Virgin Atlantic Airways Ltd v Delta Airways Inc

The Defendant (“Delta”) applies for summary judgment dismissing a claim by the Claimant (“Virgin”) against Delta for infringement of European Patent No. 1 495 908 (“the Patent”). Summary judgment applications in patent cases are unusual for the reasons considered below, but the circumstances giving rise to the present application are even more unusual. Although the key issues raised by the application lie within a narrow compass, the background to them is somewhat complicated, because it involves a number of sets of proceedings concerning the same Patent. It therefore necessary to describe the various proceedings before I can come to the points which matter for present purposes.

Virgin is a well-known airline, as is Delta. Between early 2000 and September 2003 Virgin, with assistance from other parties, developed what became known as its Upper Class Suite (“UCS”) seat for use in the first class and business class cabins of its long-haul aircraft. This is a seat that converts into a flat bed. The UCS was manufactured for Virgin by Premium Aircraft Interiors UK Ltd trading as “Contour”. Virgin has sought to protect the design of the seat, of “seating systems” comprising a plurality of seats and of aircraft cabins comprising such seating systems by means of the Patent and a number of related European patents and patent applications. I was told that it also has related patents and applications elsewhere, included in the USA.

On 20 July 2007 Virgin commenced proceedings against Contour (“the Contour Action”) alleging that Contour had infringed both the Patent and unregistered design rights in the design of various aspects of the UCS. These allegations related in particular to a design of seat called “Solar Eclipse” which Contour was manufacturing for a number of airlines, including Delta. These claims were tried before Lewison J over three weeks in November 2008. As Lewison J recorded in his judgment dated 21 January 2009, [2009] EWHC 26 (Pat) (partly reported at [2009] ECDR 11) at [2], “the trial was mainly taken up with a detailed investigation of the question whether the Solar Eclipse was (or was based on) a copy of Virgin Atlantic’s UCS”. As a result, there was extensive disclosure by Contour and evidence at trial as to precisely what Contour had done.

It is important to note that the Patent as granted, and as it stood before Lewison J, included claims to both “a passenger seating system” (claims 1-12) and to “a seat unit” (claims 13-19). It should also be noted that at that time the Patent had different claims for the UK and for other EPC contracting states. It is not necessary to go into the reasons for this.

I shall set out claim 1 as granted below. Claim 13 as granted was as follows:

“A seat unit for a passenger seating system for an aircraft, the seat unit defining a notional longitudinal seat axis (C-C) and comprising a supporting structure (42) adapted for attaching the seat unit to a floor of an aircraft (12) and means forming or being configurable for forming a seat comprising a seat-pan (71) and a back rest (72), said seat unit being adapted to be arranged side-by-side with at least one further seat unit to form a column defining a notional longitudinal column axis (B-B), in which column said seat-unit is adapted to be arranged in longitudinally offset relation at an acute angle to the notional column axis (B-B), the seat unit being arranged to be disposed adjacent a sidewall (26,28) of the aircraft and face inwardly thereby to define between the rear of each seat and the sidewall a space (36) when the seat unit is configured as a seat, the seat unit further comprising means forming or being configurable for forming a substantially flat bed (47,48,67,74,76), so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat, and characterised in that the flat-bed extends into said rearward space (36) behind the seat”

Virgin alleged that Contour had infringed both types of claims, and in particular had infringed both claim 1 and claim 13. Contour denied infringement of both types of claims. Shortly before trial, Contour served evidence (the second witness statements of Mark Davies and Bruce Gentry) which addressed the question of the extent to which Contour had assembled a number of Solar Eclipse seats together, in particular during the course of First Article Inspections (“FAIs”) carried out for Air Canada, Delta and Jet Airways (collectively, “the Airlines”). This evidence was relevant to the question of whether Contour had infringed the seating system claims as distinct from the seat unit claims. When opening the case, counsel for Virgin submitted to Lewison J that this late evidence “does not matter very much”, because in any event Virgin relied on claim 13, which was to an individual seat unit. Importantly, Contour’s case at trial, as set out in its opening skeleton, its written closing submissions and in its counsel’s oral closing submissions, was that: (i) in order to infringe the seating system claims, it was necessary for the seat units to be assembled and arranged “on an aircraft”; and (ii) there was no infringement of those claims if, as Contour contended was the case, the assembly and arrangement of the seat units took place outside the UK.

Lewison J found that Contour had not copied the design of the UCS, and therefore dismissed Virgin’s claim for infringement of design right. In a section of his judgment between the sections dealing with design rights and the Patent, he made the following findings of fact:

“179.

Although I have decided that the claim for infringement of design right fails, I must nevertheless set out the facts about what Contour actually do, in case I am wrong in my conclusion. The facts were more or less common ground. They are relevant both to the case on design right and also to the case on patent infringement.

180.

Contour manufacture and supply Solar Eclipse and its derivatives into individual passenger accommodation units PAUs. The manufacturing takes place in the United Kingdom at Contour’s premises in Cwmbran. They do not make delivery of individual PAUs since it is more usual for customers to insist upon the full number of PAUs for a shipset to be delivered in one go. However the shipset itself is assembled in its herringbone form on board the aircraft to be fitted with the shipset. To date all such assembly has taken place outside the United Kingdom. The assembly itself is carried out by the aircraft manufacturer or the airline’s appointed maintenance provider.

181.

Before shipment Contour temporarily assembles a small number of seat units on the shop floor (and without attachment to aircraft seat tracks) so that the customer and aircraft manufacturer can inspect them. However an entire shipset is never assembled in the UK for this purpose.”

Lewison J went on to make findings as to the skilled team to whom the Patent was addressed (at [191]-[192]) and their common general knowledge (at [193]-[200]). He then considered a number of issues of construction of claims 1, 2, 4-6 and 9, all of which were seating system claims (at [218]-[250]). He did not set out in his judgment, or construe, any of the seat unit claims.

Lewison J concluded (at [222]-[288]) that the feature of claim 1 “each seat unit … further comprising means forming or being configurable for forming a substantially flat bed” on its proper construction restricted the claim to “flip-over” seats. As he recorded (at [229]), it was common ground that, if that integer of the claim was to be interpreted in that manner, then Contour had not infringed the Patent.

It will be noted that claim 13 included the same feature. Thus Lewison J’s conclusion was equally applicable to both claim 1 and claim 13. For that reason he did not need to consider, and did not consider, claim 13 separately. Furthermore, he did not need to consider, and did not consider, whether, assuming that Contour had infringed claim 13, it had also infringed claim 1. That would have required him to consider, and reach a conclusion on, the two issues raised by Contour identified in paragraph 6 above. He did not do so.

Lewison J also concluded (at [235]-[242]) that the feature of claim 1 “thereby to define between the rear of each seat and the sidewall a space (36) when the seat is configured as seat” was limited to “a space formed as a result of the arrangement of seats in an inward facing herringbone”. As a result, he concluded (at [255]-[260]) that UK Patent Application No. 2,326,824A (“the BA Application”) did not anticipate claim 1 because (among other reasons) “the reclining seat when in bed mode did not extend into a space that is defined as the result of an inward facing herringbone arrangement”.

Lewison J went on to reject a number of other attacks on the validity of the Patent. Accordingly, his overall conclusion was that the Patent was valid, but had not been infringed by Contour.

Virgin appealed to the Court of Appeal against Lewison J’s conclusion that Contour had not infringed the Patent. Contour cross-appealed against his conclusion that the Patent was valid, but only contingently upon the Court of Appeal holding that the Patent had been infringed.

In the Court of Appeal the case was argued solely by reference to claim 1. The reasons for that are manifest. That was essentially how Lewison J had decided the case, and it made no difference to either party’s position on the issues debated in the Court of Appeal whether one considered those issues by reference to claim 1 or by reference to claim 13. The Court was not asked to consider, nor did it consider, whether, assuming that Contour infringed claim 13, it also infringed claim 1.

In its first judgment dated 22 October 2009 [2009] EWCA Civ 1062, [2010] RPC 8, the Court of Appeal began by considering the principles of claim construction (at [5]-[22]), the common general knowledge of the skilled team to whom the Patent is addressed (at [23]-[30]) and the teaching of the Patent (at [31]-[43]). I shall set out most of the relevant passages later in this judgment.

The Court of Appeal then set out claim 1 in a re-arranged and broken-down form which had been agreed between the parties and used by the judge (including in square brackets a conditional amendment proposed by Virgin corresponding to the amendment made by the EPO Opposition Division referred to below):

“(a)

A passenger seating system for an aircraft, comprising a plurality of seat units (40);

(b)

each seat unit;

i.

defining a [single, fixed] notional longitudinal seat axis (C-C); and

ii.

comprising a supporting structure (42) adapted for attaching the seat unit to a floor (30) of an aircraft (12); and

iii.

means forming or being configurable for forming a seat comprising;

a)

a seat pan (71); and

b)

a back-rest (72);

iv.

further comprising means forming or being configurable for forming a substantially flat bed (47, 48, 67, 74, 76);

(c)

said seat units being arranged to form a column (29) defining a notional longitudinal column axis (B-B), in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to the notional column axis (B-B);

(d)

wherein at least some of the said seat units are arranged to be disposed adjacent a sidewall (26, 28) of the aircraft and face inwardly thereby to define between the rear of each seat and the sidewall a space (36) when the seat is configured as a seat;

(e)

so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat,

and characterised in that;

(f)

the flat-bed extends into said rearward space (36) behind the seat.”

The Court of Appeal then considered (at [46]-[62]) whether Lewison J had been correct to hold that claim 1 was limited to systems which incorporated flip-over seats. The Court of Appeal concluded that he was wrong on this point. The Court of Appeal recorded (at [63]) that it was common ground that, if the claim was not limited to flip-over seats, then Contour had infringed claim 1 of the Patent. Accordingly, it held that Contour had infringed the Patent.

The Court of Appeal went on to consider, and dismiss, Contour’s cross-appeal on the validity of the Patent. One of the issues raised by the cross-appeal was whether claim 1 was anticipated by the BA Application. This depended on whether Lewison J had been correct to construe feature (d) of claim 1 in the manner in which he had. The Court of Appeal held (at [94]-[104]) that Lewison J was right on this issue. I shall set out most of the relevant passage later in this judgment.

Accordingly, the Court of Appeal’s overall conclusion was that the Patent was valid and had been infringed by Contour.

After the Court of Appeal had handed down its first judgment, Contour applied to the Court of Appeal for a stay of the inquiry as to damages on the ground that there were pending appeals by all parties to the Technical Board of Appeal of the European Patent Office against the decision of the Opposition Division concerning the Patent (as to which, see below). Contour argued that, if the opponents’ appeal was successful and the Patent was revoked, it would be wrong for it to have had to pay any damages. In its second judgment dated 21 December 2009 [2009] EWCA Civ 1513, [2010] FSR 15, the Court of Appeal declined to grant a stay on that ground. One of its reasons was that, unless and until there was a successful appeal to the Supreme Court against the first judgment, its decision that the Patent was valid was res judicata, applying its previous decision in Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, [2007] FSR 25 (I will refer to this as “the Unilin point”). Contour also applied for an exception from the injunction to enable it to fulfil a contract with Delta. The Court of Appeal granted that exception on terms.

On 27, 28 and 29 February 2008 respectively, three parties, one of whom was Contour, filed oppositions to the Patent at the European Patent Office (“the Oppositions”). At the oral proceedings on 31 March 2009 the Opposition Division decided to maintain the Patent in amended form, namely with the words “single, fixed” incorporated into the claims as indicated in paragraph 16 above. The Opposition Division gave its reasons for this decision on 18 June 2009. All parties appealed against this decision, thereby suspending its effect.

