Pozzoli SPA v BDMO SA & Ors

Billions of CDs and DVDs are sold every year; so packaging them is big business. Pozzoli is an Italian company specialising in the manufacture and distribution of packaging for CDs and DVDs. As well as being a manufacturer and packager, Pozzoli is also a printer and makes the cardboard covers used in the type of packaging with which this case is concerned. In 1994 Pozzoli patented a design for a form of packaging for multiple discs. The patent was granted as EP (UK) 0 676 763.

Moulage Industriel de Perseigne is a French company. It manufactures and markets packaging for discs (in, amongst other places, the UK) and distributes them. BDMO is a Belgian company with UK offices which combines the plastic trays with cardboard covers and distributes them in the UK. I shall call them the Defendants. There was another Defendant, but the claim against it has been compromised. Among the products which the Defendants manufacture and distribute is a product called the “Double Push Tray”. It is an injection moulded plastic tray designed to hold two discs. The Double Push Tray is alleged to infringe the patent. There is another version designed to hold three discs. There is no need to distinguish between the two versions for present purposes.

European Patent (UK) 0 676 763 is entitled “Container for a plurality of discs, particularly compact discs” and claims a first priority date of July 1994.

In the usual way, the patent begins by setting out what is known. It contains the following passage:

“It is known that containers for a plurality of compact discs are generally constituted by a tray-like body that forms the side-by-side recesses or seats for accommodating the compact discs.”

The phrases “tray-like body” and “recesses or seats” are of some importance. The patent then lists the disadvantages of known methods of packaging multiple discs:

“This arrangement causes the dimensions of the container to have a 2-to-1 ratio, so that said container assumes external dimensions that in addition to being scarcely effective from an aesthetic point of view are often awkward, since they do not allow to easily place the container in the areas where it is to be held.”

The patent then sets out its objects. These are in summary:

The patent goes on to introduce a series of figures, of which the most important for present purposes are figures 2 and 3. The heart of the invention is described as follows:

“A feature of the invention is constituted by the fact, as shown in figures 2 and 3, that the tray-like body 10 defines a first region 20 for accommodating a first compact disc 21; said region has, in a per se known manner, peripheral recesses 22 that allow to remove the disc 21, which is retained, in a per se known manner, by a coupling element 23 that acts axially.

A further feature of the invention is constituted by the fact that there is a second region 30 for accommodating a second compact disc 31, said region being arranged at a higher level than the first region 20.

The second compact disc 31 is furthermore arranged so as to partially overlap the first compact disc 21 and remain spaced therefrom, so that the user can, as shown schematically in dashed lines in figure 3, remove either disc without difficulty.

The partial overlapping of the discs, while keeping them mutually spaced, allows to significantly reduce the overall size of the container and most of all to reduce its dimension ratio.”

Figure 2 is reproduced below.

A side view of this embodiment is shown in figure 3, which is reproduced below.

In order to understand some of the arguments about the interpretation of the patent it is also necessary to quote some other parts of the patent and to reproduce figures 4 and 5.

Figure 4 shows a container for 3 discs. In this embodiment two discs are held in a hinged tray. In figure 4 the hinged tray is in a closed position. In figure 5 it is shown open. The patent describes this embodiment as follows:

“In this case, a swing-out frame 40 is provided at the second region 30 and is pivoted at one edge of the tray, said frame supporting a second compact disc, again designated by the reference numeral 31, on one face, and a third compact disc, designated by the reference numeral 41, on the other face.

As clearly shown in the figures, in order to remove either one of the compact discs it is sufficient to overturn the frame 40.

For the sake of completeness in description, it should also be added that the conventional recesses allowing to insert a finger to remove the compact disc are provided both at the second region 30 and at the peripheral regions of the frame 40.”

The specification concludes:

“The invention thus conceived is susceptible of numerous modifications and variations, all of which are within the scope of the inventive concept.

All the details may furthermore be replaced with other technically equivalent elements.

In practice, the materials employed, as well as the contingent shapes and dimensions, may be any according to the requirements.”

The claim with which I am concerned is claim 1, which is as follows:

“Container for a plurality of discs, particularly compact discs, comprising a tray-like body (10,110) defining seats for accommodating at least two discs, said tray-like body (10,110) including a first region (20) for accommodating at least one first disc (21, 121, 122) and at least a second region (30) for accommodating at least one second disc (31, 131, 132) located at a higher level than said first region (20), the discs (21, 31, 121, 131, 122, 132) being axially retained in said seats, so that each of the discs (21, 31, 121, 131, 122, 132) can be individually gripped and axially detached for removal from said seats in which they are retained, characterized in that said at least one second disc (31, 131, 132) is arranged in said second region (30) so as to be spaced from, and to partially overlap said at least one first disc (21, 121, 122) in an axially offset manner.”

There is no dispute about the approach to the construction of the patent. The principles were conveniently summarised by Jacob LJ in Technip France SA’s Patent [2004] RPC 46. The principles, slightly modified by Pumfrey J in Halliburton Energy Services Inc v. Smith International (North Sea) Ltd [2006] R.P.C. 2 at paragraph [68], are as follows:

“(a)

The first, overarching principle, is that contained in Art 69 itself. Sometimes I wonder whether people spend more time on the gloss to Art 69, the Protocol, than to the Article itself, even though it is the Article which is the main governing provision.
(b) Art 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.

(c)

It follows that the claims are to be construed purposively -- the inventor's purpose being ascertained from the description and drawings.

