The Catnic Decision

The earlier case of Catnic Components Ltd. v Hill & Smith Ltd., Lord Diplock had
established the principle that patents were to be read in a "purposive" manner. The question to
be answered in establishing infringement, as formulated by Lord Diplock, was a complex,
multi-part enquiry.

[edit] The Improver Questions

In the Improver case, Mr Justice Hoffmann (as he then was), on behalf of the Patents Court,
reformulated the test as a series of three questions to establish whether a variant (alleged
infringing article) infringes the claims of a patent. The variant will not infringe if any of the
following are true:

 The variant has a material effect on the way the invention works.
 The fact that the variant has no material effect on the way the invention works would
not have been obvious to an expert in the field.
 That an expert in the field would have taken from the language used in the patent that
strict compliance with the primary meaning was an essential requirement of the
invention.

[edit] Facts & findings of the case

In the Improver case, the patent covered a depilatory device having a curved "helical spring"
driven by a motor. The spring when rotated gripped hairs between its coils and plucked them
from the skin. The alleged infringement replaced the spring with a rubber rod having slits in
its surface. The question was whether the slitted rubber rod was "a helical spring". The judge
answered the three questions as follows: (i) the change to a rubber rod had no material effect
on the way the invention worked; and (ii) it would have been obvious to an expert that the
rubber rod would work in the same way; but (iii) the expert would have understood from the
patent that the patentee meant to confine his claim to a "helical spring", in its primary
meaning and not in a wide generic sense. For this last reason, the rubber rod did not infringe.

[edit] Continued relevance

These so-called "Improver questions" were relied on throughout the 1990s and early 2000s by
the United Kingdom Courts, but in 2004 their continued relevance was called into question by
the same judge who had formulated them, now Lord Hoffmann, in the case of Kirin-Amgen v
Hoechst Marion Roussel:

These questions, which the Court of Appeal in Wheatly v Drillsafe Ltd [2001] RPC 133, 142
dubbed "the Protocol questions" have been used by English courts for the past fifteen years
as a framework for deciding whether equivalents fall within the scope of the claims. On the
whole, the judges appear to have been comfortable with the results, although some of the
cases have exposed the limitations of the method. When speaking of the "Catnic principle" it
is important to distinguish between, on the one hand, the principle of purposive construction
which I have said gives effect to the requirements of the Protocol, and on the other hand, the
guidelines for applying that principle to equivalents, which are encapsulated in the Protocol
questions. The former is the bedrock of patent construction, universally applicable. The latter
are only guidelines, more useful in some cases than in others. I am bound to say that the cases
show a tendency for counsel to treat the Protocol questions as legal rules rather than guides
which will in appropriate cases help to decide what the skilled man would have understood
the patentee to mean.[1]

The current position, therefore, is that the House of Lords has held that the principle of
purposive construction is entirely in accordance with the Protocol to Article 69, but that the
Improver questions may not represent the best approach for dealing with every infringement
issue. See Kirin-Amgen v Hoechst Marion Roussel.

CATNIC CASE

Catnic Components had a patent for a steel lintel, used to provide structural support over a
door or window opening in a brick wall. The lintel is hollow, being made from sheet steel
pressed into a rectangular or trapezoidal shape with a wind to anchor the device to the
surrounding brickwork. Part of the specification required a bar to "extend vertically". Hill
created a virtually identical invention that had a bar that extended at an upwards slant, only 6
degrees from being completely vertical. Despite the difference the device worked entirely in
the same way as Catnic's invention.

Catnic sued for patent infringement. At trial, the judge held there was an infringement under
the "pith and marrow" doctrine. The Court of Appeal of England and Wales overturned the
ruling as it held that the "vertical" requirement was an exact and essential element of the
patent. The Law Lords reversed the decision of the Court of Appeal finding that there was an
infringement and affirmed the use of purposive construction in patent interpretation[1].

[edit] Opinion of the Court

Lord Diplock held that a patent must be read in a "purposive" manner that focuses on the
essential features of the patent. He famously stated:

My Lords, a patent specification is a unilateral statement by the patentee, in words of

his own choosing, addressed to those likely to have a practical interest in the subject
matter of his invention (i.e. "skilled in the art"), by which he informs them what he
claims to be the essential features of the new product or process for which the letters
patent grant him a monopoly. It is called "pith and marrow" of the claim. A patent
specification should be given a purposive construction rather than a purely literal one
derived from applying to it the kind of meticulous verbal analysis in which lawyers are
too often tempted by their training to indulge. The question in each case is: whether
persons with practical knowledge and experience of the kind of work in which the
invention was intended to be used, would understand that strict compliance with a
particular descriptive word or phrase appearing in a claim was intended by the
patentee to be an essential requirement of the invention so that any variant would fall
outside the monopoly claimed, even though it could have no material effect upon the
way the invention worked.