The main appeal was heard by the Technical Board of Appeal on 9 September 2010. (An earlier hearing date of 20 April 2010 had to be abandoned due to the volcanic eruptions in Iceland that month.) The Board of Appeal decided to set aside the decision of the Opposition Division and maintained the Patent in an amended form. The main amendments were as follows:

At the time of writing this judgment, the Board of Appeal’s reasons for this decision are not yet available. Furthermore, the minutes of the hearing record that, during the course of the hearing, Virgin withdrew all requests other than the one which was allowed by the Board of Appeal. I therefore anticipate that the reasons may not be wholly illuminating as to how this result was arrived at. As I understand it, however, the Board of Appeal indicated to the parties that it was of the view, contrary to that of the Court of Appeal, that granted claim 1 of the Patent lacked novelty over the BA Application. Furthermore, it indicated that it was of the view that the seat unit claims lacked clarity in the light of the proposed amendments. On the other hand, the Board of Appeal accepted that the seating system claims as proposed to be amended satisfied all the requirements of the European Patent Convention.

There was a separate hearing before the Board of Appeal on 10 September 2010 concerning the entitlement of Virgin to a UK designation of the Patent. The Board of Appeal held that it was so entitled. Again, its reasons are presently awaited.

Since the hearing before the Board of Appeal, Virgin has filed two new divisional applications, Nos. 10010695.4 and 1001694.7. The first of these contains claims directed to the seat unit. Virgin contends that these claims do not suffer from the clarity problems identified by the Board of Appeal. The second of these contains claims directed to “the bed extension space which is available for the passenger being partly defined by the cabin wall” (to quote the evidence of Virgin’s solicitor Mr Godar). It is Virgin’s contention that the claims of these new applications cover the Solar Eclipse seat units.

It will be some time before these new applications have been published and examined. If the EPO grants them, it may be anticipated that Contour and others will oppose them. Assuming that any decision of the Opposition Division is appealed to the Board of Appeal, as seems likely, such proceedings are likely to take some years to come to a conclusion. Neither party suggested that it was appropriate to speculate as to what the eventual outcome might be.

On 16 June 2008 (i.e. five months before the trial of the Contour action) Virgin commenced the present action against Delta, alleging that Delta was jointly liable with Contour for Contour’s acts of patent and design right infringement. Similar proceedings were also issued against Air Canada and Jet Airways (collectively “the Customer Actions”). To date, little progress has been made with any of the Customer Actions. Delta served a Defence and Counterclaim in these proceedings on 2 October 2008 and Virgin served a Reply and Defence to Counterclaim. By letter dated 25 March 2009 Virgin agreed to consent to judgment in favour of Delta in respect of the design right claim, although there is an outstanding issue as to the costs of that claim. There is a dispute between the parties as to whether or not it was agreed on the following day that the patent claim would be stayed generally pending the forthcoming appeals. At all events, there has been no case management conference or order for directions yet. As I understand it, the position is the same in the other Customer Actions.

In addition to the proceedings described above, the following proceedings and applications are presently pending:

I cannot forbear from commenting that the state of affairs described above is highly unsatisfactory. The principal cause for this state of affairs is the inability of the EPO, due to its workload and perhaps other reasons, to determine opposition proceedings as speedily as was envisaged when the EPC was agreed (see Unilin at [16] per Jacob LJ), with the consequence that EPO oppositions may not be determined until after the conclusion of national infringement proceedings. A subsidiary cause (and in itself a contributor to the EPO’s workload) is that the European Patent Convention and its implementing regulations permit the voluntary filing by applicants of divisional applications, and not merely in response to an objection of lack of unity of invention by the examiner. As the present case illustrates, this inevitably prolongs the uncertainty as to what claims, if any, the applicant will end up with.

It is important to note that Virgin’s claim against Delta is exclusively one of joint liability for acts of infringement of the Patent committed by Contour. In its Particulars of Infringement Virgin alleges as follows:

“4.

Since about mid-2005 (the Claimant does not know the precise date at present) Contour has been making and dealing in a new herringbone layout ‘flat-bed’ aircraft seat system based on and incorporating the ‘Solar Eclipse’ premium business class seat (hereinafter, ‘Solar Eclipse seat systems’ and ‘Solar Eclipse seats’ respectively). Each individual seat unit is separated from other seat units by privacy screens, and is adapted to fit other seat units to form a seat system.

5.

Seat systems, components thereof as further identified below and seat units, manufactured by Contour to the Solar Eclipse specification, were first provided by Contour to the Defendant for use in its fleet in or around March 2008.

6.

Such seat systems and seat units forward in the claims of European patent (UK) number 1 495 908 (‘the Patent’). In particular:

a.

seat systems fall within claims 1, 2 and 4-11;

b.

individual seat units fall within claims 13-15 and 17-19.

…

9.

Contour assembles individual seat units into a complete shipset of seat units in the United Kingdom by agreement with the customer (i.e. the Defendant) such that the customer has an opportunity to inspect and approve said shipset.

10.

To the extent that Contour provides complete but unassembled seat systems to its customers (i.e. the Defendant) for assembly abroad it does so with complete instructions for their assembly, and such activities amount to an infringement of the aforesaid claims to seat systems on their proper construction and/or as kits of parts.”

The claims referred to are the claims of the Patent as granted. Virgin has not yet amended its Particulars of Infringement in the light of the decision of the Board of Appeal. There is no dispute that the allegations relating to the seat units, as distinct from the seating systems, must now be disregarded. The word “shipset” is a term used in the airline industry to refer to a set of seat units shipped together for installation in an aircraft or a cabin thereof.

There is no dispute about these.They were conveniently summarised by Lewison J in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch) at [15]:

“As Ms Anderson QC rightly reminded me, the court must be careful before giving summary judgment on a claim. The correct approach on applications by defendants is, in my judgment, as follows:

i)

The court must consider whether the claimant has a ‘realistic’ as opposed to a ‘fanciful’ prospect of success: Swain v Hillman [2001] 2 All ER 91;

ii)

A ‘realistic’ claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8].

iii)

In reaching its conclusion the court must not conduct a ‘mini-trial’: Swain v Hillman.

iv)

This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at [10].

v)

However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5) [2001] EWCA Civ 550.

vi)

Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 63.

vii)

On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd [2007] EWCA Civ 725.”

This summary was cited with approval by Etherton LJ (with whom Wilson and Sullivan LJJ agreed) in AC Ward & Son v Catlin (Five) Ltd [2009] EWCA Civ 1098, [2010] Lloyds Rep IR 301at [24].

It is common ground that summary judgment is rarely appropriate in patent cases. The reasons for this were explained by Dillon LJ in Strix Ltd v Otter Controls Ltd [1991] FSR 354and Aldous LJ in Monsanto & Co v Merck & Co [2000] RPC 77.

In Strix Dillon LJ (with whom Croom-Johnson LJ agreed) said at 357-358:

“The difficulty that arises where it is sought to strike out a patent action on the ground that there is no arguable case of infringement arises because the construction of a patent, though a question of law for the court, is not a mere question of the judge reading the patent with the assistance of the legal arguments of counsel; it is a much more sophisticated exercise for two reasons. First the language of the patent is deemed to have been addressed by the inventor not to a panel of equity draftsmen but to ‘the man skilled in the art’, and consequently the court has to consider what the language of the patent would mean not to lawyers, but to the man skilled in the art with his knowledge of the art. Secondly it has long been established that a person does not avoid infringing a patent if he departs from the strict requirements of the claims by what the man skilled in the art would recognise as an ‘obviously immaterial variant’ – (to adopt a phrase conveniently used by Nicholls LJ in Anchor Building Products Ltd v Redland Roof Tiles Ltd [1990] RPC 283).”

In Monsanto Aldous LJ (with whom Auld LJ agreed) said at 92:

“I do not believe that the judge was right to conclude that the alternative case put forward by the patentees is unarguable upon the assumed facts. Despite the view as to the meaning of claim 20 which I have expressed above, it would not be right, at this stage of the action, to come to any concluded view as to the ambit of claim 20. The patent must be construed as a whole and the claims interpreted according to the Protocol on Interpretation. The subject of the specification is complicated. To come to a concluded view, the mantle of a man skilled in the art must be adopted. That will require the aid of expert evidence. The words of Dillon LJ in Strix v. Otter Controls Ltd which I have quoted, are in my view just as apt today after the Civil Court Practice Rules [sic] came into force as they were when the Rules of the Supreme Court were applicable.”

Counsel for Delta submitted that the present case was exceptional for three reasons. First, the same Patent and the same allegedly infringing seat unit have already been the subject of a trial and an appeal to the Court of Appeal. Both judgments record that there was no substantial disagreement as to either the skilled team or the common general knowledge, and set out the relevant matters. It follows that that this Court is in a position to adopt the mantle of the skilled team. Not only that, but also there are already findings of fact as regards both as to the general background, as to the construction of the Solar Eclipse and as to Contour’s acts with regard to the Solar Eclipse.

Secondly, Virgin has expressly averred in its Particulars of Infringement that Virgin will rely upon the findings in the Contour Action for the purpose of these proceedings. Furthermore, without prejudice to Delta’s position should this matter proceed to trial, Delta is prepared to accept the findings of the courts in the Contour Action for the purpose of this application.

Thirdly, for the purposes of this application, Virgin has filed a further expert report from its expert witness in the Contour Action, Mr Moreno. In that report, unsurprisingly, Mr Moreno does not say that the amendments to the claim give rise to different considerations to the attributes of the skilled team or as to their common general knowledge. Nor does he suggest that the amendments change the teaching of the Patent. On the contrary, he states at paragraph 19:

“Having looked at all the amendments, I still say that everything I said in that previous report about the background to and the general teaching of the VAA Patent still holds true.”

In these circumstances, counsel for Delta submitted that this Court was in a better position to construe the claims of the Patent than the court would normally be at a trial. He also pointed out that the hearing of this application had taken nearly two days, which is longer than most patent infringement trials in most continental European courts.

Counsel for Virgin did not submit that this Court was not in a position to adopt the mantle of the skilled team. Nor did he submit that any further evidence was either required or likely to be available with regard to either the attributes of the skilled team or their common general knowledge. Instead, he argued that summary judgment was inappropriate in this case for other reasons which I shall discuss below.

In my judgment, I am in a position to construe the claims of the Patent for the reasons given by counsel for Delta. To that extent, the present case is one which, unusually, is suitable for summary determination. Whether that means that summary judgment in favour of Delta is justified is another matter.

Delta’s case on this application can be summarised as follows:

Virgin’s case can be summarised as follows:

During the course of the hearing, Delta developed a fallback position to meet Virgin’s point (iv). This is that, even if Delta does not succeed in its application for summary judgment in respect of Contour’s past acts, Delta is entitled by way of summary judgment to a declaration in the following terms:

“procuring the manufacture and supply of shipsets of Solar Eclipse seat unit by Contour for exportation out of the United Kingdom, during the course of which each seat unit will be manufactured, tested, packaged and (where necessary) inspected only as a discrete article distinct and separate from any other seat unit does not infringe the Patent as amended.”

Although claim 2 is an independent claim, it is common ground that for the purposes of the present application it stands or falls with claim 1 and does not require independent consideration.

There is no dispute as the basic principles. They were summarised by the Court of Appeal in Contour at [5]:

“One might have thought there was nothing more to say on this topic after Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. The judge accurately set out the position, save that he used the old language of Art.69 EPC rather than that of the EPC 2000, a Convention now in force. The new language omits ‘the terms of’ from Art.69. No one suggested the amendment changes the meaning. We set out what the judge said, but using the language of the EPC 2000:

[182] The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma Pty Ltd v Pharmacia Italia SpA [2005] EWCA Civ 137 and refined by Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2005] EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. An abbreviated version of them is as follows:

(i)

The first overarching principle is that contained in Article 69 of the European Patent Convention.

(ii)

Article 69 says that the extent of protection is determined by 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.

(iii)

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

(iv)

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. Purpose is vital to the construction of claims.

(v)

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.

(vi)

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 Article 69 itself. It is the terms of the claims which delineate the patentee's territory.

(vii)

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.

