59

[No. 4]
25 April 1985

[1985] R.P.C.

IN THE COURT OF ApPEAL

Before:

LORD JUSTICE OLIVER LORD JUSTICE O'CONNOR and LORD JUSTICE SLADE

28,29,30 November 1983 and 31 January 1984

WINDSURFING INTERNATIONAL INC.

v.

TABUR MARINE (GREAT BRITAIN) LTD.

Patent - Validity - Obviousness - Anticipation - Amendment - Practice 10 Patent invalid by reason of obviousness and anticipation - Discretion to amend refused. Patents Act 1949, sections 30, 32(1)(e), (f). 15 The patent in suit claimed a wind-propelled vehicle having an unstayed spar connected through a universal joint and a sail attached along one edge to the spar and held taut between a pair of arcuate booms mounted on the spar at one end and joined together at the other (i.e. a Bermuda rig with a wishbone spar). The unstayed sail was used to steer the vehicle and could be jettisoned in case of trouble. In an action for infringement of the patent, the defendants counterclaimed for its revocation on the grounds that what was claimed lacked novelty over a prior user by C and was obvious in view either of the prior user or of a printed publication D. D was an article entitled "Sailboarding-Exciting New Water Sport" which described the same basic concept as that of the patent but the sailboard had been fitted with a square-rigged sail.

20

25

The cited prior user had taken place some ten years before the date of the patent 30 when C (then a 12-year-old boy) had built a sailboard and used it on an inlet near Hayling Island on summer weekends during two consecutive seasons. The user was open and visible to anyone in the vicinity of the caravan site where the family stayed. C's sailboard differred from what was claimed only in that the sail was held between a pair of booms which were straight when the vehicle was at rest. However the 35 evidence was that in use the booms were sufficiently flexible to assume an arcuate shape. In the Patents Court, Whitford J. found the claims invalid as anticipated by the prior user and obvious in view of D but he made no finding of obviousness based 40 on the prior user. The plaintiffs then sought to amend by restricting their claims specifically to a surfboard of the Californian type as shown in Figure 1 of the drawings, but the judge concluded that there was no scope for such an amendment and refused to allow it.

60
Windsurfing International Inc. v. Tabur Marine
(G.B.) Ltd.

[1985] R.P.C.

The plaintiffs appealed to the Court of Appeal against the findings of anticipation and obviousness and the refusal to allow amendment. The defendants lodged a respondents' notice on the question of obviousness over the prior user. On the question of obviousness, the defendants argued that it must be assumed from the mere fact of publication that a skilled man would have been familiar with 5 and interested in what was known. The plaintiffs contended that it was necessary to show that a person interested in the field of the invention would have been likely to have come upon what was known and to !rave appreciated its significance and utility. They argued that a man skilled in the art would have dismissed D as describing a not very practical toy which it would not have been obvious to develop. They argued 10 that Cs isolated user could not be relied upon for obviousness, as opposed to anticipation and that it was not an anticipation because the booms were not arcuate at rest.
Held, dismissing the appeal and upholding the defendants' contentions on the 15 respondents' notice:

(1) The philosophy behind obviousness must take into account the same concept as anticipation, namely that it would be wrong to prevent a man from doing something which was merely an obvious extension of what he had been doing or what was 20 known in the art before the priority date. (2) It could not matter with regard to section 32(1)(e) that a prior user was non-commercial and of relatively short duration if it was not accidental and was exposed to public view; there was no context for giving the words "having regard 25 to what was used" any different meaning for the purposes of sub-paragraph (J). (3) The question of obviousness was not to be answered by looking with the benefit of hindsight at what was now known and what had been known at the priority date and asking whether the former flowed naturally and obviously from the latter, 30 but by hypothesising what would have been obvious at the priority date to a person skilled in the art who had access to what was known in the art at that date. (4) The question to be answered was whether what had been claimed was obvious, not whether it would have appeared commercially worthwhile to exploit. 35 (5) The man skilled in the art must be assumed to be sufficiently interested to address his mind to the subject and to consider the practical application of the information which he was deemed to have. (6) Answering the question on obviousness required four steps to be taken:
(i) identifying the inventive concept embodied in the patent; (ii) imputing to a normally skilled but unimaginative addressee what was 45 common general knowledge in the art at the priority date; (iii) identifying the differences if any between the matter cited and the alleged invention; and 50

