 2) [1995] RPC 255, Jacob J, as he then was, had explained at that it was not normally legitimate to construe claims using the prior art, because there was normally no reason to suppose that the patentee, when he set the limits of his claims, knew of any individual item of prior art. However, in that case the judge noted an exception where prior art is specifically acknowledged in the patent and purposive construction of a claim led to an interpretation which covered something which a patentee had already acknowledged was old.
Distinguishing the present case from the situation in Beloit, the Court noted that the present case did not concern interpretation of a claim which on a wider construction would read directly on to an item of prior art referred to in the patent specification so as to deprive the claim of novelty. Rather the Court was being invited to interpret a claim so as to avoid an attack based on an allegation of obviousness in the light of common general knowledge. The court declined to extend the exception identified by Jacob J in Beloit and dismissed the appeal concluding that the judge’s approach at first instance to claim construction had been correct.
A copy of the judgment can be read here.
Headnote: Nicholas Fox, Simmons & Simmons