(d)

It further follows that the claims must not be construed as if they stood alone -- the drawings and description only being used to resolve any ambiguity. The Protocol expressly eschews such a method of construction but to my mind that would be so without the Protocol. Purpose is vital to the construction of claims.
(e) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(f) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol--a mere guideline--is also ruled out by Art 69 itself. It is the terms of the claims which delineate the patentee's territory.
(g) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. Hoffmann LJ put it this way in STEP v. Emson [1993] RPC at 522:
“The well known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it.”

(h)

It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. A good example of this is the Catnic case itself -- ' vertical' in context did not mean 'geometrically vertical', it meant 'vertical enough to do the job' (of supporting the upper horizontal plate). The so-called 'Protocol questions' (those formulated by Hoffmann J in Improver v Remington [1990] FSR 181 at p.189) are of particular value when considering the difference of meaning between a word or phrase out of context and that word or phrase in context. At that point the first two Protocol questions come into play. But once one focuses on the word in context, the Protocol question approach does not resolve the ultimate question -- what does the word or phrase actually mean, when construed purposively? That can only be done on the language used, read in context.
(i) It further follows that there is no general 'doctrine of equivalents.' Any student of patent law knows that various legal systems allow for such a concept, but that none of them can agree what it is or should be. Here is not the place to set forth the myriad versions of such a doctrine. For my part I do not think that Art. 69 itself allows for such a concept -- it says the extent of protection shall be determined by the terms of the claims. And so far as I can understand, the French and German versions mean the same thing. Nor can I see how the Protocol can create any such doctrine.

(j)

On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic called (at p.243):

'the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.'

Pedantry and patents are incompatible. In Catnic the rejected 'meticulous verbal analysis" was the argument that because the word 'horizontal' was qualified by 'substantially' whereas 'vertical' was not, the latter must mean 'geometrically vertical."”

Mr Mitcheson relied on observations of Laddie J in Merck & Co Inc v Generics (UK) Ltd [2004] RPC 31, para 42:

“Notwithstanding the adaptability of scientific language, the patentee is not expected to be omniscient or to exhibit superhuman thoroughness in drafting. He may not be able to foresee future developments which will be useable with his invention but which make no material difference to the way it works. For example, the invention may relate to a mechanical device in which two parts are connected together. A new method of connection might not be covered by the exact words of the claim, but the notional reader would be reasonably confident that the patentee would have intended to cover the new method as well. Furthermore, the patentee may choose a form of language which emphasises which features of an invention are important and which are not. For example it is common to find claims which start with general description followed by "characterised in" followed by a list of features. The addressee would appreciate that the latter features are particularly important but the features before the words "characterised in" are less so. If there is a variant to the latter which obviously does not affect the way in which the invention works, the notional reader may be reasonably confident that the inventor wanted to cover this variant as well. In these types of cases, the monopoly is likely to extend to the new variant.”

Mr Mitcheson suggested that, having construed the claim, the court could then ask itself whether a product which did not fall within the claim because of some immaterial variant nevertheless infringed. In my judgment this is not how the principles work. Whether a variant is or is not immaterial is relevant to construing the claim. But once the claim has been construed it defines the scope of the monopoly and cannot be extended to cover things that do not fall within it. The question of immaterial variants arises in the context of the so-called Protocol questions. Lord Hoffmann discussed these in his speech in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9. At para 34 he said:

“Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.”

In para 52 he said:

“When speaking of the "Catnic principle" it is important to distinguish between, on the one hand, the principle of purposive construction which I have said gives effect to the requirements of the Protocol, and on the other hand, the guidelines for applying that principle to equivalents, which are encapsulated in the Protocol questions. The former is the bedrock of patent construction, universally applicable. The latter are only guidelines, more useful in some cases than in others. I am bound to say that the cases show a tendency for counsel to treat the Protocol questions as legal rules rather than guides which will in appropriate cases help to decide what the skilled man would have understood the patentee to mean.”

Finally in para 70 he said:

“The determination of the extent of protection conferred by a European patent is an examination in which there is only one compulsory question, namely that set by art.69 and its Protocol: what would a person skilled in the art have understood the patentee to have used the language of the claim to mean? Everything else, including the Protocol questions, is only guidance to a judge trying to answer that question.”

Thus the question of variants (immaterial or otherwise) is a step on the way to construing the claim. It is not a reason for extending the scope of the claim once it has been construed.

In Kirin-Amgen Lord Hoffmann said at para 80:

“I do not dispute that a claim may, upon its proper construction, cover products or processes which involve the use of technology unknown at the time the claim was drafted. The question is whether the person skilled in the art would understand the description in a way which was sufficiently general to include the new technology. There is no difficulty in principle about construing general terms to include embodiments which were unknown at the time the document was written. One frequently does that in construing legislation, for example, by construing "carriage" in a 19th century statute to include a motor car. In such cases it is particularly important not to be too literal. It may be clear from the language, context and background that the patentee intended to refer in general terms to, for example, every way of achieving a certain result, even though he has used language which is in some respects inappropriate in relation to a new way of achieving that result.”

However, whether a claim covers technology unknown at the date of the patent is still a question of construction of the words used. As Hoffmann J pointed out in a very different context, a lease granted in the 1870s containing a covenant only to carry on the trade of a blacksmith could not be interpreted so as to cover a trade in bicycle repairs in the 1890s or to cover a motor garage in the 1920s (St Marylebone Property Co Ltd v Tesco Stores Ltd [1988] 2 EGLR 40, 42).

The patent must be interpreted in the linguistic register of its target readership. So the question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. This notional person not only reads the patent with his technical knowledge and mental toolbox; he is also the yardstick against which obviousness is judged.