(viii)

It also follows that where a patentee has used a word or phrase which, a contextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.

(ix)

It further follows that there is no general ‘doctrine of equivalents.’

(x)

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.

(xi)

Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.”

The Court of Appeal went on to hold at [6]-[22] that the skilled reader is to be taken to know (i) the purpose of including reference numerals in patent claims, (ii) the purpose of dividing claims into pre-characterising and characterising portions and (iii) the practice of filing divisional applications, and to bring that knowledge to bear when he considers the scope of the claim. The general reasoning behind these conclusions was explained by Jacob LJ as follows:

“12.

First in Kirin-Amgen itself Lord Hoffmann said that the skilled reader:

‘[33] … reads the specification on the assumption that its purpose is to both describe and demarcate an invention – a practical idea which the patentee has had for a new product or process.’

And:

‘[34] … it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new …’

13.

So the skilled reader is taken to suppose that the patentee knew some patent law – that his claim is for the purpose of defining the monopoly and that it should be for something new. Knowledge of that may well affect how the claim is read – for instance one would not expect the patentee to have used language which covered what he expressly acknowledged was old.

14.

Moreover as Lord Hoffmann said at [34]:

‘[34] … The words will usually have been chosen on skilled advice. The specification is not a document inter rusticos for which broad allowances must be made.’

15.

We think it would unrealistic – indeed perverse – for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed. Likewise when there is a reference to the patent being a divisional application, it would be perverse to work on the basis that the skilled man would not know what that means. A real skilled man reading a patent which, as in the case of the Patent, refers to ‘the parent application’ would surely say ‘what's a parent application?’ – and he would go on to ask a man who knows, probably a patent agent.”

In my judgment it follows from this logic that the skilled reader is also deemed to know about, and take into account, the following matters:

The skilled team was described by Lewison J in the Contour Action as follows:

“191.

There is much common ground about the identity of the notional skilled addressee who, in this instance, is a team. The team is a team of aircraft and transportation designers comprising designers and engineers with a knowledge [of] aircraft seats in general, and in particular reclining aircraft seats. The team members would include:

i)

Members skilled in designing aircraft layouts and fitting seats and units into such layouts;

ii)

Designers and engineers with at least first degree level and actual experience;

iii)

Some members with experience in the regulatory side of aircraft seating layouts and ancillary items such as crash testing and stresses, the transfer of loads from seats to the aircraft structure, and decompression requirements.

192.

The team may also include operators of commercial civil aircraft, although nothing turns on this addition to the team.”

The common general knowledge of the skilled team was described by the Court of Appeal in its first judgment in the Contour Action as follows:

“23.

There was no significant controversy about this. The judge sets it out at [193] and we do not need to set it all out here. We will focus just on the bits that matter for present purposes. The skilled man would know about the important developments in aircraft seats and seating systems. In particular he would know about what were called BA First (disclosed in the BA Application), BA Yin Yang and other commercially used seat/bed systems. We borrow with gratitude and some modification part of the judge's descriptions of these.

BA First

24.

For the first class passenger, all this [i.e. simple seats which reclined but not as far as the horizontal] changed in 1996. In that year BA introduced a new seating system for its first class cabin called BA First, which allowed for a completely flat bed. It provided seats in individual "pods" or compartments formed by privacy screens. Each compartment consisted of both a seat and an ottoman (or footstool) which could be used both as part of the bed when the seat was laid flat and also as occasional seating by a guest passenger (hence it is sometimes called a "buddy seat"); and each seat was at a slight angle to the longitudinal axis of the plane, facing towards the cabin wall. This angled arrangement of seats is called a "herringbone". Where the seats face towards the aisle the herringbone is called an "inward facing herringbone"; otherwise it is called an "outward facing herringbone". The BA First seating arrangement was an outward facing herringbone, which BA had adopted in preference to an inward facing herringbone because it gave passengers more privacy.

25.

The individual seat/bed pod of BA First was like this (the drawing is from the BA Application):

A mechanism was provided so that the passenger could cause the seat to slide forward to meet the "ottoman". Note that the head portion moved slightly backwards within the pod – about 4 to 5 inches in practice.

26.

An example of an inward herringbone was in fig. 4 of the BA Application:

Although not in practice used by BA or any of the other airlines that followed the possibility of an inward facing herringbone was known to all.

27.

The judge thought (see [194] – [197]) that an inward herringbone - because it was not seen "as a basis for further action" – did not count for the purposes of common general knowledge. However, at least for the purposes of considering the scope of a claim, if the reader knows of an idea and rightly assumes that the writer knew it too, then the reader will surely bear it in mind when trying to work out what the writer meant by the words he used. In other contexts, for instance obviousness, a well-known but unused idea may have less significance compared with one that was well in use. In this appeal the point does not really matter because neither side's case really depended on whether inward facing herring-bones were cgk.

28.

BA First was a giant success. Other airlines followed (details are in the judgment at [5]). Initially it was all for first class, all with outward herringbones. American Airlines in 2000 used a variant with a swivelling seat.

BA Yin Yang

29.

Business class full length bed/seats came next. There is less room for these. BA came out with what was called the Yin Yang seat. It had interlocking seats in a head-to-toe formation; one passenger sitting and sleeping next to the aisle and the other sitting and sleeping next to the window. One of the two passengers faced forwards; and the other faced backwards. This arrangement of seats provided good density of accommodation. However, it had its drawbacks. The passenger in the seat further from the aisle had to climb over the other passenger to get in and out of his seat; and many passengers did not like the feeling of travelling backwards.

Virgin J2000

30.

This too was business class. The seats were arranged in conventional rows and columns. Although the J2000 provided a bed, it did so at a slight tilt; and was in the nature of a reclining seat. The foot of the bed had to be partially accommodated under the seat of the passenger in front. The J2000 was a moderate commercial success.”

The Court of Appeal described the teaching of the Patent as granted in its first judgment in the Contour Action follows:

“31.

The title of the Patent is ‘a novel seating system for a passenger vehicle, particularly an aircraft, and a seating unit for a passenger system.’

32.

So at this early stage the skilled man thinks he is going to be told about both a novel system and a novel unit. The Patent then goes on to acknowledge various items of prior art and their problems. It says, at [3] that the old, pre-BA First, partial recliners were not all that comfortable because they were not truly flat. It says at [4] that the possibility of using what might be called a ‘full recliner’ has been disclosed but that the pitch between adjacent rows of seats has to be increased. It also points out that if you use the seat also as part of a bed ‘the surface is not ideal, because the foam or other padding on the seat is generally sculptured for use as a seat, whereas for a bed it is desirable to have a substantially flat surface.’

…

34.

[6] is a most important paragraph and central to the second issue of construction of claim 1 (issue (iii)). It is an acknowledgement of the BA Application and a statement of what the inventors of the Patent say are its disadvantages. It begins by describing briefly the seat unit of the BA Application. It says that in bed mode it forms ‘a continuous, flat sleeping mode.’ Mr Meade emphasises flat – saying it shows that the inventors do regard the bed of the BA application (with its sculpted seat) as ‘flat.’

35.

Having first referred to the BA Application bed units, [6] goes on to describe how they are arranged – broadly this is, as we have already described, as an inward or outward herringbone. But it is important to see how the inventors describe it because it throws considerable light on the meaning of claim 1. So we set it out in full:

‘The seating unit defines a notional, longitudinal seat axis, and a plurality of such seating units may be arranged with the cabin side-by-side in a longitudinally offset relation with respect to the longitudinal axis of each seat, with each seating unit being oriented at an acute angle to the longitudinal axis of the aircraft fuselage, so as to define a generally triangular or trapezoidal space to the front or rear of each seating unit (according to whether the seating units face outwards or inwards relative to the cabin). The space is used to accommodate a counter-top to one side of an adjacent seating unit and optionally a cupboard or other storage space.’

We emphasise the words about the space defined. One can see it in fig. 4 of the BA Application (see [26] above). The arrow 21 runs through it.

36.

[6] continues, saying that the seating unit of the BA Application:

‘… has the advantage that by incorporating an additional, secondary seat in the flat sleeping surface together with the back-rest, seating portion and leg-rest of the primary seat, it is possible to form a long seating surface which is able to accommodate comfortably passengers having a height of greater than 6ft (1.83m).’

37.

It then sets out three disadvantages of the BA Application. The judge summarises these accurately:

i)

It requires more cabin space than a conventional layout of seats;

ii)

The seat cushioning is designed principally for use as a seat and not as a bed (the same disadvantage that it had referred to in paragraph [0004]);

iii)

The seat itself occupies a very large floor area and is therefore unsuitable for use in business class.

38.

After an acknowledgement of Yin Yang and a statement of its disadvantages (extravagant use of space, too short for tall passengers and the use of cushioning not specifically designed for a bed) and of two other pieces of prior art we need not refer to), the Patent comes to set out the objects of the invention at [11]-[16]. The judge accurately summarises them:

i)

To provide improved accommodation in business class incorporating a flat sleeping surface of maximal length and preferably maximal width;

ii)

To provide an improved passenger accommodation unit adapted to provide self-contained individual seating and sleeping accommodation, particularly for use in business class;

iii)

To provide a passenger accommodation unit which can be converted into a bed of maximal length;

iv)

To provide a seating system which optimises use of space within the cabin;

v)

To provide a seating system which has a substantially uncrowded appearance.

39.

The Patent then begins with its description of the invention, starting, as is conventional, with what is often called the ‘consistory clause’. Unusually (we do not suggest the skilled man would know that) it is not exactly the same as claim 1. This is what is said:

‘According to the present invention, there is provided a passenger seating system for an aircraft, comprising a plurality of seat units, each seat unit defining a notional longitudinal seat axis and comprising a supporting structure adapted for attaching the seat unit to a floor of an aircraft and means forming or being configurable for forming a seat comprising a seat-pan and a back-rest, said seat units being arranged to form a column defining a notional longitudinal column axis, in which column said seat-units are arranged side-by-side in longitudinally off set relation at an acute angle to the notional column axis, thereby defining a space to the rear of each seat, each seat unit further comprising means forming or being configurable for forming a substantially flat bed, so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat (Seating system of the type disclosed e.g. in [the BA Application]), and characterised in that the flat-bed extends rearwardly into said space behind the seat. The invention also provides seat unit for such a passenger seating system.’

The difference between claim 1 and the consistory clause lies in the fact that the latter includes the italicised passage – one upon which Mr Meade relies and one which Mr Vanhegan fairly accepts causes him difficulty as we shall explain below. Immediately following the italicised passage is a description of the ‘space-packing’ idea – using the space behind the seat formed by the inward herringbone to increase the size of the bed.

40.

Moving on, the Patent goes on to describe various ‘preferred’ forms of the invention. It is not necessary to recite most of these. Mr Vanhegan particularly relies on passages in [26], [45] and [47] of the Patent. So we set them out:

‘[26] … Said first and second elements may [misprinted as ‘my’] occupy all of the space to the rear of the seat.

[45] [part of the description of the specific embodiment] … The space 36 behind each seat 71,72 is thus used to extend the length of the bed surface 47,48, 67, 74, 76 provided by the seat unit 40 in the bed configuration rearwardly of the seat 71,72 into said space 36.

[47] [again speaking of the specific embodiment] … the seat units 40 … are arranged such that to the rear of each seat 71,72 the seat unit defines a generally triangular or trapezoidal space 36 which is occupied by the first surface 40 and the second surface 48 of another seat unit 40.’

41.

The Patent has only one specific embodiment. The individual seat/bed unit described and pictured is, it is accepted, at least for present purposes, novel and inventive. It is shown in fig. 2:

42.

The picture shows three units. On the right is normal seat mode, in the middle in recline mode and on the left, bed mode. Instead of getting to bed mode by just reclining more, the seat is turned over so as to use the seat back as part of the bed. This was called ‘flip-over’ in argument and we shall use that term to describe both this particular arrangement and other arrangements which allow the passenger to sit and sleep on different surfaces.