40

(iv) deciding whether those differences, viewed without any knowledge of the

61
[No. 4]

Court of Appeal

alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention. (7) The in ventive concept of the patent in suit was the free-sail concept. (8) At the priority date anyone familiar with sailing craft would have known as 5 part of his general knowledge the difference between square and Bermuda rigs and the disadvantages of the former for manoeuvrability. He would also have been familiar with a wishbone boom. (9) D was clearly relevant to the field to which the claims of the patent related.
10 This was not a case where the prior document was directed to a different problem.

D disclosed the same inventive concept and the only difference of substance was the use of a square rig held by a crossed spar and boom instead of a Bermuda rig held by a wishbone boom. 15 (10) One did not have to assume that the skilled man would treat D as something which had a great commercial future which he must bend every effort to develop and improve, but he must at least be assumed to appreciate and understand the free-sail concept taught by D and to consider in the light of his knowledge and experience how the vehicle described would work on the water.

20

(11) In the light of the evidence, the skilled man would have immediately recognised the disadvantages of the square rig in D, and it would have been immediately obvious to him by applying his own general knowledge that these disadvantages would disappear if the rig were changed to Bermuda. It would also have been obvious to 25 him that this change required the sail to be stretched by means of a wishbone boom. (12) Any skilled adult who applied his mind to Cs device would at once have seen it as obvious that the unconventional and primitive split boom ought to be replaced by a wishbone boom.

30

(13) Anticipation by the prior user was established. A skilled man reading the specification would at once identify what was described as "arcuate booms" as a wishbone boom, and C used what was clearly a primitive form of wishbone boom. Cs device would quite clearly have constituted an infringement of the patent if it had 35 been manufactured in 1980 instead of1958. (14) If a patentee wished by amendment to support a claim to monopoly on some alternative basis, it was for him to raise the point in the pleadings and adduce appropriate evidence for the purpose at the trial. It would be difficult to persuade 40 the court, even in a strong case, that discretion could properly be exercised to adjourn the proceedings so that a specialised inventive concept could be raised and investigated as the basis for a claim to monopoly. (15) The plaintiffs' proposed amendment would be incapable of yielding a useful 45 result. Given prior user of the alleged invention in connection with a floating board, its use in connection with a surfboard would have been so entirely obvious as clearly not to constitute a patentable invention. (16) The effect of the proposed amendment would have been not simply to amend 50 the specification but to turn it on its head by elevating to the status of the essential component the one feature of the allegedly inventive combination which was previously
B

62
Windsurfing International Inc. v. Tabur Marine (G.B.) Ltd.

[1985] R.P.C.

described in terms which made it entirely clear that it was non-essential. This would go well beyond the scope of mere amendment; it would be putting forward an essentially different concept.
The following cases were referred to in the judgment:

Losh v. Hague (1838) 1 W.P.c. 202. 5 Galloway v. Bleaden (1839) 1 W.P.c. 52l. Carpenterv. Smith (1841) 1 W.P.C. 530. Steady. Williams (1843) 2 W.P.c. 126. Siddellv. Vickers, Sons & Co. (1890) 7 R.P.C. 292. Savage v. D. B. Harris & Sons (1896) 13 R.P.c. 364. 10 Taylor's Patent (1896) 13 R.P.C. 482. Gillette Safety Razor Co. Ltd. v. Anglo-American Trading Co. Ltd. (1913) 30 R.P.C.465. Allmanna Svenska Elektriska AIB v. The Burntisland Shipbuilding Co. Ltd. (1952) 69 R.P.C. 63. 15 Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1972] R.P.C. 346. The General Tire & Rubber Co. v. The Firestone Tyre & Rubber Co. Ltd. [1972] R.P.C.457. Bristol-Myers Co. (Johnson's) Application (1975] R.P.C. 127. 20 Sandoz Ltd (Frei's) Application [1976] R.P.C. 449. Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.C. 183.
This was an appeal by Windsurfing International Inc. from an order made by Whitford J. in the Patents Court on 7 April 1982 dismissing their action against 25 Tabur Marine (Great Britain) Ltd. for infringement of the plaintiffs' patent No. 1258317 and ordering upon the defendants' counterclaim that the patent be revoked. The facts are set out in the judgment of the Court of Appeal. Figure 1 of the drawings in the specification is reproduced below, simplified by omission of reference numerals not mentioned in the judgment. 30

Figure 1

63

[No. 4]

Court of Appeal

Oliver J.