Mr Plumb, Pozzoli’s expert, described the addressee thus:

“The Patent would have been addressed to a team of individuals. This team would have included an industrial designer or design engineer, a production engineer (with at least 5 years experience and a degree in industrial engineering) and a materials engineer (with at least 5 years experience and a degree covering plastics technologies). However as the Patent does not deal in any detail with the materials or the production methods to be used, but is instead focussed on the configuration of the package, the Patent would primarily be addressed to the industrial designer or design engineer of the team, who would have had at least 5 years experience and a degree in industrial design or design engineering.”

M. Vincent, the Defendants’ expert, did not agree that the addressee would necessarily have the formal qualifications that Mr Plumb asserted. His view was that the patent was addressed to someone who might wish to package discs or make or design the packaging for discs. Such a person might work for a media packaging company; or might be a customer who wanted a particular kind of packaging. Mr Plumb himself is a designer. He is neither a production engineer nor a materials engineer. The lack of these qualifications did not seem to me to disadvantage him in expressing views about what the patent meant. Nor is the claimed invention technically complex. Indeed its very simplicity was something on which Mr Mitcheson relied in defending the attack on the patent on the ground that it was obvious.

In so far as the experts differed on the identity of the notional addressee, I prefer the view of M. Vincent. In my judgment Mr Plumb over-elaborated the target readership for what is a relatively simple piece of technology.

Common general knowledge is the mental equipment that is necessary for competency in the field of endeavour in question. It is the mental toolbox of the notional addressee of the patent. Common general knowledge in this sense is knowledge over and above the general knowledge which an ordinary member of the public would possess. However, the endowing of the notional addressee of the patent with common general knowledge in this technical sense does not mean that he lacks the general knowledge that an ordinary member of the public would possess.

It is agreed that the notional addressee would know about common forms of packaging CDs. At the priority date these included:

In addition it was common for CDs to be packaged in cardboard sleeves. This form of packaging was used for CDs given away free with magazines and newspapers; and also for CD singles.

A CD has a hole in the middle. The conventional method of retaining a CD within its packaging (apart from plastic or cardboard sleeves) was by means of a rosette fitted into the central hole. The rosette prevents the CD from moving laterally, and also prevents it from moving vertically. Rosettes differed in the details of their design; but all operated in essentially the same way. One or two people had given some thought to other means of retention (e.g. by peripheral clamping or tabs) but these were not part of common general knowledge.

One of the sources of common general knowledge would have been the trade publication One to One. There was no relevant text-book.

At the priority date there existed three main types of disc: optical discs, such as CDs, magnetic discs such as floppy discs, and mechanical discs such as vinyl discs. Magnetic discs, such as floppy discs, typically had their own integral packaging (i.e. the outer rigid plastic casing). There were other discs, such as “minidiscs” which were magneto-optical discs. These discs had integral packaging too.

One of the areas of difference between the parties was whether the notional addressee of the patent would have had any knowledge of or interest in packaging for magnetic discs. Pozzoli’s case was that packaging for magnetic discs and optical discs were very different fields. This was not borne out by Mr Plumb’s initial description of the notional addressee(s) of the patent, which I have already quoted, although his report did elsewhere support Pozzoli’s case in this respect, as did his oral evidence. M. Vincent did not agree with Mr Plumb. His evidence was that replicators and packagers, particularly independent enterprises as opposed to major music companies, engaged in the replication and packaging of both kinds of disc. Moreover One to One, which was agreed to have been a major source of common general knowledge, covered all forms of media packaging. Some of the companies that advertised in it manufactured packaging suitable both for floppy discs and optical discs. Software producers produced software on both optical discs and floppy discs. In addition, even in 1994, means of packaging floppy discs would have been within the common experience of anyone who had a computer. In my judgment common general knowledge would have encompassed knowledge of packaging of floppy discs.

In addition to endowing the notional addressee of the patent with the knowledge of one competent in the field of endeavour in question, it is also necessary to endow him with the mindset of such a person. That mindset may include an appreciation of why things are done as they are (see Panduit Corp v Band-IT Co Ltd [2003] FSR 8); and may also include technical prejudices of one kind or another. As Aldous LJ put it in Dyson Applicances v Hoover Ltd [2002] RPC 22, para 57:

“The mantle of the skilled person is that of an actual skilled person. The purpose of assuming the mantle of the skilled person is to enable the decision as to what is obvious to be a decision based on actual facts. They include all the attitudes and perceptions of such a person.”

Claim 1, stripped of its reference numerals and broken down into its integers is as follows:

“(1)

Container for a plurality of discs, particularly compact discs,

(2)

comprising a tray-like body

(3)

defining seats for accommodating at least two discs,

(4)

said tray-like body including a first region for accommodating at least one first disc

(5)

and at least a second region for accommodating at least one second disc

(6)

located at a higher level than said first region,

(7)

the discs being axially retained in said seats,

(8)

so that each of the discs can be individually gripped and axially detached for removal from said seats in which they are retained,

(9)

characterised in that said at least one second disc is arranged in said second region so as to be spaced from,

(10)

and to partially overlap said at least one first disc

(11)

in an axially offset manner.”

A number of questions of construction arose. I bear in mind that the claim must, of course, be construed as a whole; but it is convenient to deal with the disputed integers separately.

The first point to make is that the patent claims a container. The container is “for” (i.e. suitable for) discs, but it is the container itself that is the subject-matter of the claim. If a product infringes the patent, it is the container itself that must infringe, whether or not there are any discs in it. Second, the container is particularly suitable for compact discs, but it is not limited to that kind of disc. One issue between the parties is whether, as Pozzoli contends, the discs in question are limited to optical discs (i.e. in practice CDs, DVDs CD-ROMs and so on). There is no express limitation to that effect either in the claim itself, or the specification. I cannot see why such a limitation should be implied. As the specification says, the dimensions of the container may be any, according to the requirements. Thus the container could equally well be used for packaging mechanical discs. The specification also says that the shapes can be changed, according to requirements. If the shapes of the depressions in the moulded tray were changed from being roughly circular to being rectangular, the container could equally well be used for packaging magnetic discs, particularly discs with a hole in the middle.