43.

Flip-over has the advantage that you no longer have the problems you have with a flat bed recliner - those caused because you are using the seat pan and back also for the bed. With flip-over you can get an entirely smooth flat surface save for the join with the ottoman – which is not that important because it is where your legs will be.”

Most of this holds good now that the Patent had been amended. The principal change is that the consistory clauses now read somewhat differently to reflect the amendments to the claims.

Broken down into integers, claim 1 of the Patent as amended is as follows:

“[1] A passenger seating system for an aircraft, comprising a plurality of seat units (40),

[2] each seat unit defining only one notional longitudinal seat axis (C-C) and

[3] comprising a supporting structure (42) adapted for attaching the seat unit to a floor (30) of an aircraft (12) and

[4] means for forming or being configurable for forming a seat comprising a seat-pan (71) and a back-rest (72),

[5] wherein each seat unit further comprises a foot-rest (65) positioned forwardly of the seat,

[6] said seat units being arranged to form a column (29) defining a notional longitudinal column axis (B-B),

[7] in which column said seat-units are arranged side-by-side in longitudinally offset relation at an acute angle to the notional column axis (B-B),

[8] wherein at least some of the seat units are arranged to be disposed adjacent a sidewall (26,28) of the aircraft and face inwardly thereby to define between the rear of each seat and the sidewall a space (36) when the seat unit is configured as a seat,

[9] each seat unit further comprising means for forming or being configurable for forming a substantially flat bed (47,48,67,74,76),

[10] so that when the seat unit is formed into a bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat,

[11] wherein said seat forming means and said bed forming means comprise one or more movable passenger-bearing elements which are selectively configurable to form, in a seat mode, at least part of the seat for a passenger or, in a bed mode, at least part of said flat bed, and

[12] wherein the flat bed in the bed mode is disposed at substantially the same level above an aircraft floor (30) as the seat-pan (71) in the seat mode, and

characterised in that

[13] the flat-bed extends into said rearward space (36) behind the seat,

[14] in that said acute angle is in the range 30 - 60°, and

[15] in that a generally triangular passenger support element is disposed in said rearward space (36) substantially coplanarly with said one or more movable elements when said movable elements are configured in the bed mode and is adapted to form part of said bed.”

As noted above, for the purposes of the present application Delta accepts the findings of the courts in the Contour Action. Furthermore, Delta accepts that at this stage it must be assumed that Delta is jointly liable for any infringing act committed by Contour in relation to seats for supply to Delta. Counsel for Virgin submitted that, since the Court of Appeal had made a finding of infringement of claim 1, it followed that it was not open to Delta to dispute that Contour had infringed claim 1 and hence that Delta was jointly liable for such infringement. Counsel for Delta disputed this.

In my judgment Delta is not precluded from disputing that Contour has infringed claim 1 as amended by its present acceptance of the findings in the Contour Action. First, the Court of Appeal finding was that Contour had infringed claim 1 as granted. It made no finding of infringement of claim 1 as amended. Claim 1 as amended was not in issue in the Contour Action. Indeed, the amendment had not then been made. Secondly, neither Lewison J nor the Court of Appeal considered the issue of construction of amended claim 1 raised by the present application, still less did they reach any conclusion on that issue. It was not even argued before the Court of Appeal.

It is common ground that claim 1 must be construed as a whole in the context of the specification as a whole. It is nevertheless conventional, and necessary with a claim this long, to consider the claim integer by integer. Furthermore, it is also common ground that some of the integers do not throw any light on the present issue. Accordingly, I shall concentrate on the ones that do.

A passenger seating system. The word “system” in a patent claim can sometimes confuse the uninitiated reader. In a product claim like claim 1, it is simply a word for a complex product. It could equally well be replaced by the word “apparatus”. Accordingly, neither side suggested that the word “system” in itself had any bearing on the present dispute. On the other hand, as at the Court of Appeal pointed out in its first judgment in the Contour Action at [32], the skilled team would know from their reading of the specification that the Patent describes “both a novel system and a novel unit”. Thus the skilled team would approach the claim on the basis that the “passenger seating system” is to be distinguished from the “seat units” of which it is comprised.

For an aircraft. Counsel for Delta accepted that the word “for” in a product claim like claim 1 is normally to be construed as meaning “suitable for”: see Adhesive Dry Mounting Co Ltd v Trapp (1910) 27 RPC 341, Instituform Technical Services Ltd v Inliner UK plc [1992] RPC 83, Bühler AG v Satake UK Ltd [1997] RPC 232 at 239-240, Coflexip SA v Stolt Comex Seaway MS Ltd [2000] EWCA Civ 242, [2000] IP&T 1332 at [23]-[27], FNM Corp Ltd v Drammock International Ltd [2009] EWHC 1294 (Pat) at [56]-[74], Zeno Corp v BSM-Bionic Solutions Management GmbH [2009] 1829 (Pat) at [26]-[37] and the EPO’s Guidelines for Examination (April 2009 edition) section C-III paragraph 4.13.

Comprising a plurality of seat units. It is common ground that “comprising” means including and “plurality” means more than one.

A supporting structure. The specification explains:

“[0036] Embedded within the floor 30, the infra-structure of the fuselage 10 comprises a plurality of pairs of seat tracks 33, 34 of the kind well known to those skilled in the art…

[0053] … Thus, the seating system in accordance with the present invention may be constituted by a plurality of seat modules as shown in FIG. 1A … By attaching a plurality of said seat modules 80 to a pair of seat tracks 32, 34 in a cabin 20, 21, a plurality of seat units 40 can be assembled, each unit 40 comprising the seat housing 43 of one module and the ottoman 65 of another adjacent module 80.

[0054] … Each seat module 80, may be attached directly to seat track pair 32, 34 or, alternatively, the supporting structure 42 of each module 80 may comprise a plinth or palette (not shown), which plinth or palette is attached to seat tracks 32, 34….”

Counsel for Virgin submitted that this description makes it clear that the seat units comprising the seating system comprise a supporting structure, but not the seat tracks embedded within the floor of the cabin of the aircraft. Counsel for Delta did not dispute this.

Adaptedfor attaching the seat unit to a floor. Counsel for Virgin submitted that this merely means that the supporting structure is suitable for attaching the seat unit to the floor (via the seat tracks). Again, counsel for Delta did not dispute this.

Said seat units being arranged to form a column. Counsel for Delta emphasised the words “being arranged” and the contrast between this wording and the words “adapted for attaching” in integer [3]. He submitted that this wording required the seat units actually to be arranged to form a column. Counsel for Virgin submitted that it was sufficient if they were capable of being arranged to form a column. In my view the natural way for the skilled team to read these words is as submitted by counsel for Delta. As I shall discuss, there are a number of similar points in other integers of the claim. In each case my view is the same.

In which column said seat-units are arranged side-by-side. Again, counsel for Delta emphasised the words “arranged side-by-side” and submitted that this wording required the seat units actually to be arranged side-by-side. Counsel for Virgin submitted that it was sufficient if they were capable of being arranged side-by-side.

At an acute angle to the notional column axis. Again counsel for Delta submitted that this wording required the seats units actually to be arranged at an acute angle to the axis of the column. Again counsel for Virgin submitted that it was sufficient if they were capable of being arranged at an acute angle.

At least some of the seat units are arranged to be disposed adjacent a sidewall of the aircraft and face inwardly. Again counsel for Delta submitted that this wording required the seats units actually to be disposed adjacent a sidewall of the aircraft and to face inwardly. Again counsel for Virgin submitted that it was sufficient if they were capable of being disposed adjacent a sidewall and to face inwardly.

Thereby to define between the rear of each seat and the sidewall a space when the seat unit is configured as a seat. Counsel for Delta submitted that this space was not defined until the seat unit was disposed adjacent a sidewall on an aircraft. Counsel for Virgin submitted that the presence of the sidewall was not required in order to define the space since the space in question was triangular and the sidewall was merely the third side of the triangle, the apices of which were defined by the seat unit.

This part of integer [8] was considered by the Court of Appeal in its first judgment in the Contour Action:

“95.

The issue turns on the construction of integer (d). What is meant by thereby to define between the rear of each seat and the sidewall a space (36) when the seat is configured as a seat? What is the space referred to? For it is into that space that feature (f) requires the flat-bed to extend.

96.

Mr Vanhegan argues thus:

i)

The BA Application shows, and BA First had, a seat in which the seat moves back as one changes it to bed mode – see [25] above.

ii)

The space behind the seat in seat mode is defined by the rear of the seat and the sidewall.

iii)

So feature (f) of the claim is satisfied.

iv)

Thus the BA Application (and BA First) anticipates the claim.

97.

The argument depends therefore on construing the ‘space’ as meaning any area behind the actual seat when in seat mode.

98.

Mr Meade contends that is wrong. He produced a convenient diagram to illustrate the difference between his contention and that of Mr Vanhegan. It is a coloured enlarged portion of fig. 4 of the BA Application:

99.

This shows two ‘spaces’ – the pink is the space, rear of the actual seat, into which the bed extends. It is all in the pod. The green is the space behind that. Mr Meade submits that the bed of the Patent claim must extend into the green. Since that does not happen in BA, there is no anticipation. So it all depends on what the ‘space’ of the claim means.

100.

We have no doubt that the skilled man would read this part of the claim as confined to the ‘green’ space. He would know that the patentee was specifically acknowledging BA as old – so he can hardly have been intending to claim it by the words he used. Only if no other possible construction is possible would the skilled man be forced to conclude that the patentee had claimed that which he knew was old.

101.

Secondly such a construction would miss the whole point of the space-saving idea of the patent. The point is that by using a herringbone you have ‘lost’ some space. You get some of it back by extending the bed into the space lost because you have a herringbone. The pink space of BA is not space lost because you have a herringbone – it is space which is occupied by the bed in its pod – nothing to do with the herringbone.

102.

So when the skilled reader asks himself ‘What is the defined space?’ he takes into account that it is the herringbone which thereby defines the space.

103.

Now it is true that in various passages (we set out those particularly relied upon by Mr Vanhegan above at [40]) the patentee talks about the space rear of the seat. But the context is always where in bed mode the bed extends into the space caused because there is a herringbone. All the space behind the seat is such a space – green space. So that does not tell the skilled man that the patentee intended to include other space – the pink space of the BA Application for instance.”

In my judgment this passage, in particular [102]-[103], provides strong support for Delta’s interpretation of this part of integer [8], and indeed of integer [8] as a whole. As the Court of Appeal points out, the whole point of the invention is to save some of the space lost by arranging the seat units in an inwardly-facing herringbone arrangement next to the sidewall of the aircraft. Furthermore, it is the inwardly-facing herringbone arrangement which “thereby” defines the space between the rear of each seat unit and the sidewall.

The flat bed in the bed mode is disposed at substantially the same level above an aircraft floor as the seat-pan in the seat mode. Again counsel for Delta submitted that this required the flat bed actually to be disposed at substantially the same level above the aircraft floor as the seat-pan. Again counsel for Virgin submitted that it was sufficient that the flat bed was capable of being disposed at substantially the same level as the seat pan.

The flat-bed extends into said rearward space behind the seat. Again counsel for Delta submitted that this required the flat bed actually to extend into the space defined in integer [8]. Again counsel for Virgin submitted that it was sufficient that the flat bed was capable of extending into that space.

A generally triangular passenger support element is disposed in said rearward space. Again counsel for Delta submitted that this required the support element actually to be disposed in the space defined in integer [8]. Again counsel for Virgin submitted that it was sufficient that the support element was capable of being disposed in that space.

Both sides rely upon subsidiary claims as supporting their respective interpretations of claim 1. Delta relies upon claims 5 and 6. The point is the same in relation to each, and so it is sufficient to refer to claim 5. This is as follows:

“A seating system as claimed in any preceding claim, wherein said aircraft comprises an accommodation cabin (20, 21) in which the seating system is located, which cabin defines a notional longitudinal cabin axis (A-A), and wherein said notional column axis (B-B) is substantially parallel to said cabin axis.”