N. R. Pumfrey and Henry Carr, instructed by S. J. Berwin & Co. appeared for the plaintiffs (appellants). David Young Q.c. and S. J. Thorley, instructed by Bird & Bird appeared for the defendants (respondents).

Oliver LJ.-This is the judgment of the court. The patent in suit ("the Schweitzer patent") relates to the basic equipment employed in what has, in the past few years, become increasingly popular international sport, that of windsurfing, but, on the face of it, it covers also a very much wider field, namely that of wind-propelled vehicles generally. The plaintiffs, as their name suggests, are an American corporation and the patent in suit results 10 from a convention application with a priority date of27 March 1968. The specification is headed "Wind-propelled Vehicle" and the statement begins by defining the field of art to which the invention relates as including "the field of ships, particularly sailboats and iceboats, and field of land vehicles with sail propulsion". Sail propulsion, it continues (page 1 line 17): 15 5 "has been suggested as a motive means not only for boats and iceboats, but also for such watercraft as surfboards and landcraft such as sleds i.e. generally any lightweight small craft. Typically, a sail is provided on a mast that is rigidly secured to the craft in a vertical position and additionally the sail and mast can be entwined in a network of riggings and control mechanisms".

20

25 It goes on to identify two problems, first that the effect of providing a sail on a normally sail-free vehicle such as a surfboard is to "denature" the vehicle and convert it substantially into a sailboat and secondly that, when a sail is fitted to a vehicle which does not have high roll stability, there is a danger of its being overturned by sudden or excessive winds. 30 "A need therefore exists for safely providing wind-propulsion means for a vehicle not normally so equipped but which means preserves the original ride and control characteristics of the vehicle. " The consistory clause, which is reproduced in claim 1 of the claims, is in these terms:

35

40
"In accordance with the present invention there is provided a wind-propelled vehicle comprising body means, an unstayed spar connected to said body means through a joint which will provide universal-type movement of the spar in the absence of support thereof by a user of the vehicle, a sail attached along one edge thereof to the spar, and a pair of arcuate booms, first ends of the booms being connected together and laterally connected on said spar, second ends of the booms being connected together and having means thereon connected to the sail such that said sail is held taut between the booms."

45

64

Oliver J.

Windsurfing International Inc. v. Tabur Marine

(G.B.) Ltd.

[1985] R.P.C.

The specification goes on to expand upon the method of connection of the spar to the body by means of a universal joint to describe the purpose of the arcuate booms and to explain the method of operation of the invention. It is easier to read the relevant passages in full than to summarise them. Starting from line 63 on page 1 the specification continues: "In particular embodiments, the spar is connected to the vehicle body by means of a universal joint, i.e. a joint having three axes of rotation.