There was considerable debate about the meaning of “seats” and “regions”. Mr Mitcheson submitted that there was a clear hierarchy: tray – seat – region, focussing in on the precise position occupied by the disc in three-dimensional space within the container. The tray was the overall shape of the container. Within the tray there were moulded depressions. These were the seats, and indicated the horizontal position of the discs. Within the seats were the regions. These were the three dimensional positions in space that each of the discs would occupy when they were placed into the container. When the container is empty, the regions are identified by reference to the points of contact forming the plane on which the discs rest. As Mr Plumb accepted, on this construction the regions are invisible when the container is empty, and can only exist in the mind’s eye.

In order to evaluate this submission, I start by recording what the text of the specification tells us about seats and regions. The first reference, describing the prior art, tells us that the known forms of prior art include a tray-like body that forms “the side-by-side recesses or seats” that accommodate the discs. Mr Mitcheson submits that this is in the nature of a definition of “seats” as meaning the recesses in the tray. However, this is not all that we are told about seats and regions. Dealing with regions, the specification says:

“[A]s shown in figures 2 and 3, …the tray-like body 10 defines a first region 20 for accommodating a first compact disc 21; said region has, in a per se known manner, peripheral recesses 22 that allow to remove the disc 21”.

Thus the specification tells us that that the region is defined by the tray-like body: not by the disc. If the region is defined by the tray-like body one would expect its boundaries to coincide with the depressions. It also tells us that the “region has … peripheral recesses”. What has peripheral recesses is the moulded depression within the tray. The precise three-dimensional position of the disc cannot have peripheral recesses, because the precise three-dimensional position of the disc will always be circular. Figure 2 shows the first region by the numeral 20. The numeral 20 is shown as being the wall of the moulded depression and is shown above the upper face of the disc (21). The numeral 22 shows the peripheral recesses, which are an integral part of the moulded depression, and exactly what one would expect of a region that “has” such recesses. Figure 3 is a side view of the container. The precise three-dimensional position of the disc is shown by the numeral 21. It lies above the surface indicated by the numeral 20 (i.e. above the first region).

The specification goes on to describe the second region. It says:

“A further feature of the invention is constituted by the fact that there is a second region 30 for accommodating a second compact disc 31, said region being arranged at a higher level than the first region 20”.

Figure 3 shows the second region by the numeral 30. As in the case of the first region, the numeral indicates part of the moulded container that lies below the precise three-dimensional position of the disc (which in this case is shown by the numeral 31). Figure 5 shows the container in a partially open position. This is a container for three discs. Two of the discs are held in a hinged frame which swings out of the body of the container. Figure 5 shows the hinged frame swung out. The second region is shown by the numeral 30 which unequivocally points to the base of the moulded depression. Since the discs which would fit into that moulded depression are held in a hinged frame, and remain held in that frame even when the frame is swung out, the region cannot be the precise three-dimensional position of the discs. Nor can it be their points of contact or support; since it will be the hinged frame, and not the discs themselves, that will make contact with the second region.

Figure 5 also shows two further flaws in Pozzoli’s interpretation of “seats” and “regions”. The claim requires that the discs be “axially retained in said seats”. I leave aside, for the moment, what “axially” means. In figure 5, two of the discs are not retained in the moulded depression. They are retained in the hinged frame. One would therefore expect the hinged frame rather than the moulded depression to constitute the seat. Similarly the claim requires that each of the discs be capable of being individually gripped “for removal from said seats in which they are retained”. In figure 5 the hinged frame must be swung out of the moulded depression before the lower disc can be gripped and removed. When it is removed, it is removed from the hinged frame. Mr Mitcheson relied on a verbal contrast between claim 1, which speaks of “a first region” and a “second region”; and claim 6 which refers to a “first flat surface” and a “second flat surface”. The flat surface is a physical feature of the moulded tray. From this he argued that claim 1 must be speaking about something different. Hence it must be speaking about the three dimensional position of the disc. There are, in my judgment, three flaws in this argument. First, the specification describes the two flat surfaces as being an “important feature of the invention”; not just an important feature of one embodiment of the invention. Second, the figures (particularly Figures 3 and 10) illustrate the regions and the flat surfaces in precisely the same way. Third, claim 6 is a subsidiary claim, and one must be careful about interpreting an independent claim by reference to a subsidiary claim.

In my judgment if there is a hierarchy, as Mr Mitcheson suggests, homing in on the precise position of the disc, it is not the hierarchy: tray – seat - region. Rather, it is tray – region – seat. To my mind a hierarchy in this order also accords more naturally with non-technical use of the words. A region is, in ordinary usage, a relatively imprecise word. A seat is a more definite place. To my mind this is borne out by the language of claim 1. The discs are “accommodated” in the regions, but are “retained” in the seats. In addition, the characterising part of this claim refers to the second disc partially overlapping the first disc; not the second region overlapping the first region.

Accordingly, in my judgment the “region” refers to the moulded depression in the tray; and not to the precise three-dimensional position of the disc. In so holding, I am conscious that I am declining to follow the decision of the Landgericht Düsseldorf (the Düsseldorf District Court) which accepted Pozzoli’s interpretation of this part of the patent in suit. However, to the extent that I understand the reasons which led the court to its conclusion, I regret that I do not find them compelling. On the contrary, they are, in my judgment, outweighed by the considerations I have mentioned. To be fair, Mr Mitcheson did not place reliance on the decision of the Landgericht Düsseldorf in the forefront of his argument; and, so I was told, it is under appeal.