Counsel for Delta pointed out that claim 5 was dependent on claim 1. He submitted that claim 5, and in particular the words “said aircraft comprises an accommodation cabin in which the seating system is located”, confirmed that that the seating system of claim 1 was assembled and installed on an aircraft. Counsel for Virgin’s response was the same as before: the claim merely requires that the seating system can be located in the accommodation cabin. In my view this point provides support for Delta’s interpretation of claim 1, but is not conclusive.

Virgin relies on claim 8, which is as follows:

“An accommodation cabin for an aircraft comprising a seating system as claimed in any preceding claim.”

Counsel for Virgin submitted that this made it plain that the seating system did not include the accommodation cabin of the aircraft. Counsel for Delta replied that this was not inconsistent with Delta’s construction: the seating system does not include the accommodation cabin, but this does not prevent claim 1 from requiring the seating system to be located in the accommodation cabin or from requiring the presence of parts of the cabin. I agree with Delta on this point.

Counsel for Delta submitted that Delta’s interpretation was supported by consideration of the inventors’ purpose. He pointed out that the five objects of the invention set out in the specification at [11]-[16] and summarised by the Court of Appeal in the Contour Action at [38] are all about providing an arrangement of seat units which saves space in an aircraft cabin, so as to provide a flat bed of maximum length and width without reducing passenger numbers or making the cabin look crowded. He submitted that these objects were only realised when the seat units were arranged and installed on an aircraft.

I accept this argument so far as it goes, but in my view it has little bearing on the present issue of construction. As discussed above, the specification makes it clear that it discloses both seating systems and seat units. Thus the inventors’ purpose is to provide both seat units and seating systems. But the issue here is whether this claim is limited to seating systems in which the seat units have been assembled and arranged in a particular manner or whether it extends to seat units which are capable of being assembled and arranged in such a manner. At the end of the day this depends on the language chosen by the patentee.

Counsel for Virgin submitted that Delta’s construction depended on a meticulous verbal analysis of claim 1. Counsel for Delta riposted by reminding me of what Pumfrey J (as he then was) had said in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2005] EWHC 1623 (Pat), 2006] RPC 2 at [69]:

“… over-meticulousness is not to be equated to carefulness. Care in working out what the patentee was aiming at when he chose the words he used is absolutely necessary.”

In my view Delta’s construction of claim 1 does not depend on a meticulous verbal analysis. It simply involves a natural reading of the words chosen by the patentee in the context of the specification as a whole, paying due regard to the inventors’ purpose.

Counsel for Virgin suggested that Delta’s construction of claim 1 deprived the patentee of fair protection. I disagree. So far as seating systems are concerned, I consider that it provides protection commensurate with the patentee’s contribution and purpose. It is true that it does not provide full protection in respect of seat units as distinct from seating systems. In my view that does not justify giving claim 1 a wider interpretation. Although the Patent is deemed always to have had its present form, and so the skilled team would not know that it once contained claims to seat units, they would know that:

By contrast, I consider that Virgin’s interpretation does not provide reasonable certainty for third parties. How then is a third party to decide whether he is within the claim? Is it enough for him to have two seat units in his possession that could be arranged in an aircraft cabin in the manner called for by the claim? If so, why does the claim contain all this language about “being arranged”, “is arranged”, etc? If not, what more is required? Is it sufficient or even necessary to put two seat units next to each other on the floor of an aircraft hanger? I think that counsel for Virgin eventually accepted that, on Virgin’s construction, it was not even necessary to have the two seat units in the same room. Nor, on Virgin’s construction, does it matter that it is physically possible to assemble and arrange the seat units in a different manner to that specified in the claim.

In my judgment Delta’s interpretation of claim 1 is supported by the wording of integers [6], [7], [8], [12], [13], [15] considered above, and in particular by the wording of the second limb of integer [8] and the interpretation placed on that wording by Court of Appeal in the Contour Action. It is also supported by claim 5. It is consistent with the inventors’ technical purpose. It does not involve meticulous verbal analysis. It provides fair protection for the patentee and reasonable certainty for third parties. I therefore conclude that claim 1 is limited to a plurality of seat units assembled and arranged on an aircraft in the manner required by the claim. It does not extend to a plurality of seat units which are merely capable of being so assembled and arranged.

Counsel for Delta submitted that, if claim 1 was construed as Delta contended, then it was plain that Contour had not infringed it. Counsel for Virgin disputed this. Who is right depends of whether there can be infringement under section 60(1)(a) by dealings in a “kit of parts”, and if so, how far that possibility extends.

Section 60 of the 1977 Act provides, so far as is relevant, as follows:

“(1)

Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say—

(a)

where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;

(b)

where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;

(c)

where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

(2)

Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

(3)

Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.”

Section 130(7) declares that a number of sections in the 1977 Act, including section 60, “are so framed as to have, as nearly as practicable, the same effect in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply.” Articles 25 and 26 of the CPC provide as follows:

“ARTICLE 25

Prohibition of direct use of the invention

A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent:

(a)

from making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes;

(b)

from using a process which is the subject-matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, from offering the process for use within the territories of the Contracting States;

(c)

from offering, putting on the market, using or importing or stocking for these purposes the product obtained directly by a process which is the subject-matter of the patent.

ARTICLE 26

Prohibition of indirect use of the invention

1.

A Community patent shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply within the territories of the Contracting States a person, other than a party entitled to exploit the patented invention, with means relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances, that these means are suitable and intended for putting that invention into effect.

2.

Paragraph 1 shall not apply when the means are staple commercial products, except when the third party induces the person supplied to commit acts prohibited by Article 25.

3.

Persons performing the acts referred to in Article 27(a) to (c) shall not be considered to be parties entitled to exploit the invention within the meaning of paragraph 1.”

Section 60(2) and Article 26 were considered by the Court of Appeal in Menashe Business Mercantile Ltd v William Hill Ltd [2002] EWCA Civ 1702, [2003] 1 WLR 1462. Aldous LJ, with whom Dyson LJ (as he then was) and Sir Denis Henry agreed, said:

“22.

Mr Arnold, who with Mr Brandreth appeared in this court for William Hill, submitted that section 60 of the 1977 Act was confined to acts committed within the United Kingdom. For support he relied upon the fact that patents are territorial in nature (see Fort Dodge Animal Health Ltd v Altzo Nobel NV [1998] FSR 222) and a passage in my judgment in Plastus Kreativ AB v Minnesota Mining and Manufacturing Co [1995] RPC 438, 442:

‘The power to make a declaration under section 71 of the 1977 Act is confined to acts within the United Kingdom. The acts referred to are the acts of infringement which are set out in section 60 of the Act. That section makes it clear that infringement only occurs if a person does an act within the United Kingdom without the consent of the proprietor.’

23.

What I said in the Plastus Kreativ case is, I believe, correct, but that statement does not help to resolve the dispute as to the true meaning of the words in the last half of section 60(2) and in particular the meaning of ‘to put, the invention into effect in the United Kingdom’. It was directed at the first territorial limitation in section 60(2) and the only territorial limitation in section 60(1), as was the judgment in the Fort Dodge case.

24.

I believe that Mr Arnold is correct and that ‘the invention’ referred to in section 60(2) is that claimed in the patent: see section 125. In this case, as Mr Arnold pointed out, the claimed invention is an apparatus. If so, I believe he is right that the words ‘to put, the invention into effect’ must require the means to be intended to put the apparatus claimed into effect: thereby requiring the claimed apparatus to become effective. Thus the means … must be suitable for putting and be intended to put the claimed apparatus in a state of effectiveness, essentially to put into an infringing state in the United Kingdom.

25.

That construction is supported by the purpose of section 60(2). It is intended to extend the right of a patentee to prevent what are called the direct infringing acts of section 60(1) to include also the indirect infringing acts of section 60(2). That is supported by the records of the Luxembourg Conference on the Community Patent 1975 which shows that the word ‘therein’ in Article 26(1) was inserted to clarify paragraph 1 ‘to the effect that it was prohibited to offer or supply the means referred to for using the invention within the territories of the contracting states’. Thus the committee contemplated that Article 26(1) was concerned with means which were essential for the use of the invention and that both the supply of the means and the use should take place in the relevant territories. The construction proposed is also borne out by the headings to Articles 25 and 26 which both state that the articles are concerned with ‘Prohibition of … use of the invention’. If Article 26(1) had been concerned with effect, then I would have expected the heading to that article to have been different to that in Article 25.”

As this discussion makes clear, in order for there to be infringement under section 60(2), a double territorial requirement must be satisfied. First, the supply or offer for supply of the “means relating to an essential element of the invention” must take place in the UK. Secondly, the means must be “suitable for putting, and intended to put, the invention into effect” in the UK. The “invention” for this purpose is that claimed in the patent. Where the invention is an apparatus, the apparatus must be intended to be put into an infringing state in the UK.

In the present case, Virgin does not allege that Contour has infringed the Patent as amended pursuant to section 60(2). The reason for this is clear. Although Contour has supplied or offered to supply seat units, which would plainly constitute means relating to an essential element of the invention of claim 1, to Delta in the UK, the seat units are assembled and arranged into the seating system on aircraft in the USA.

The question of infringement of product claims by dealings in a “kit of parts” has arisen in two previous English cases, Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 and Lacroix Duarib SA v Kwikform (UK) Ltd [1998] FSR 493.

In Rotocrop the plaintiff was the proprietor of a patent relating to a commercially successful compost bin constructed of slidable inter-engaging panels each of which could be raised so as to permit the removal of compost. Each panel had one male and one female edge. The plaintiff alleged that the patent had been infringed by the manufacture and sale by the defendant of a bin which it sold in kit form. The defendant’s bin was constructed of alternating slidable panels which possessed exclusively male or female edges. It is important to note that the plaintiff alleged that the defendant had committed infringing acts both before and after the coming into force of the 1977 Act on 1 June 1978.

Claims 6 and 14 of the patent were as follows:

“6.

A method of producing compost from decomposing vegetable matter substantially as herein described.

14.

A compost bin substantially as described herein and with reference to the accompanying drawings.”

Graham J held that the defendant had infringed claims 6 and 14. As a matter of construction, he held that claim 14 extended to a compost bin constructed in the manner of the defendant’s bin, and claim 6 to the use of such a compost bin for making compost. With regard to whether the defendant had committed infringing acts, he held as follows at 258-260:

“Joint tortfeasance and allied matters

As will be realised, the above conclusions have been reached on the assumption that the defendants themselves have been shown to have carried out the several acts which constitute infringement, but the matter is not as simple as that, because infringement is alleged both before and after the coming into force of the new 1977 Act. This in fact came into force on 1 June 1978, and it follows that conclusions also have to be reached on the meaning and effect of section 60 (2) of the new Act and of the Transitional Provisions which are to be found in Schedule 4 and particularly section 3.

The facts are that the defendants themselves do not normally themselves make compost. No doubt they have made it experimentally at one time, though this is not proved. However they sold before the Act and now after the Act continue to sell kits of parts for their customers to build into bins. They issue full instructions (Bundle C, pp. 15 to 18) with every kit to enable the customer to do so. By virtue of these actions, in my judgment, the defendants are joint tortfeasors with their customers who erect and use their bins in accordance with the defendants' instructions. When a customer does so and makes compost, as he is told to do, he is in my judgment a joint tortfeasor with the defendants and they are similarly joint tortfeasors with him. Both have a common design within the meaning of The Koursk [1924] P. 140 and Morton-Norwich Products v. Intercen Ltd [1978] R.P.C. 501, respectively. Here the defendants are joint tortfeasors with Miss Harris who admittedly bought a kit of parts for a bin from the defendants and it is a proper inference that she made it up. It is not in fact positively proved that she made compost in it. However it is quite clear from their advertisements that the defendants invited their customers to make bins from the kits they sold and to use them for making compost. It is a fair inference that at least some of them did so and the defendants knew quite well that they would do so as alleged in the particulars of infringement. The same applies to Miss Harris. That being so I find the defendants to be joint tortfeasors with their customers, including Miss Harris, in infringing claim 6.

