Beloit Technologies Inc & Anor v Valmet Paper Machinery Inc & Anor [1997] EWCA Civ 993 (12th February, 1997)

Beloit Technologies Inc & Anor v Valmet Paper Machinery Inc & Anor [1997] EWCA Civ 993 (12th February, 1997)

Claim 2 of European Patent (UK) 0334 899 was not anticipated by Thomas, but was obvious in light of the prior art and the common general knowledge at the priority date. The concept of inversion by group was known to designers but not part of the common general knowledge; however, the step from the prior art to the claimed invention was obvious to the skilled person. The English courts retained jurisdiction to revoke the patents despite ongoing EPO opposition proceedings.

Citation
[1997] EWCA Civ 993
Parties
Appellant/plaintiff: Beloit Technologies Inc.; Appellant/plaintiff: Beloit Walmsley Limited; Respondent/defendant: Valmet Paper Machinery Inc.; Respondent/defendant: Valmet Paper Machinery (UK) Limited
Jurisdiction
England and Wales
Procedural Posture
Patent Appeal / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed; patents held invalid for obviousness; revocation orders upheld.
Legal Topics
Patent Validity, Patent Infringement, Obviousness, Novelty, Jurisdiction of National Courts During EPO Opposition
Intellectual Property Patents Patent Validity Patent Infringement Obviousness Novelty Jurisdiction of National Courts During EPO Opposition

Case Brief

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Parties

Beloit Technologies Inc.

Appellant/plaintiff

Beloit Walmsley Limited

Appellant/plaintiff

Valmet Paper Machinery Inc.

Respondent/defendant

Valmet Paper Machinery (UK) Limited

Respondent/defendant

Procedural Posture

Patent Appeal / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether claim 2 of European Patent (UK) 0334 899 is novel over US Patent 4359 827 (Thomas)
  2. 2 Whether claim 2 of 899 is obvious
  3. 3 Whether claim 12 of European Patent (UK) 0345 266 is obvious

Ratio Decidendi

Claim 2 of European Patent (UK) 0334 899 was not anticipated by Thomas, but was obvious in light of the prior art and the common general knowledge at the priority date. The concept of inversion by group was known to designers but not part of the common general knowledge; however, the step from the prior art to the claimed invention was obvious to the skilled person. The English courts retained jurisdiction to revoke the patents despite ongoing EPO opposition proceedings.

Court Disposition

Appeal dismissed; patents held invalid for obviousness; revocation orders upheld.

Orders

  • Patents 0334 899 and 0345 266 revoked, subject to stay pending EPO proceedings.
  • Leave to amend Notice of Appeal refused.