10 "The pair of arcuate booms are provided laterally disposed on the spar to hold the sail taut and provide a hand hold for the user. "The invention can be used on water-craft, ice boats and landcraft. It can 15 be used on small yachts, runabouts, canoes, rowboats, and other such craft, but is most advantageously used on small and lightweight vehicles such as surfboards, iceboats, and sleds. Leeboards can be provided for a water-craft of low roll stability such as a surfboard. The term 'leeboard' used in the specification and claims is meant to include centre boards and dagger-boards, 20 as these terms are known to the sailing art, as well as other projections from the body of the craft, planar or otherwise, extending into or onto the water for stabilization. "The present invention allows essentially all of the steering and control to be accomplished through the sail; i.e. no rudder or other steering mechanism is needed, although such need not be excluded. One may accelerate, turn and tack merely by manipulating the sail. However, because the sail spar is free to move in any direction, the sail must be held by the user with the user relying 30 on his skill with the vehicle for balance. In the event of sudden or excessive winds, the user need only release the sail and it will immediately fall in any direction, freeing the vehicle from the propulsive force." There follows a detailed description of a particular embodiment of the invention illustrated by drawings accompanying the specification. There is no need to refer to these in detail-the essential features of the embodiment can be seen in Figure 1 which is described as "a perspective view of a wind-propelled apparatus according to an embodiment of this invention, obtained by modifying a surfboard with a sail, spar and booms therefor and lee board" .
45 What is illustrated is what we have been told is a conventional surfboard of the type known as a "Californian surfboard" (10) fitted with a leeboard, and having mounted on its upper surface immediately above the leeboard and approximately in the centre of the surfboard a block carrying a universal joint to which is attached a spar (12). Attached to the spar by its leading edge is a triangular sail (14) which is held 50 taut by two arcuate booms (16 and 18) connected together at each end and connected at their forward ends to the spar. 35

25

40

65 [No. 4] Court of Appeal Oliver J.

The method of operation is described at page 2 line 122 et seq as follows: "In operation, the user stands on the top ... of the surfboard 10 behind the point where the spar 12 is attached by the universal joint ... and grips one or the other of the booms 16 or 18. If he were going before the wind and wished to make a turn, he would tilt the sail 14, forwardly and downwardly, thus applying the force of the wind to the nose of the surfboard 10 and causing the board 10 to turn to the left or right depending on which side of the sail 14 was to windward. On the other hand, if he wanted to tack, he would pull the sail 14 backwardly and downwardly to apply the force of the wind to the rear of the board 10, causing the rear of the board 10 to move so as to come into the wind. As he is into the wind, he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other side and setting the sail 14 so that the wind captures it and the board 10 is then on its new course. The sail may be tilted forward or backward for speed control. "In the event that a sudden surge of wind threatens to capsize the surfboard 10, the user may merely release the sail 14 and it will fall free into the water, completely removing the danger. The sail 14 is provided at its spar 12 end with a rope 106 so that the user can readily pull the sail 14 back into sailing position." Turning now to the claims, claim 1 has already been read, and claims 2 to 6 inclusive are merely variants of claim 1 by the addition or subtraction of individual features. It is accepted that they must stand or fall with claim 1. Claim 7 is the "picture claim": "A wind-propelled vehicle substantially as hereinbefore described with reference to the accompanying drawings." 30 It merits separate mention because, although it was relied on in the pleadings as one of the claims alleged to have been infringed by the defendants, and although it was distinctly challenged by the defendants in their pleadings, counsel then appearing for the plaintiffs, in opening the case before the learned judge, disclaimed any allegation of infringement of this claim so that, in the event, no evidence was 35 directed to this particular embodiment as opposed to the general concept embodied in claims 1 to 6. That then is the specification and it starts, as it must, from the proposition which 40 is acknowledged on page 1 (lines 13-26) that there is nothing whatever novel in the concept of sail propulsion, whether applied to land or to watercraft. It is, therefore, important at the outset to isolate and identify what is the inventive concept for which the patentee is claiming monopoly protection. Mr. Young for the defendants describes it as "the free-sail concept". Mr. Pumfrey for the plaintiffs, 45 on the other hand, says that it is the combination of the unstayed spar (i.e. "the free-sail concept"), the sail attached to the spar along one edge, and the connected arcuate booms. In the sense that what is claimed in the claims is protection for the combination of features described, Mr. Pumfrey is, of course, right. As the learned judge observed at page 7 of the transcript of his judgment: 50 " ... for present purposes it is sufficient to direct my attention to claim 1, a claim to a wind-propelled vehicle having in combination the features I have

10

15

20

25

66 Oliver J. Windsurfing International Inc. v. Tabur Marine (G.B.) Ltd. [1985] R.P.C.

already enumerated. Although the claims, other than claim 7, cover any wind-propelled vehicle, the only wind-propelled vehicle which, as far as I can tell on the evidence, would be of interest to the plaintiffs, certainly the only one which is apparently of interest to the defendants, is a surfboard carrying a sail, a type of equipment apparently known today as a sail board" .