As regards claim 14, the bin claim, the defendants here are not shown to have sold bins other than as a kit or parts with full instructions how to erect. For my part I do not think any practical distinction can be drawn from the point of view of infringement between the sale of an article in parts with full instructions how to put it together, at least where as here putting it together involves no more than the exercise of the practical ability possessed by the ordinary member of the public who may be expected to buy and does buy the article in question. I would draw no distinction here, and I do not think there is anything to the contrary established by the cases cited to me. In particular reliance was placed by the defendants on Belegging-Lavender v. Witton Industrial Diamonds [1979] F.S.R. 59, where it was stated that knowledge on the part of the sellers that the goods were intended for the purpose of infringing was not necessarily enough to make the seller guilty of infringement. This case was in fact not strictly concerned with the law of infringement but with the question whether the allegations in the pleading were sufficient. It is however said that there was no nexus there between the seller and whoever may have used the grit in question so as to be embedded in a resin bond. Here in all the circumstances of widespread advertisement and instructions issued with each kit of parts it is in my judgment fair and proper to assume a nexus between the defendants and their customers even if they are not specifically identified.

It is argued for the defendants here that there is a difference between the pre-1977 law and the law as enacted in section 60 (2) of that Act. There is no doubt that under the latter section the defendants on the facts here have infringed both claims 6 and 14 by the sale of their kits of parts. Though the matter is not so clear under the old law, in my judgment, having regard to the facts, the same conclusion should be reached. It follows in my judgment that the defendants have infringed both claims 6 and 14, the latter directly, since I regard the kit of parts in the circumstances stated to be a ‘bin’ within the claim, so there is direct infringement. The only difficulty in respect of joint tortfeasance is the lack of actual proof of common design owing to the absence of positive evidence as to what the customers have done with the kits of parts and the bin when completed. It is however in my judgment fair and proper to infer that bins have been erected and have been used for making compost by the method claimed in claim 6. I think the law and our courts would fairly be open to criticism if they failed to take a realistic view of what in fact was clearly intended to take place and has certainly taken place in practice. If however I am wrong in this conclusion and not entitled to draw the inference in question, there is certainly infringement of claims 6 and 14 by the defendants who have procured their customers to infringe as alleged, knowing quite well that the customer would assemble the bin and use it in accordance with the defendants' instructions and thereby would infringe at least those claims. In any event therefore, even if joint tortfeasance within the meaning of The Koursk and Intercen cases ought not to be inferred, there is infringement by the defendants by way of procuring customers to infringe and I so hold.”

On what basis did Graham J find that the defendant had infringed claim 14? In my judgment, it is clear that his finding of infringement of claim 6 at the paragraph bringing 258-259 is based on joint tortfeasance (i.e. joint liability of the defendant for its customers’ infringing acts). In my view his finding of infringement of claim 14 in the following paragraph on 259 is also based on joint tortfeasance. First, this section of the judgment is headed “joint tortfeasance and allied matters”. Secondly, the finding of infringement of claim 14 follows immediately after his finding of infringement of claim 6 on that basis. Thirdly, in the paragraph dealing with claim 14 he refers to Belegging, which is a case about the distinction between joint tortfeasance and mere facilitation of infringement by another person. Fourthly, in the last sentence of that paragraph he says it is “fair and proper to assume a nexus between the defendants and their customers”, which is language appropriate to a finding of joint tortfeasance.

In the paragraph bridging 259-260 Graham J went on to distinguish between the pre-1977 law and the law under section 60(2) of the 1977 Act. So far as the latter was concerned, he held that there was no doubt that the defendant had infringed both claims 6 and 14 by sales of kits of parts. He went on to deal with the position under the old law, and held that the same conclusion should be reached. If it were not for the sentence at the top of 260, it would seem clear that that finding in relation to both claim 6 and claim 14 was based on joint tortfeasance. Thus he said that the only difficulty with regard to joint tortfeasance was lack of actual proof of common design, but concluded that he was justified in inferring it. In any event, the defendant had procured its customers to infringe. Common design and procurement are two bases for establishing joint tortfeasance.

In the sentence at the top of 260, Graham J said:

“It follows in my judgment that the defendants have infringed both claims 6 and 14, the latter directly, since I regard the kit of parts in the circumstances stated to be a ‘bin’ within the claim, so there is direct infringement.”

Read out of context, this appears to be a finding of direct infringement by the defendant itself i.e. not a finding based on joint tortfeasance. Read in context, however, I am doubtful about this. If it is a finding of direct infringement, it is a finding under the old, pre-1977 law, not under section 60(1). That being so, however, one would have expected Graham J to have referred to the existing authorities on whether selling a kit of parts amounted to direct infringement (discussed in Terrell on the Law of Patents, 12^th ed, at paras. 358-359). In any event, direct infringement under the Patents Act 1949 was based upon the wording of the Royal Command contained in the letters patent, not upon the wording of the statute, let alone Article 25 CPC.

Furthermore, if it is a finding of direct infringement, it appears to me to be obiter, since Graham J’s primary conclusion was that the defendant was liable as a joint tortfeasor.

Finally, it is important to note two points about Rotocrop. First, the defendant supplied a complete kit of the parts for making a compost bin falling within claim 14 as Graham J construed it, as well as full instructions for assembly and use of the bin. Secondly, there was no extra-territorial dimension in Rotocrop.

In Lacroix the plaintiff was the proprietor of a patent for a scaffolding structure for use inside the holds of large ships. The defendant sold in the UK an unassembled scaffolding kit which was exported to Korea for later assembly and use inside the hold of ships under construction. The plaintiff brought proceedings for patent infringement against the defendant. The defendant applied inter alia for judgment in its favour under RSC Order 14A (i.e. on a point of law) on the basis that sale of an unassembled kit of parts for export outside the jurisdiction could not infringe a patent which claimed an assembled structure.

Claim 1 of the patent was as follows:

“Scaffolding for working in the interior of hollow elements of large dimensions such as tanks, quarries, etc., of the type made up of a support structure which is intended to rest on the ground and which is equipped with modular platforms mounted at variable heights in an overhanging manner on the periphery of said structure and means of access to said platforms characterized in that:

(a)

the said support structure is formed from two legs interconnected by at least two cross pieces forming floorings, located at different levels and stiffening the assembly;

(b)

the modular platforms are mounted on the external face of the said legs;

(c)

the means of access to the said platforms are disposed in or in the vicinity of the legs, and in that;

(d)

the legs of the support structure are each equipped with at least two lines of post feet, preferably three, disposed parallel to the longitudinal axis of the scaffolding, said post feet being vertically adjustable so as to allow temporary raising of at least one line of post feet per leg.”

Laddie J delivered an extempore judgment in which he dealt with this issue as follows at 496-499:

“The second point is one which appears to me to be almost entirely one of law. It comes down to this. The plaintiff says that the defendant infringes the claims of this patent by making the scaffolding structure in a collapsed form and exporting it to Korea for erection there. The collapsed form of the structure in this country is a kit of parts, and that kit of parts is, itself, as much a direct infringement of claim 1 of the patent as the fully assembled structure would be.

On the other hand, the defendant says that this is not so. What the claims cover is a full and erected assembly. It says that all the cases under the previous law in relation to kits of parts were cases where not only were the kits made available within the jurisdiction but that they were erected by customers within the jurisdiction so that the kit of parts could be regarded as, effectively, one step in a joint venture between the manufacturer of the kit and the customers who erected it. Both infringed.

Both parties have referred me to domestic cases under the law prior to the Patents Act 1977. Mr Purvis [counsel for the patentee] has also referred me to decisions in Canada, where it is clear the courts have expressed, in strong terms, the view that there is no commercial difference between an erected item and a kit of parts which can be turned into an erected item as far as the issue of infringement goes.

However, it seems to me that although the previous law in this country and the cases in Canada are of interest, they may be misleading for this reason. The 1977 Act, based, as it is, on the European Patent Convention, now provides a definition of infringement which is not derived from the Statute of Monopolies as all our previous law on infringement was, but is based upon an international agreement as to what should and should not constitute a violation of a monopoly obtained by a patent.

It seems to me that my job is not to look at the old law, but to look at what is now the statutory definition of infringement. …

Mr Hamer [counsel for the defendant] says that under section 60(1)(a), the court has to identify, first, what is the invention. It must identify what is the product which is covered by the patent, and then it must be shown that the defendant, within the United Kingdom, has made, disposed of, offered to dispose of, use or import, that product. Here he says that the product as identified in the patent claims is a complete assembly, not a collection of pieces of metalwork which can be erected in another country into the complete assembly. He says, therefore, that his client cannot fall within section 60(1)(a).

In so far as the patent covers a complete assembly, the only time such an assembly will exist, made from hardware derived from the defendant, is when it is erected in Korea. That may be one of the reasons why the plaintiff has applied for an equivalent patent in Korea and, if it is granted, no doubt will use it there. But, in any event, in this country, Mr Hamer's argument is simple. His client has not made the product of the invention because it has not made the assembly, which is what claim 1 covers.

Mr Purvis, on the other hand, runs the following argument. He reminds me of the history of the law in relation to kits of parts in the United Kingdom before the 1977 Act, which he says was the same as that expressed by the Canadian courts, and he says that it makes no commercial sense that the patent monopoly can be avoided by simply making the product in knock-down form and shipping it out to another country. He [argued] that, commercially, the damage done to his client is the same and, when construing section 60(1)(a), some commercial reality should be imported.

I have two problems with that argument. First of all, of course, if the invention is the complete assembly - the structure, so to speak - then the only time that structure is used, and the plaintiffs' contribution exploited, is in Korea. I am not, by any means, convinced of the argument that the whole benefit of the invention (assuming it is one) has been made use of in the United Kingdom.

Secondly, I am wary of the argument that commercial considerations like this should be used to broaden out the scope of section 60(1). During the course of argument, I put to Mr Purvis the following example. Assume that the patent claim is for a piece of furniture, and the defendant makes the furniture in knock-down form, but exports it to another country. Mr Purvis's argument is that would infringe, because, from a commercial point of view, there is no difference between the erected furniture and the furniture in its knock-down form.

I then asked Mr Purvis what would be the position if what was sent abroad was the piece of furniture, but without one piece, for example, one plank of wood which could be easily obtained, without any necessity for careful selection or cutting, in the country of destination. He agreed that, in that case, there could be no infringement because the whole structure was not made available here and it does not come within the provisions of section 60(2) because that refers to making essential means available to somebody who is going to put together an infringing product in the United Kingdom. Yet this example makes no more commercial sense, in the sense that Mr Purvis used it, than treating a complete knock-down kit as non-infringing.

Furthermore, assume a case where one company has branches in England and in France and most of the kit is made in England and the remainder is made in France, and both are sent to Korea. Commercially, there would be no difference between that type of activity and making the whole kit in this country and sending it to Korea.

For these reasons, I am far from happy that looking at this simply as a matter of commercial equivalence is a legitimate approach to the construction of section 60(1)(a).

However, Mr Purvis drew my attention to a decision of Graham J. in Rotocrop International Limited v. Genbourne Limited [1982] F.S.R. 241. That case concerned a collapsible bin for use in making garden compost. Claim 14 was in the following terms: ‘A compost bin substantially as described herein and with reference to the accompanying drawings’. The drawings in the patent showed a fully erected bin. The defendants sold the bin in a knock-down form.