The claim requires that the second region be located at a higher level than the first region. Having reached the conclusion that the “region” is a part of the moulded tray, this part of the claim is straightforward. The tray must have two depressions, one of which is higher than the other. The reason for this integer is plain. It is to achieve physical separation between the faces of the two discs, in order to avoid (or at least minimise) the danger of damage by friction between them.

The claim requires that the discs are “axially retained” in their seats and “axially detached”. In addition, it requires that the discs be “axially offset”. It is convenient to consider all three phrases together.

It is, I think, common ground that in the last of these phrases “axially offset” means that the axes of rotation of the two discs (for practical purposes the holes in the middle) are offset rather than aligned. Since the two discs overlap, this construction must be right; because the planes of the discs are parallel, with the consequence that axes at right-angles to the plane of the discs are aligned rather than offset.

In relation to the first two phrases, the Defendants contend that the requirement is that each disc is retained at its axis of rotation (i.e. by the hole in the middle). The conventional way of retaining a disc in this way was by means of a rosette. Accordingly, the requirement that the discs must be capable of being individually gripped and axially removed means that the user must be able to take each disc off its rosette individually. Pozzoli contends that “axially retained” means that each disc must be retained by means that hold the disc to prevent axial movement i.e. at 90° to the plane of the disc. In the same way, axial detachment requires that the discs are detached from their retaining means in the direction perpendicular to the plane of the disc. Mr Mitcheson accepted that at the priority date the rosette was the only means used to retain discs in cases (apart from cardboard and plastic sleeves) but he submitted that because the patentee might well have intended to cover new advances in technology, this phrase should be given a broad meaning.

Pozzoli points to two parts of the specification which are said to support this interpretation. First the specification describes:

“the disc 21, which is retained, in a per se known manner, by a coupling element 23 that acts axially”.

The coupling element depicted is a rosette of a conventional kind. This is contrasted with a second part of the specification which describes:

“the conventional central coupling 123”.

The conventional coupling is also a depicted as a conventional rosette, although of a slightly different design. Mr Plumb explained that there were many different kinds of rosette on the market, so that the minor differences in the drawing are of no significance.

I do not accept Pozzoli’s construction. First, the contrast between these two differences in phraseology is, to my mind, the kind of meticulous verbal analysis that is rightly deplored. Just as the draftsman of the specification has used the phrases “in a per se known manner” and “conventional” to mean the same thing, so also has he used “a coupling element … that acts axially” and a “central coupling” to mean the same thing. Second, the conventional rosette does more than merely act axially in the sense in which Pozzoli interprets that word. It does not only restrain movement in a direction perpendicular to the plane of the disc, it also restrains lateral movement. So the description is only a partial description of the function of the rosette, if Pozzoli are right.

Third, as figure 3 shows, when the disc 21 (the lower disc) is removed from its rosette, it is not removed perpendicularly to the plane of the disc in its retained position. It is rotated and then pulled out. Indeed it cannot be removed perpendicularly to the plane of the retained disc, because the upper overlapping disc is in the way.

Fourth, if Pozzoli’s interpretation is right, the patent contains no requirement for the prevention of lateral movement. Lateral movement of discs within a container can be just as damaging as vertical movement.

Fifth, if Pozzoli is right, the word “axially” must be interpreted differently in the first two phrases on the one hand, and the third phrase on the other. This is possible, but unlikely.

Finally, so far as the notional addressee of the patent is concerned, at the priority date he would only have known of the retention of discs in containers (apart from plastic or cardboard sleeves) by means of a central rosette. The figures all show central rosettes. I do not consider that I can attribute any real weight to the supposed desire of the patentee to cover as yet undiscovered technology.

In my judgment the word “axially” means about the axis of rotation; i.e. by a central coupling device. Mr Mitcheson said that this construction cannot be right because the axis of rotation is an imaginary line. But in order to give practical effect to the patent the concept of the axis cannot be given its geometrically precise meaning.

The Defendants’ product is called the “Double Push Tray”. It consists of a single piece of moulded plastic. Each tray has a single recess with a flat floor. The recess can accommodate two discs. The discs are stored in the tray parallel to one another, and at an acute angle to the floor of the tray. Each disc is held at three points on its periphery. One disc is held by a slot cut into the vertical wall of the tray, and by two flexible tabs (one at roughly ten o’clock and the other at roughly two o’clock). The other is held by a slot in a pillar let into the floor of the tray and two tabs similarly positioned to those that hold the first disc. Both slots overhang the disc to some extent.

Once claim 1 of the patent has been construed, the question of infringement more or less answers itself. The Double Push Tray does not infringe.

First, the Double Push Tray does not incorporate regions at different levels. The tray is flat. Moreover, the discs themselves are parallel one with another; and their heights relative to the floor of the tray are the same. So it cannot even be said that one disc is higher than another. I found Pozzoli’s attempt to suggest the contrary unconvincing and artificial.

Second, the discs are not axially retained. They are retained at their periphery. If (contrary to my view) “axially retained” means retained perpendicularly to the plane of the disc, then the discs in the Double Push Tray cannot be axially detached. It is first necessary to slide them out from under the overhang of the slots. This is a lateral or rotational movement rather than an axial one (in this sense). Mr Mitcheson suggested that when the tabs are pressed to release the disc it “pops out”. So it may; but it depends on what you mean by “pops out”. Even if it does “pop out” it does not do so perpendicularly to the plane of the disc; or at least not without first having to be disengaged laterally from the overhanging slots.