At the same time, the combination of the features of the triangular sail attached to the spar by its leading edge and held taut by arcuate booms is not in itself a novel combination. It was one which was perfectly well known in the sailing world well before the priority date. What renders the combination novel is simply a particular 10 feature of the spar, namely that it is not stayed but is free to move under the direct manual control of the user. That is the feature which distinguishes the apparatus from other conventional sailing apparatus and which meets the two problems postulated in the specification, namely that of "denaturing" the body on which the 15 sail is mounted and that of overturning in high winds. It cannot be expressed better than by adopting the language of the learned judge when he said (at page 6 of the transcript) : "The specification is disclosing the concept and method of constructing a 20 wind-propelled craft carrying a sail which is mounted on a mast free to move in any direction. In contrast with other vehicles with which the reader would be familiar the reader is taught that the mast should not be rigidly secured on the craft but left free to move. It is this freedom of movement which allows the user to control the course of the vehicle in the manner indicated, and 25 indeed in moments of difficulty allows him to let the sail fall so as to take away the propulsive force of the wind. Mast and sail are supported by the user and moved by him so as to steer the craft either when he is running before the wind or when he wants to tack". 30 That is the essential teaching of the specification. Its attractiveness and utility as a means of transport may not be immediately apparent, at any rate to those lacking a high degree of tolerance to immersion in cold water. The evidence established, however, that sailboarding started to become a very popular aquatic sport during th mid-1970s although its popularity in the United Kingdom lagged 35 behind that which it acquired in warmer climates. The climatic obstacles, however, were to a large extent overcome by the advent of the wet-suit and the establishment of sail boarding schools with land simulators and a successful advertising campaign have ensured that sail boarding is now established as an increasingly popular sport in this country and have resulted in a considerable commercial success for the 40 plaintiffs and their licensees. The defendants having dealt in this country in sail board equipment incorporating the features described in claim 1 of the specification, the plaintiffs commenced 45 infringement proceedings. Predictably, the response was a defence and counterclaim contesting the validity of the patent on various grounds, the material ones for present purposes being that the alleged invention so far as claimed in each and every claim was not new or was obvious, in support of which the defendants relied upon prior publication, prior use and prior common general knowledge. 50 The learned judge upheld the defendants' objections both on the ground of

67 [No. 4] Court of Appeal

Oliver J.

obviousness, having regard to the prior publication referred to below, and also on the ground of anticipation by the user, before the priority date, of an apparatus constructed by a Mr. Chilvers who gave evidence at the trial. He made no finding of obviousness based upon this user and that point forms the subject-matter of a 5 respondents' notice.
It will be convenient to deal first with obviousness based upon prior publication. The document relied upon by the defendants here was an article by a Mr. Darby entitled "Sailboarding: Exciting New Water Sport" which had first appeared in an 10 Amercian publication, Popular Science Monthly, and which was reproduced in the United Kingdom in October 1966 in a publication entitled Practical Hydrofoils produced by the Amateur Yacht Research Society and circulated to its members who numbered some 600. That article described a sailboard with an unstayed sail attached to a spar held by the user and inserted into a hollow socket in a mast step 15 mounted on the sailboard. The mast step was slotted immediately in front of the spar socket to carry a daggerboard. The basic concept, i.e. the use of an unstayed sail which is used to steer the vehicle and which can be jettisoned in case of trouble, is the same concept as that in the patent in suit. The principal differences are that the sail shown in the publication is a square sail actuated by the user standing on 20 the lee side of it with his back to the spar, and that, instead of the spar being attached to the vehicle by a moveable joint, free movement is achieved by a socket from which the spar can be removed, the suggestion being that the sail should be attached to the sailboard by a lanyard to prevent their drifting apart when the sail is jettisoned. 25 The first of these two differences is, Mr. Pumfrey submits, crucial. The sail shown in the photographs and drawings is a square sail which is attached by its ends longitudinally to an 11' 6" spar and laterally to an 8' 4" yard, the spar and yard each being tapered at the tips so as to form a bow or arc holding the sail taut. What 30 Darby teaches, he suggests, is essentially confined to a vessel propelled by a sail of this configuration, i.e. a square-rigged vessel, and he refers, in particular, to the manoeuvres which are figuratively described in the article (being manoeuvres appropriate to a square-rigged vessel) and to the following two passages. On page 73 of the publication it is said: 35 "Learning to handle a sailboard is quite a change ... because you have no rudder and must steer with the sail. You also have to learn to handle what is really a square-rigged ship rather than a fore-and-aft Marconi rig like that on small sailboats you have known." 40 It should be mentioned that "Marconi rig" is an alternative description of the triangular sail described in the patent in suit, more commonly known as a Bermuda rig.