Although the judgment perhaps is not in all respects happily worded, it does appear that Graham J. came to the conclusion that a kit of parts was just as much an infringement of a claim to a fully assembled article as was the fully-assembled article itself. For this purpose, he was considering the provisions of the 1977 Act. In particular, he said the following:

‘As regards claim 14, the bin claim, the defendants here are not shown to have sold bins other than as a kit of parts with full instructions how to erect. For my part I do not think any practical distinction can be drawn from the point of view of infringement between the sale of an article in parts with full instructions how to put it together, at least where as here putting it together involves no more than the exercise of the practical ability possessed by the ordinary member of the public who may be expected to buy and does buy the article in question. I would draw no distinction here, and I do not think there is anything to the contrary established by the cases cited to me.’

Later on, he says:

It follows in my judgment that the defendants have infringed both claims 6 and 14, the latter directly, since I regard the kit of parts in the circumstances stated to be a ‘bin’ within the claim, so there is direct infringement.

It appears to me that it is perfectly possible to come to the same conclusion Graham J. did and to dismiss the more literal construction of section 60(1)(a) advanced by Mr Hamer.

Mr Purvis says that in light of Rotocrop, it would be inappropriate to dismiss this action at this stage. He says that it is clearly arguable that the disassembled scaffolding supplied by the defendants is a kit of parts and should be treated as the compost bin was in Rotocrop.

I do not find this an easy issue, but I have come to the conclusion that it would not be appropriate for me to depart from the conclusion arrived at by Graham J. If the more precise and narrower construction of section 60(1)(a) advanced by Mr Hamer is to represent the law, it is better that that conclusion should be reached at a higher level than this, I should add that I was shown no authority from any court in another EPC country touching on this issue.”

A number of points should be noted about this passage. First, Laddie J pointed out that the 1977 Act differed from previous English law in providing a definition of infringement based on an international agreement, and therefore authorities based on the old law might be misleading. He mistakenly referred to the EPC rather than the CPC, which is the relevant convention for this purpose, but that does not affect the validity of the point.

Secondly, it is clear that, if it had not been for Rotocrop, Laddie J was strongly inclined to hold that there was no infringement under section 60(1)(a) for the reasons he gave at 498. In my view those reasons have considerable force.

Thirdly, it was common ground in that case that making and exporting an incomplete kit of parts would not be infringement under section 60(1)(a) even if the only missing part was a minor one which could easily be obtained in the destination country.

Fourthly, Laddie J appears to have understood Graham J in Rotocrop to have made a finding of direct infringement of claim 14 under section 60(1)(a). For the reasons I have given above, I do not agree with this.

Fifthly, the crux of Laddie J’s decision was that, despite his own inclinations, it was not appropriate for him to depart from Rotocrop as he understood it; but rather the issue should be considered by the Court of Appeal. Accordingly, the report records that he granted the defendant leave to appeal.

Sixthly, Laddie J noted that he had not been shown any authority from a court in another EPC country. (Again, the correct reference would be to the CPC.)

For the reasons I have given, I do not consider that either Rotocrop or Lacroix is authority for the proposition that it is an infringement under section 60(1)(a) to make, dispose of, offer to dispose of or keep in the UK a complete kit of parts for assembly abroad into an apparatus which falls within the scope of a product claim of a UK patent. Nevertheless, counsel for Delta was content to accept on the basis of Lacroix that it was arguable that that is the law, and he did not submit that I should decide otherwise.

Counsel for Virgin complained that Virgin had not been given adequate notice of the point of law raised by this application, and accordingly had not had adequate time to research the case law of other CPC countries on the point. I do not accept this. First, it is Virgin that seeks to rely upon the kit of parts doctrine to establish infringement, not Delta that relies upon it as a defence. Furthermore, Virgin itself pleaded its reliance upon the kit of parts doctrine in its Particulars of Infringement as long ago as 30 June 2008. Secondly, Virgin’s advisors must have realised that the kit of parts doctrine would be likely to be an important issue as soon as the Technical Board of Appeal made its decision on 9 September 2010. Thirdly, although counsel for Virgin submitted that Delta had failed to comply with paragraph 2(3)(a) of the Practice Direction to CPR Part 24 in its application notice, in my view paragraph 34(1) of the first witness statement of Gordon Harris of Delta’s solicitors served in support of the application adequately foreshadowed Delta’s position. This is confirmed by the fact that Virgin’s counsel’s first skeleton argument for this hearing dealt with the kit of parts doctrine at paragraphs 148-153 and cited both Rotocrop and Lacroix. Fourthly, by the end of the hearing counsel for Virgin had been able to cite French, German and Dutch case law and commentaries, as well as Australian and Canadian decisions. This is a greater level of assistance than this Court often receives on such issues.

Australian and Canadian decisions. I was referred to Windsurfing International Inc v Petit [1984] 2 NSWLR 196 (Supreme Court of New South Wales Equity Division) and Windsurfing International Inc v Trilantic Corp (1985) 8 CPR (3d) 241 (Canadian Federal Court of Appeal). In my view these are of little assistance for the reason given by Laddie J in Lacroix. Neither is based upon a statute which gives effect to Article 25 CPC. On the contrary, they are based upon authorities, principles and provisions which derive from the pre-1977 English law: see the Petit case at 204C-207C and the Trilantic case at 263-268. In addition, it is not clear to me whether the finding in the Trilantic case was one of direct infringement or joint tortfeasance. In any event, both cases were concerned with complete kits of parts, and thus neither decision goes further than Rotocrop as interpreted by Laddie J in Lacroix. Nor did either case have an extra-territorial dimension.

France. I was referred to extracts from two French commentaries, but counsel for Virgin accepted that these appeared to be based upon the French equivalent of section 60(2) i.e. Article 26 CPC rather than Article 25 CPC.

Germany. I was referred to two German decisions. The first is a decision of the Bundesgerichsthof (Federal Court of Justice), Case I ZR 109/58 Kreuzbodenventilsäcke I (Cross-bottom valve sacks I) [1960] GRUR 423. The plaintiff was the proprietor of a patent which disclosed and claimed a machine for gluing sealing and reinforcement strips onto the cross-bottoms of valve sacks with various characterising features. The defendant sold a machine under the name Progreß which had been held not to infringe the patent because it had a gripper device rather than a seam folding device.

The plaintiff nevertheless alleged that the defendant had infringed the patent on the following basis:

“The present legal dispute has been initiated thereby, that respondent also sells its ‘Progreß’ machines in foreign countries and that in some of these machines retrofitting has taken place; namely, after their delivery to the foreign buyers, in their operation, in collaboration with installers of respondent, the gripper device has been retrofitted into a seam folding device. It is not disputed that the machines of respondents have had or characteristics of the patent in dispute after such a retrofitting.

Plaintiff has claimed that this change had already been prepared on purpose at the operating location of respondent in Bielefeld; respondent were to have prepared the machines delivered to foreign countries in such a way that they could be provided with a seam folding device by simple, technical steps; inherent therein were a partial domestic production of the protected subject matter. Moreover, respondent were to have violated the patent in dispute by offering [machines] for sale domestically, because it had, during the negotiations in Bielefeld, offered to its foreign interested parties to retrofit the machines in the indicated manner during installation in the foreign country; it is said to have consented to provide them with a machine with a seam folding device.”

As I understand this, the plaintiff’s case was that the defendant had (i) agreed to sell a machine falling within the claims in Germany and (ii) supplied machines which, although they did not fall within the claims as they stood, could be and subsequently were simply converted into an infringing state.

The Bundesgerichtshof explained the factual basis for this case later in its decision as follows:

“In actuality the court of appeal especially deals with the case of the delivery of a machine to a company by the name of Örebro (Sweden). On the basis of the taking of evidence the court finds the following: witness J., chairman of the board of management and a member of the supervisory board of this company, appeared in person in September of 1950 at Defendant in Bielefeld for a machine of the type in question. He stated that his company already owned a machine from Plaintiff, built on the basis of the patent in suit and equipped with a folding device, and produced with its paper bags with cross-folded base labels. Since its customers have become accustomed to this design of the bags, the company attached value to acquire machines capable of producing the same bags. Defendant declared its willingness to fulfil this wish expressed by J. Defendant did actually refuse to produce machines with folding device at its operational facility by pointing to Plaintiff’s patent protection. It did however offered J. to equip the machine with a folding device by making a change easily to be accomplished and to be carried out in Sweden during the installation, with this change to be included in the price. As a result of this offer, the contract subsequently came about and was implemented.”

The Oberlandesgericht (Regional Court of Appeal) found that it was probable that the same thing had occurred on four other occasions.

The Bundesgerichtshof held that this conduct constituted “marketing” the claimed product within the meaning of section 6 of the then German Patent Act.

“As the court of appeal accurately states, the term ‘marketing’ within the meaning of §6 PatG does not necessarily require that the marketed object is already readily available and that it is in stock in the regional scope of protection of the infringed patent … Although the term ‘marketing’ means ‘keeping for sale’ in the real literal sense, it is actually understood as ‘putting up for sale’, namely ‘offering for sale (or purchase)’ within the meaning of §6 PatG. Especially with such large and expensive machines like the ones in dispute here, which are usually only produced on order, ‘marketing’ within the meaning of §6 PatG can already be found in the offering of the immediate production and delivery of a machine by the business of the offerer, which is equipped for this purpose. … Such marketing is patent-infringing, if it is apparent from the offer that the recipient of the offer is to receive the machine from the offerer in a patent-infringing form. If such an offer is made by a business in the patent's regional scope of protection, which intends to produce the machine here in this country and ship it from here abroad, the offer is patent-infringing, even if the machine irs only to be converted abroad by the offering business, or with its collaboration, into a form that corresponds to the patent in suit.

Only such cases, namely in which especially the offerer already offers, during the offer made at home, to undertake the conversion intended abroad into a form that corresponds to the patent in suit, have been captured by the decision of the court of appeal and must be decided here. ”

As can be seen, this decision is based upon the interpretation of the term “marketing” in Germany’s pre-CPC statute. The Bundesgerichtshof held that this covered an offer for sale of a patented product in Germany even if the product was only to be converted into the infringing state by or with the assistance of the defendant abroad. The decision is thus of limited assistance when it comes to interpreting Article 25 CPC.

The second case is a decision of the Düsseldorf Landgericht (District Court) dated 5 February 2004 in Case 4b O 388/03. The petitioner was the proprietor of a patent for a device and method for measuring temperature using infrared technology. The claimed device included a splitter device capable of splitting the primary laser beam into more than two secondary laser beams and of projecting the secondary beams so that they contacted the surface of the object to be measured around the periphery of the energy zone. The petitioner had obtained a preliminary injunction restraining the first respondent from marketing a temperature measuring device. The petitioner claimed that the first respondent was in breach of the injunction because it had carried on supplying the device in kit form for assembly in the USA. On this basis the petitioner obtained a further preliminary injunction. The first respondent applied to discharge the further injunction, contending that it was not correct that it supplied the device in kit form. Rather, it supplied the device with a front end cap having an inner ring which blocked certain secondary laser beams generated inside the device and only allowed two through so as to contact the object. Accordingly, the first respondent argued, the device was supplied from Germany to the USA in a state which did not infringe. It was common ground, however, that in the USA the device was fitted with a front end cap with no inner ring and in that state fell within the claim. It appears that the defendant supplied the front end cap with no inner ring together with, albeit separately from, the device fitted with the front end cap with the inner ring.

The Landgericht upheld the preliminary injunction for the following reasons:

“1.

