Swarovski-Optik KG v. Leica Camera AG & Leica Camera AG, Court of Appeal, London, UK, 15 May 2014, Case no. [2014] EWCA Civ 637

The Court of Appeal has upheld the decision of the Patents Court, which held that Swarovski-Optik’s patent for a telescope design which provided for a wide field of view across all magnifications, was valid and infringed by Leica Camera. The Court did not permit Leica to raise additional grounds in the appeal.

Background
Swarovski owns European Patent (UK) no. 1 746 451, entitled “telescope with wide field of view and variable magnification” (the “Patent”). The Patent is directed to sighting telescopes or riflescopes and provides for a lens configuration which allows the user to view an area that is as large as possible across the entire range of magnification. Leica sold a range of riflescopes which were claimed to infringe the Patent: it claimed the Patent lacked novelty, was obvious over the common general knowledge and three prior art citations, was insufficient and contained added matter.

The Patent disclosed the use of a concave lens in addition to the standard arrangement of convex lenses in a telescope. This removed image curvature which appeared at lower magnifications and had the effect of reducing the field of view.

In May 2013, Mr Justice Vos rejected all of Leica’s attacks on the Patent, holding it valid and infringed (here). Leica appealed, alleging the judge had erred in his construction of the claims, and in relation to the novelty and obviousness findings. Leica also sought to raise additional grounds of appeal.

==========
Leica sought to introduce new grounds of appeal less than one month before the appeal hearing. The new grounds related to the construction of an integer of Claim 1, which read “with a maximum zoom greater than four times” and added matter. On construction, the issue was that a riflescope has only one zoom factor (the ratio of smallest to largest magnification), Leica contended that this integer was ambiguous – it was not possible to have a maximum factor greater than X. As such, it argued the claim was either invalid or could not be infringed – the word “maximum” had to be ignored, or the integer should have referred to “magnification” (rather than zoom factor). The trial judge had preferred the former construction.

Nearly a year earlier and before the trial, in an Opposition Division decision (to which Leica was a party), the reference to “zoom factor” was held to be added matter, which required the specification to be amended to limit the magnification. On this basis, Leica argued it did not infringe, as it had not been proven that the Leica riflescopes achieved the necessary magnification (the Opposition Division’s decision is under appeal).

Floyd LJ, who gave the leading judgment and with whom the other judges agreed, considered that the construction issue had no realistic prospect of success – the integer was nowhere near the exacting threshold for being truly ambiguous. The added matter point had been included in the grounds of invalidity, but had not been pursued. It could have been raised at any point, but was not, and could not now be raised on appeal.

The issue of claim construction was also considered, in particular the positioning of the concave lens within the telescope. This argument sought to place the prior art within the claim. Leica’s construction was not favoured, and the Court agreed with the judge’s construction. There was enough in the Patent to allow a skilled person to understand how the lens should be positioned within the telescope.

The trial judge described obviousness as the key issue for the case. In relation to the common general knowledge, field curvature was a known problem which could be counteracted by a convex lens. The judge did not consider the skilled person would regard field curvature to be a problem: the human eye could accommodate this. Optical designers were described as a “conservative group” who had not directed themselves to this problem, and this was supported by the evidence. The obvious positions for placing the lens would address the field curvature, but not enhance the field of view. Accordingly, the claimed invention was found to be inventive and this was upheld on appeal.

The second prior art citation related to a binocular design, which incorporated a concave lens to correct “off-axis aberrations” while still allowing the distance between the eye and the closest lens to be at least 10mm. The principles of the Patent were at play, but that was not enough to make the Patent obvious. The third citation also did not provide enough to place the concave lens in the relevant place.

The novelty case rested on an earlier riflescope, which Leica argued could be configured in a way which would fall within the claims, however these configurations were not the usual conditions that users of this riflescope would choose. It was held that on a proper construction of the claims, the riflescope was not caught and hence there is no anticipation. Accordingly, there was no need to consider the circumstances in which one could adjust the prior art in an unusual way and whether this would amount to the provision of clear disclosure or clear and unmistakeable directions to make something within the scope of the claims. Floyd LJ did, however, refer to this as ‘questionable’.

For these reasons the appeal was dismissed.

Read the decision (in English) here.

Head note: Scott Parker and Adrian Dykes