A patent may only be granted for an invention if it involves an inventive step: Patents Act 1977 s 1 (1) (b). An invention does not involve an inventive step if it is “obvious to a person skilled in the art”: Patents Act 1977 s. 3. The question whether a step was obvious has been described as a jury question. In Windsurfing International Inc v. Tabor Marine (Great Britain) Ltd [1985] RPC 59, 73 Oliver LJ said:

“There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.”

This is the conventional approach.

The identification of the inventive concept claimed by the patent in suit requires a consideration of what the invention is. As Lord Hoffmann explained in Biogen Inc v Medeva plc [1997] RPC 1, 34:

“Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case, the inventive idea will be doing the new thing. Sometimes, it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it.”

In commenting on the last (and crucial) step, in Molnlycke AB v. Procter & Gamble Ltd [1994] RPC 49 Sir Donald Nicholls V-C said that:

“obviousness connotes something which would at once occur to a person skilled in the art who was desirous of accomplishing the end.”

Mr Mitcheson rightly reminds me that simplicity is not necessarily to be equated with obviousness. On the other hand an invention that is simple may appear to be obvious because it is.

There is no doubt that the overcoming of an existing prejudice is capable of being inventive. As Jacob J put it in Union Carbide Corp v BP Chemicals Ltd [1998] RPC 1, 13:

“Invention can lie in finding out that that which those in the art thought ought not be done, ought to be done. From the point of view of the purpose of patent law it would be odd if there were no patent incentive for those who investigate the prejudices of the prior art.”

However, as Pumfrey J pointed out in Glaxo Group Ltd’s Patent [2004] RPC 43 para 30:

“Such a prejudice may be a merely commercial one ("this device won't sell") or it may be a technical one ("this won't work and it is not worth bothering with"). A 20-year monopoly is conferred for overcoming a prejudice of the second kind, but not for overcoming a commercial prejudice… A technical prejudice must be general: it is not enough that some persons actually engaged in the art at the material time labour under a particular prejudice if a substantial number of others do not. A prejudice which is insufficiently widespread for it properly to be regarded as commonly shared will not, in my view, be attributed to the notional skilled person.”

Mr Carr submitted that the idea of overcoming a prejudice must consist in overcoming a false prejudice; in other words a mistaken technical belief that deters the unimaginative skilled person from pursuing a particular path. Mr Carr characterised this kind of false belief as a “lion in the path” (see Bunyan: The Pilgrim’s Progress, The Third Stage: “Fear not the lions, for they are chained, and are placed there for trial of faith where it is, and for discovery of those that have none: keep in the midst of the path, and no hurt shall come unto thee.”). In such a case the patent reveals that the belief was mistaken, and thus contributes to the art. If on the other hand the perceived technical problem exists in the same form both before and after the claimed invention, then the prejudice has not been overcome at all. In such circumstances overcoming the prejudice cannot be part of the inventive concept, although the technical means for dealing with the perceived problem can be. I accept this submission.

Pozzoli’s case was that at the priority date there was a prejudice in the industry against packaging which involved overlapping discs, or discs with their edges or play sides in contact with their packaging. The perceived problem was that if discs overlapped in their packaging they were more likely to be damaged by scratching, either by rubbing against each other in the packaging, or by rubbing against the packaging itself.

Mr Plumb’s evidence in chief was that:

“Prior to the late 1990’s, it was considered mandatory by the leading optical disc manufacturers like DADC (Sony Disc Manufacturing) that discs be held within containers in such a way that the recorded side of the disc and the edges of the disc would not come into contact with any element of the container, to protect them from damage.”

Mr Plumb did not contend that he himself had any technical knowledge in this area; and he based his evidence about prejudice on something he had been told by someone at Sony. However, he accepted that packaging existed at or before the priority date, notably in the form of cardboard and plastic sleeves, in which the disc did come into contact with the packaging, both as regards its edges and also as regards its play side (which Mr Plumb mistakenly called its “recorded side”). As he explained in cross-examination:

“The world of packaging in this case is a bunch of trade offs and you trade off one characteristic for something else and you end up with .... Nothing is ever perfect.”

In my judgment Mr Plumb’s evidence did not support the alleged technical prejudice. To the extent that it did, it was contradicted by Mr Xavier’s evidence, which I prefer, and to which I refer below. Fear of damage to a disc by scratching was a reality, but in an appropriate case it could be outweighed by an appropriate trade off.

Mr Xavier was an experienced replicator of discs. He was called by Pozzoli. His evidence was that during the late 1980s and early 1990s:

“the cost of production of each individual CD has dropped. My understanding is that in some quarters this has led to there being less concern about poor handling causing damage to a CD than in the past (although from a technical perspective the effect of scratching is unchanged).”

He did not agree with Mr Plumb’s evidence that it was “mandatory” that the edges of a disc, or for that matter the play side, should not be in contact with the packaging. Although it would not have been recommended by anyone technical, it was largely a question of customer preference.

M. Vincent also disagreed with Mr Plumb. He said:

“CDs are durable products and are not the extremely delicate products which Mr Plumb appears to suggest. For example you have to be much more careful with a vinyl disc than with a CD. Obviously, you do not want a new CD to be sold looking scratched or damaged in some other way. In addition, because a CD is a product intended to be sold and played on a CD player or used in a computer, some care needs to be taken with it. The degree of care which a person would give to a CD now or in 1994 depends upon the value of the information on it and the price at which it is sold. I do not agree that there was a prejudice in the industry against overlapping CDs whether partially or completely. I also do not agree that there was a prejudice in the industry against allowing the surfaces or the edges of the CD to come into contact with the packaging for a CD.”