45

The other passage to which Mr. Pumfrey draws attention is the narrative on page 74, under the illustration of the basic sailing position, which reads: "sailing positions are similar to those for any sailboat, but this one is a square-rigger, so the wind pushes it. You steer by pivoting the mast in its socket, tilting sail".

50 The article goes on to describe how to build the sail and board, with diagrammatical illustrations, and concludes with a statement that a limited number of completed sailboards and kits can be obtained from the author.

68

Oliver J.

Windsurfing International Inc. v. Tabur Marine

(G.B.) Ltd.

[1985] R.P.C.

As regards the second difference noted

the learned judge observed:

"The mast merely rests in position in the step, but is is free to move in any direction. The article does however suggest a more complex swivel step for advanced riders. That is a suggestion which we find in an illustration of the Darby sailboard at ... page 75 of the article. Exactly what is intended is not known but the words used, to my mind at least, plainly suggest some sort of universal joint."

Very little, if anything, turned on this point in the argument before this court, Mr. Pumfrey's principal attack being upon the judge's approach to the first 10 difference referred to. At page 14 of the transcript of his judgment, the learned judge drew attention to this point. The illustration, he said, "shows what I think Professor Bradfield (the second expert called by the plaintiffs) thought should more correctly be described as a kite rig. The kite 15 sail operates like a square sail and its mode of operation as compared with the Marconi ... can be appreciated by referring to Mr. MacAlpine-Downie's primer, pages 1 to 4". That document was an elementary guide to yachting, describing and illustrating sailing manoeuvres both with fore-and-aft rig and square rig vessels. 20 "With the kite rig the wind is always on one side of the sail, so Mr. Darby has only one arcuate boom, as we can see from the illustration and from the drawing on page 75. His mast, it is to be observed, is also arcuate to allow for 25 the bellying out of the sail. The Darby article plainly discloses the freely moving mast, what Mr. Young for the defendants described as the free-sail concept. It discloses a rig that everybody was agreed . . . is not nearly as satisfactory a type of rig as the Bermuda or fore-and-aft rig when you are sailing into the wind. It is an article which never seems to have excited any interest in this country other than the interest of Mr. Ellison, who was called 30 by the defendants, but Mr. Ellison never in fact did anything about it. I do not know what interest it may have excited in the United States of America, where indeed, according to the article, kits for the manufacture of the Darby sailboards were on sale: but it is of no significance what happened there." 35 The learned judge then postulated the question (which he answered in the negative): "could there be any inventive step in substituting in a Darby board a foreand-aft rig for a kite sailor a square rig sail, for if anyone decided to take this 40 step it is I think on the face of it apparent, and indeed was confirmed in evidence by Mr. McAlpine-Downie, that you would need a pair of arcuate booms rather than one boom as you would be contemplating operating with the wind working on either side of the sail". 45 The learned judge concluded: "In my judgment, a substitution of this kind must be obvious. It was a step which, on their evidence, certainly occurred to Mr. McAlpine-Downie and Professor Bradfield. I do, however, have this very much in mind, that they 50 were individuals who could be described as highly skilled."

69 [No. 4] Court of Appeal Oliver J.