The allegation of having manufactured an infringing temperature measuring device in Germany does concern the First Respondent already because it manufactured a completely functional and usable thermometer, as is illustrated in the diagram reproduced in the facts of the case of the disputed embodiment in the first place. The fact that said measuring device without a front end cap realises all the claim features of the patent subject to temporary injunction according to the wording is without a doubt. The First Respondent is also not exonerated by the fact that it did not market the measuring device in this state (i.e. without an end cap), but rather exclusively with an end cap, which eliminates the infringing function of the device. Because the individual modes of use reserved for the property owner through the patent are independent pursuant to §9 No. 1 German Patent Law, the attempt to approve the manufacturing actions only in light of that particular product in that particular form in which it is supposed to be marketed is already misguided. Manufacturing may indeed be denied if an infringing product is obtained as an interim product that will eventually need further processing during which the infringing state once more becomes irretrievably lost. Nonetheless, these are not the current circumstances. The decision in this case is also not comparable to the type of configuration on which the BGH based its decision ‘Air heaters’ (Mid 2001, 21). Unlike there, there can be no mention of the fact that the measuring device should ultimately be introduced into the market according to the intention of the First Respondent with the temporarily mounted front end cap (which eliminates the infringing function). Rather the intent is that the thermometer should be marketed in the (infringing) form that it undertakes by installing the new into.

Furthermore the recognised principles are relevant in the manufacture of an unfinished product, the missing part of which is readily available and can be added is just as good as the successive delivery upon agreement of all parts to be assembled (cf. Busse, Patent Law, 5^th edition, §9 German Patent Law, margin no. 63; Benkard, Patent Law, 9^th edition, §9 German Patent Law, margin no. 11).

Even if currently the temperature measuring device of the First Respondent - contrary to the aforementioned statements - should therefore be regarded as ‘unfinished’ because it does not have a front end cap, it cannot be disputed that the first respondent not only designed the measuring device in such a way, but rather it also delivers replacement caps that can be mounted in place of the front end caps it delivered. The First Respondent not only manufactured an ‘unfinished’ product in Germany - in the form of a measuring device without a front end cap - but it also manufactured the end cap, with which the unfinished product can be completed, to form a sellable infringing product. At least this fact in and of itself substantiates the allegation of having manufactured a patent-infringing thermometer in the Federal Republic of Germany.

2.

Under the given circumstances, the assumption is further substantiated that the First Respondent offered the patent-infringing thermometers from its principal place of business (and thus in Germany). BGH case precedent (GRUR 1960, 423 – Valve bag with block bottom I) has already decided that a domestic supply offer exists if and when the offer goes so far as to reconstruct a machine abroad (with the vendor) without infringing on the patent in a form that corresponds the patent that can be manufactured domestically by providers in the non-infringing form (also: Benkard, l.c. §9, margin no. 11; Busse l.c. §9 margin no. 133). The underlying case deserves the same event evaluation. That particular measuring device the First Respondent delivers, may not infringe on the patent. The offer from the First Respondent, however, comprises the provision of a replacement front end cap, with which the delivered device can simply be redesigned in an infringing manner. Although the First respondent does not carry out the reconstruction itself, this is without merit from a legal standpoint because the First Respondent instructs its buyers to do so and the front end caps can be replaced with just a few simple moves based on the precautions taken on the measuring device by the First Respondent.”

As I read this, the Landgericht gave a number of different independent reasons for reaching the conclusion that the first respondent had infringed the patent. The first reason was that the first respondent’s device without the front end cap fell within the claim. The addition of a temporary front end cap did not alter this. The second reason was that the first respondent had manufactured in Germany a kit of parts consisting of the device with no end cap and the front end cap with no inner ring and this kit had all the features of the claim. The third reason was that, applying the decision of the Bundesgerichtshof in the 1960 case discussed above, the first respondent had offered for sale in Germany a device falling within the claim.

The first reason is the simplest, and it does not depend on any doctrine of infringement by a kit of parts. Viewed in English jurisprudential terms, the second and third reasons appear to be obiter. The second reason is consistent with Laddie J’s interpretation of Rotocrop in Lacroix. The third reason depends on the unexamined assumption that case law under the pre-CPC German statute remains applicable to the post-CPC German statute. In this respect, it is notable that there is no reference at all to the CPC in the decision.

I was also provided with translations of two short extracts from German commentaries, but I do not think these take matters significantly further.

The Netherlands. I was referred to one Dutch decision, namely a decision of the then President of the District Court of the Hague, Judge Brinkhof, dated 26 March 1991 in kort geding proceedings in Case 91/223 KG Smulders v Tripod Transport Technology BV, BIE 1993, 56. Smulders was the proprietor of Dutch patent for a delivery van-type vehicle for the transport of a disabled person in a wheelchair. Tripod supplied delivery vans of this type which differed from the claimed vehicle in only respect, namely they did not install shock absorbers with a jack function. Tripod exported to its English customers both delivery vans and, separately, shock absorbers with a jack function. The customers installed the shock absorbers to produce vans falling within the claim.

The President held that Tripod had infringed the Dutch patent. I was not supplied with a complete translation of the decision, but only with a summary. It appears from this that the President regarded it as relevant that (i) Tripod had converted the shock absorbers specifically to have the jack function, (ii) the installation of the shock absorbers was very easy and (iii) Tripod knew that its English clients would install the shock absorbers and produce a van falling within the claim.

As I understand this decision, it amounts to a finding of infringement by the manufacture and supply of a complete kit of parts in the Netherlands, albeit that the kit was only assembled into the claimed product in the UK. It therefore does not go any further than Lacroix. It does not appear that there was any discussion of the relevant provisions of the CPC.

Counsel for Delta submitted that, even assuming that it is an infringement to make and/or supply in the UK a complete kit of parts for assembly abroad into the claimed apparatus, it is not an infringement under section 60(1)(a) to make and/or supply an incomplete kit of parts, even if the missing part is obtained or provided by the customer in the destination country. He submitted that this proposition was supported by Lacroix and was not contradicted by any of the foreign cases. Turning to the present case, he pointed out that Virgin did not allege that Contour had ever assembled and arranged a plurality of Solar Eclipse seats on an aircraft in the UK. In any event, it was clear from Lewison J’s findings of fact in the Contour Action at [179]-[181] that Contour had not done so. Accordingly, he submitted that Contour had never made or supplied to Delta a complete kit of parts for assembly and arrangement into a seating system falling within claim 1 in the UK. That would require the presence of the aircraft, and in particular the sidewall of the aircraft. Although Contour had made and supplied a plurality of Solar Eclipse seat units to Delta in the UK, those seat units had only been assembled and arranged into a seating system having all the features of claim 1 outside the UK.

Counsel for Virgin submitted that the doctrine of infringement by dealings in a kit of parts was an unsettled and developing area of European patent law, and thus inherently unsuitable for summary determination, particularly given what he contended (but I have not accepted) was the lack of sufficient prior notice of the point. Furthermore, he submitted that it was not possible to reach a conclusion as to how the law should be applied to the present case without a full investigation of the relevant facts. He accepted that it was not realistically open to Virgin to challenge Lewison J’s findings of fact in the Contour Action so far as they went, but he submitted that those findings were incomplete and insufficient for present purposes. He produced an impressive list of facts which he submitted that Virgin would wish to establish and which it had a realistic prospect of establishing, namely:

In my judgment, the starting point for analysing the law is Laddie J’s observation in Lacroix that section 60(1) and (2) are based on an international agreement as to what acts shall constitute infringement of a patent. I agree with Laddie J that it follows that case law and commentaries based on or derived from earlier provisions, whether in England or in other countries, may be misleading.

The next point is that section 60(1) and Article 25 CPC must be construed and applied in the light of section 60(2) and Article 26 CPC.

If one begins with a case with no extra-territorial dimension, I find it difficult to see why there is any need for a doctrine of infringement under section 60(1)(a)/Article 25(a) by dealings in a kit of parts. If the defendant supplies or offers to supply a complete kit of parts for assembly into a product falling within a product claim of the patent in suit, then it will almost inevitably infringe pursuant to section 60(2)/Article 26. So too if it supplies or offers to supply an incomplete kit of parts which includes all the main elements of the claimed product, and the customer obtains or provides the missing element. Furthermore, if the defendant not only supplies a kit of parts to its customer, but also provides instructions for assembly of the kit into the claimed product, then I anticipate that under most systems of law the defendant will be liable as an accessory for the infringement committed by the customer when it assembles the kit. Under English law the defendant would be liable as a joint tortfeasor, as the decision of Graham J in Rotocrop demonstrates.

Nevertheless, I accept that, in the present state of European patent law, it is arguable that it is an infringement pursuant to section 60(1)(a)/Article 25(a) to make, dispose of, offer to dispose of or keep a complete kit of parts for assembly into the claimed product within the relevant territory. This may depend on the wording of the relevant claim on its proper construction.

If one turns to cases with an extra-territorial dimension, as Aldous LJ explained in Menashe, it is significant that section 60(2)/Article 26 makes it an infringement to supply or offer to supply within the relevant territory means relating to an essential element of the invention, but only where it is intended to put the invention into effect in that territory. In my judgment, it cannot be correct to construe or apply section 60(1)(a)/Article 25(a) in a manner which is inconsistent with the second territorial limitation in section 60(2)/Article 26. In my view this provides an additional reason to those given by Laddie J in Lacroix for doubting that a claim to a product consisting of a number of parts is infringed pursuant to section 60(1)(a)/Article 25(a) by the manufacture, disposal, offer for disposal or keeping within the relevant territory of a complete kit of parts for assembly into that product where the assembly is to be carried out outside that territory.

Nevertheless, I accept that, in the present state of European patent law, it is arguable that dealing in a complete kit of parts is an infringement in such circumstances. I also accept that it is arguable that, when deciding whether there is infringement in such a case, it is relevant to take into account factors such as those listed in paragraph 128 above.

In my judgment, however, a claim to a product consisting of a number of parts is not infringed pursuant to section 60(1)(a)/Article 25(a) by the manufacture, disposal, offer for disposal or keeping within the relevant territory of an incomplete kit of parts for assembly into that product in circumstances where (i) the defendant’s customer obtains from elsewhere or itself provides the missing part or parts and (ii) the assembly is to be carried out outside the relevant territory. In those circumstances, the defendant has not dealt in the claimed product in the relevant territory even in disassembled form. Furthermore, to construe section 60(1)(a)/Article 25(a) as extending to such a situation would circumvent the second territorial limitation in section 60(2)/Article 26.

I conclude that Virgin has no real prospect of establishing infringement of claim 1 as amended by Contour pursuant to section 60(1)(a). As I have construed claim 1, it is limited to a seating system comprising a plurality of seat units assembled and arranged on an aircraft. Contour has not assembled and arranged a plurality of Solar Eclipse seat units on an aircraft in the UK. The fact that it has made and supplied to Delta within the UK a plurality of Solar Eclipse seat units which are capable of being assembled and arranged on an aircraft in the claimed manner is not enough, since Delta obtains the aircraft from elsewhere and the seat units are assembled and arranged on the aircraft outside the UK. As counsel for Virgin accepted, the Solar Eclipse seat units are physically capable of being arranged in a different manner to that specified in claim 1. Unless and until the seat units are assembled and arranged on the aircraft, a number of requirements of claim 1 are not satisfied. One of those requirements (namely integer [8]) requires the presence of the aircraft sidewall; three of them (namely integers [8], [13] and [15]) require the presence of a space defined in part by the sidewall; and one integer (namely integer 12]) requires the presence of an aircraft floor. Furthermore, the essence of the invention of claim 1 is the arrangement of the seat units on the aircraft, and the way in which it saves some of the space which would otherwise be lost by the inwardly-facing herringbone arrangement. That advantage is not realised until the seat units are assembled and arranged on the aircraft. It follows that Delta is not jointly liable for any infringement by Contour. Accordingly, I will grant summary judgment in favour of Delta.

Even if I had concluded that Virgin had a real prospect of success in relation to Contour’s past acts because it was necessary for there to be further factual investigation of those acts, in particular with regard to what transpired during the FAIs, I would still conclude that Virgin had no real prospect of successfully resisting the declaration sought by Delta as its fallback position.

For the avoidance of doubt, my decision on this application does not necessarily deprive Virgin of the possibility of relief against Delta. Virgin may be able to bring a claim against Delta for infringement of one or more of its US patents. It may also, at some point in the future, be in a position to sue Delta for infringement of a European patent (UK) containing seat unit claims.