In his cross-examination M. Vincent agreed that there were disadvantages in manufacturing packaging for overlapping discs which was not the same size as a standard jewel case. But he did not go so far as to say that there was a technical prejudice against that. Moreover the disadvantages were largely commercial rather than technical (although I accept that the line between them is not always easy to define). In my judgment his overall assessment remained the same as in his evidence in chief. The disadvantages that he accepted existed had always existed in relation to cardboard sleeves, and were disadvantages that the industry was prepared to accept in certain cases where the trade offs were sufficient. I accept his evidence.

The overall conclusion to which I come is that there were perceived disadvantages in packaging discs in contact with their containers. But whether those disadvantages meant that discs would not be packaged in that way was a matter of customer preference; and was one feature that could be traded off for another. It is, however, fair to say that no example of packaging partially overlapping discs in trays before the priority date was put in evidence.

I do not, however, consider that the latter point is a weighty one. The question of packaging multiple discs only became a perceived problem in the industry in the mid-1990s, very shortly before the priority date. This is not a case of a “long felt want”.

In addition I agree with Mr Carr that the problem of discs being in contact with their packaging is just the same in kind now as it has always been. There is still the risk of damage from scratching. To the extent that there is a difference of degree, it comes from advances in the manufacture of the discs themselves and (possibly) from advances in disc players. There was, therefore, no false prejudice to overcome.

The Defendants pleaded no less than seven pieces of prior art, together with common general knowledge. This embarras de richesse was pared down before trial by the elimination of two citations. Four of the citations were relied on only in the event that I accepted Pozzoli’s construction of the claim (as part of what patent lawyers call a “squeeze”). Since I have not, it is unnecessary to say much about them. The last citation (called “Havant”) was a patent for a 2:1 container for two discs. However, since it was accepted that the 2:1 container was part of common general knowledge, it added nothing to the plea of obviousness in the light of (or, as patent lawyers prefer to say, “over”) common general knowledge. I will therefore concentrate on common general knowledge.

Mr Mitcheson described the inventive concept embodied in the patent as:

“the provision of a container of simple construction for holding two or more compact discs where the height of the container is less than twice its width and where the discs are partially overlapped and spaced apart and where the discs are securely held and can be individually, easily and safely accessed.”

In my judgment this is too broad a description. What was new about the patent was not that it claimed a container for holding two or more discs where the height of the container was less than twice its width. Such containers were already known (e.g. the Brilliant Box and the multi-disc jewel box). What was new was that the discs were partially overlapped and spaced apart and that their axes were offset. As Nicholls V-C pointed out in Molnlycke the question whether a step is obvious is whether the step in question would at once occur to a person skilled in the art who was desirous of accomplishing the end. But how do you define the end? As in many cases, whether the answer is obvious depends on how you frame the question. This, in essence, means that one has to decide what the invention is. Mr Plumb described the problems addressed by the patent as follows:

“One is the aesthetically unsatisfactory proportions of a two-disc container that has 2-to-1 face dimensions, which result from the two optical discs (referred to simply as “discs”) being positioned one next to the other on the same plane. Another problem is the awkward dimensions, which result in functional problems in handling, display and storage. The height of the 2-to-1 container makes the package too tall to store in many standard store, home and office fixtures.”

This description closely follows the deficiency as described in the patent. However, these drawbacks were ones that Mr Plumb himself was aware of in 1994. He also considered that these problems were generally known at that time. Accordingly, it cannot in my judgment be said that the inventive concept was perceiving the problem in the first place. Rather, in my judgment, the claimed inventive concept was finding a way of reducing the height of the 2:1 container without exposing the discs to serious risk of damage. The solution was to overlap them and physically separate them.

I have, I think, already answered this question. The state of the art already encompassed containers for holding two or more discs, some of which had dimensions in which the height was less than twice the width. In these cases the axes of the discs were aligned. It also included containers for two discs in the 2:1 ratio. In this case the axes of the discs were offset.

Again, I have, I think, answered this question. The difference was the fact that the discs partially overlapped; that their axes were offset, and that they were physically separated.

Mr Plumb said that when he first saw the Pozzoli product (manufactured according to the patent) he thought: how clever. But in trying to explain what he thought was clever about it, his evidence unravelled. He accepted that it did not overcome the problem of one disc scraping against the other when independently removed. He was impressed by the high quality appearance of the product. Later in his evidence he specifically mentioned the rosette; but the rosette was not part of the claim. Apart from that, it was quite unclear to me why he thought that the patent was inventive.

Mr Wright, a designer was called by the Defendants. His evidence was that having been shown a 2:1 container and having been told that his brief was to reduce the height of the container relative to its width, he was able to design a container for overlapping discs, physically separated, within 45 minutes. He had never designed CD packaging before, and was not conscious of having seen either the Pozzoli product or the Double Push Tray. He described the process as follows:

“The thing that was immediately in my mind was that I was going to have to lay one CD over the other to a degree. There would have to be some overlap. I immediately picked up the two CDs and put them on top of one of the books to see by how much they needed to overlap for them to fit in a standard book size. The second thing that came to mind was a concern related to damaging the CDs.” (Para 37)

“On Brief 3, overlapping the CDs was an absolute necessity. There is no other way of reducing the height of the box. The CDs have to overlap in some way to overcome the 2 to 1 ratio. This is an obvious design constraint and would be obvious to any competent designer. In fact it would be obvious to anyone. It is also obvious that the discs have to be in different planes relative to each other, otherwise they cannot overlap.” (Para 57)

Mr Plumb agreed that if you wanted to reduce the height of the box, then overlapping the discs was obvious. He also agreed that Mr Wright might very well be correct in saying that none of the designs he came up with were inventive; but that all of them were obvious. Mr Plumb’s main objections, as it seems to me, to Mr Wright’s design were as follows. First, he did not consider that it worked. This was because, as he saw it, the lower disc in Mr Wright’s design protruded into empty space. But Mr Wright explained that the tray that he had designed would, in the real world, be protected by a backing plate that could be let into the moulded tray. Mr Plumb’s second objection was that Mr Wright had not gone through the stages that Mr Plumb regarded as essential for the design of a new industrial product. As he put it:

“Q. Those two ideas, partially overlapping the CDs and then a concern that you do not want to damage the discs, faced with that problem in 1994, both of those thoughts would be obvious to any competent designer, would they not?

A. They would certainly be considerations that would be part of the process.

Q. Obvious considerations.

A. I know the word "obvious" has certain obvious meanings. What I am saying is that there is a great deal in the process that does not result from obvious decision-making but from going through choices. Like I said yesterday, you can put this one on top of the other and get a box the size of the jewel box that is any depth. You can also put them out here (demonstrating). You can put them next to each other or you can overlap them somewhere in between. The fact that you can do all of those things is obvious. There is no question about it. But you have to make choices, which [are] going to result in a product that is going to work in the marketplace and [are] going to meet the requirements of the market, which include protecting the disc, which includes providing promotional space for printing. It includes a whole lot of stuff that is determined in the marketplace. It is not simple or it would not have taken me four years to get that bloody product on the market.”

In my judgment Mr Plumb was not saying anything other than that the technical considerations were obvious. What was not (or might not have been) obvious were the commercial considerations needed to launch a product that would succeed in the marketplace. The provision of promotional space, for example, would be a function of the size of the outer casing, rather than anything claimed by the patent itself. Overlapping the discs was obvious if you wanted to reduce the height of a 2:1 container. Once you overlapped the discs, separating them physically was also obvious. Although one must beware of a so-called “step by step” approach, these two steps would in my judgment have occurred to any competent designer simultaneously. Mr Mitcheson objected that since Mr Wright was not a designer of CD packaging, he was not endowed with the prejudices of such a person. However, since I have held that there was no such (relevant) prejudice, this objection cannot be sustained.

Mr Xavier gave telling evidence on this point. So far as overlapping discs were concerned he said that:

“My immediate concern would be that if the CDs were overlapping, the stacking ring of the upper disc would not prevent contact between the discs’ surfaces and there would be a risk that during packaging or use the edge of the bottom CD might scratch against the top one, thus causing the worst type of scratch damage from the point of view of playback – a radial scratch around the disc.”

In response to Mr Carr’s questions about this concern Mr Xavier said:

“Q. So you would be concerned to ensure that there was adequate physical separation between the two discs in their packaging in order to minimize this risk.

A. Both physical separation and permanent separation, i.e. a disc could not be pressed against the other one.

Q. If you did have this concern, the solution of separating the discs in their packaging in the way that you have just said would be clear to anyone, would it not, because you do not want them to touch?

A.

I think it is obvious, yes.”

In my judgment the evidence inexorably leads to the conclusion that if you wanted to reduce the height of a 2:1 container, it was obvious to overlap the discs and separate them physically. Working out how to do it would also have been obvious.

One of the citations of prior art relied on as part of the so-called “squeeze” was a patent for storage of floppy discs. It was referred to as “Fujifilm”. The Defendants said that if the patent in suit meant what Pozzoli said it meant, then, the patent was obvious in the light of Fujifilm. Although this question does not arise as a result of my interpretation of the patent in suit, I must make the necessary findings of fact in case I am wrong.

Fujifilm describes a floppy disc case in which the discs are held in a partially overlapping manner. The discs are arranged in parallel on a series of parallel sloping surfaces. Each disc is retained by a spindle through its centre. Because both the discs and the slopes are parallel to each other, the container does not contain regions at different levels as I have interpreted that part of the patent in suit. But if Pozzoli’s interpretation of that integer is correct, then they do.

M. Vincent said that it would be obvious to someone designing a storage case for CDs that this design could be easily adapted by changing the central spindle to a rosette. In his cross-examination M. Vincent agreed that Fujifilm was concerned with different media and that someone looking to make a design for display in a record store would not regard it as a useful starting point. But he maintained his position that it was “really easy” to put a rosette on Fujifilm. Mr Plumb never really addressed this point. His evidence was that the notional addressee of the patent simply would not have been interested in Fujifilm because it concerned a device for storing floppy discs in the office or home, rather than a means of packaging CDs for retail display. I have already said that in my judgment Pozzoli’s characterisation of the notional addressee of the patent is too narrow. But in any event I agree with Mr Carr that Pozzoli’s case on this question misses the point. The patent in suit claims a container suitable for discs; not just CDs. It is not limited to packaging for display in record stores. Accordingly, Fujifilm is a possible starting point. The adaptation is one that is technically obvious. If the container described by Fujifilm is modified in that way, it falls within claim 1 of the patent, in the way that Pozzoli contend it should be interpreted.

Accordingly, if I had agreed with Pozzoli’s interpretation of the patent, I would have held that it was obvious in the light of Fujifilm.

Mr Carr argued that the patent was invalid because it was not new; and also argued that the patent was invalid as granted because it disclosed matter that was not contained in the application. However these arguments were also part of the so-called “squeeze”. They do not arise on the view I have taken on the construction of the patent. Nor do they require any further findings of fact.

I conclude that the patent is invalid because it was obvious in the light of common general knowledge; but that if it had been valid it would not have been infringed.