The plaintiffs challenge this conclusion. In the notice of appeal it is simply said that the judge's finding was contrary to the weight of the evidence but Mr. Pumfrey's submission to this court was rather more sophisticated than might appear from that rather bald challenge. What Mr. Pumfrey submits is that the learned judge went 5 wrong in law in that he started from a false assumption that he must consider Darby as a starting point from which improvements required to be made and that he then applied to that assumption evidence which was in fact directed to answering a question which, as a matter of law, did not arise. Both Mr. Pumfrey and Mr. Young have taken us with care and in considerable detail through the evidence and it will 10 be convenient to consider what this amounted to, before passing to the question of whether the judge approached the question which he was required to answer in the right way and whether the evidence in fact supported the conclusion at which he arrived. 15 The witnesses on this aspect of the matter were four in number. The plaintiffs called two extremely highly qualified experts, Mr. McAlpine-Downie and Professor Bradfield, the former being an extremely experienced and successful designer of sailing craft, although without formal qualifications, and the latter a very highly qualified marine engineer and an expert on advanced wind-powered water-craft. Evidence was given for the defendants by Mr. I. M. Nicholson, a naval architect and a partner in a very old established firm of yacht designers and surveyors, and by Mr. R. M. Ellison, formerly an officer in the Merchant Navy and an experienced amateur yachtsman. Mr. McAlpine-Downie had not seen the Darby article in 1966 when it was published in this country and his evidence, like that of all the other witnesses other than Mr. Ellison, was therefore directed to a hypothetical reconstruction of what his reactions to it would have been. He identified, however, only two differences between Darby and the patent in suit, one of principle and one of degree, the latter being simply in the degree of sophistication of the design of the hull. The difference in principle he identified as the square rig held behind the user in the Darby article as contrasted with the fore-and-aft rig held in front of the user in the patent in suit. The former had disadvantages not present in the latter as regards both efficiency and ease of handling, in that it produced only a poor approximation of an aerofoil and was likely to perform inefficiently upwind. Mr. McAlpine-Downie was in an obvious difficulty in giving a reliable account of what he might have done to improve or develop Darby because he thought that his reaction to it in 1966 would have been the same as his initial reaction to the embodiment of the patent in suit, namely that it was no more than a beach novelty which he would not have thought worth developing. If asked to make a more efficient craft of Darby, he would not have thought of changing the rig but would have moved in the direction of securing it. He agreed, however, that postulating a desire to make Darby safer and more efficient as a novelty or beach sport he would naturally go to a Bermuda rig and that, if one was going to adopt a Bermuda rig, it would, at some stage, have become apparent that the practical way to do so would be by the use of a split boom.

20

25

30

35

40

45

Professor Bradfield's view of Darby was similar to that of Mr. McAlpine-Downie, in that he would not have regarded it as a serious proposition meriting his interest. If he had been asked to develop it, he, too, thought that he would have concentrated on improving its performance as a vehicle by staying the mast and providing a 50 rudder, although he accepted that the adoption of a different rig would have been a possibility. Mr. Nicolson thought that, if he had seen Darby in 1966, he would have thought

70
Oliver J. Windsurfing International Inc. v. Tabur Marine
(G.B.) Ltd.

[1985] R.P.C.

it a basically interesting design, but one which required development by improving the rig and improving the shape of the hull. His evidence was that he would have suggested a Bermuda rig in place of the kite sail and that, if such a rig were adopted, the use of a split or "wishbone" boom, which had been familiar since the 1930s, would have been obvious.

Finally, Mr. Ellison was the one witness who had actually read the Darby article at the time of its publication. His evidence was that he had been excited by it but did not follow it up. If he had done so, he thought that he would have built the board and sail according to instructions, but would not expect the kite rig to operate 10 efficiently. Using only the materials suggested in the article, the obvious thing to do in order to improve performance would be to fold the sail in two and wrap it round the mast, holding it taut by a boom on either side. That being, in summary, the evidence, it is Mr. Pumfrey's submission that the 15 learned judge reached the conclusion that he did quite simply by asking himself the wrong question. He accepts that, to anyone skilled in the art and contemplating the field of the patent in suit in 1968, Darby's article would be a relevant document, but, when considering the patent in suit in the context of whether or not it was inventive, he submits that it cannot be assumed that such a person would take 20 Darby as his starting point and set about seeing whether he could make any improvements to it. The instant case is not one of which it can be said that there was an existing problem for which the sailing-boat or leisure industries had been searching for a solution, and Mr. Pumfrey submits that the burden lies on the defendants to show that Darby was a concept which a skilled man would have 25 recognised as calling for development. Far from this being the case, he suggests, the evidence-and, in particular, that of Mr. McAlpine-Downie and Professor Bradfield-pointed in the opposite direction. This submission discloses a fundamental difference between the appellants and 30 the respondents as regards the approach of the court to published information claimed to render an alleged invention obvious and it calls for some analysis of a number of authorities in which the question has fallen to be considered. The instant case is concerned with two sub-paragraphs of section 32(1) of the Patents Act 1949, sub-paragraphs (e) and (j), the terms of both of which need to be borne in mind. 35 The grounds upon which a patent may be revoked under these sub-paragraphs are:

"(e) that the invention, so far as claimed in any claim of the complete 40 specification, is not new having regard to what was known or used, before the priority date of the claim, in the United Kingdom;
"(f) that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having 45 regard to what was known or used, before the priority date of the claim, in the United Kingdom;"

Essentially what separates the plaintiffs and the defendants is the meaning to be 50 ascribed to the words "having regard to what was known" in sub-paragraph (j). Do they mean, in effect, as the defendants contend, "having regard to what was

71

[No. 4]

Court of Appeal

Oliver J.

available to be known and studied", so that familiarity with and interest in what was known may be assumed from the mere fact of publication before the priority date? Or do they, as the plaintiffs contend, signify some more precise and intimate acquaintanceship so as to impose upon the defendants an obligation to show a 5 likelihood that a person interested in the field of the invention would, in fact, have been likely to have come upon what was known and appreciated its significance and utility? The question to be decided when an objection is made on the ground of 10 obviousness is, as Jenkins LJ. observed in Allmanna Svenska Elektriska AIB v. The Burntisland Shipbuilding Co. Ltd. (1952) 69 R.P.C. 63 at page 70: "in the end of all ... as it were a kind of jury question". 15 But it is one which has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates, who is assumed to have access to what was known of the 20 art in the United Kingdom immediately before the priority date. The hypothetical Skilled Man is, no doubt, (together with his cousins the Reasonable Man and the Officious Bystander) a useful concept as setting a standard and, in the instant case, as providing the touchstone by which the question of obviousness may be judged by the equally hypothetical Juror; but he must not be allowed to obscure the nature of the inquiry which the words of the statute require, and one cannot help feeling that his image may lead to confusion if one seeks to attribute to him human qualities either of constitutional idleness or of perception beyond the knowledge and skill in the field in which he is hypothetically supposed to operate. It is accepted by the appellants that the question of whether the alleged invention was obvious has to be answered objectively by reference to whether, at the material time (that is, immediately, prior to the priority date), the allegedly inventive step or concept would have been obvious to a skilled addressee, but Mr. Pumfrey submits that, whilst one has to assume that Darby was within the cognisance of the skilled man, one is not to assume that he has any interest in it. The burden, he suggests, lies upon the defendants to show some reason why such an interest should be aroused. In support of this he relies upon the warning voiced by Whitford J. in Sandoz Ltd. (Frei's) Application [1976] R.P.C. 449 at 457, and upon the speech of Lord Reid (in which Lord Morris concurred) in Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd [1972] R.P.C. 346.

25

30

35

40

As regards the former, the particular passage to which he has drawn our attention is one in which Whitford J. drew attention to the dangers of too ready an assumption that the significance of existing published material in relation to the problem dealt 45 with by the patent in suit would necessarily be apparent to the hypothetical skilled man. Without in any way seeking to detract from that valuable warning, we do not find it of much assistance or of much relevance in the instant case, for it was 50 pronounced in relation to an objection under section 14 and in a case where the particular specification relied upon was in fact directed to a different, though not dissimilar, problem from that to which the patent there in suit was directed. It does not seem to us that this can be of any real help in a case such as the present where

72

Oliver J.

Windsurfing International Inc. v. Tabur Marine

(G.B.) Ltd.

[1985] R.P.C.

the document relied upon as the basis for the objection is so clearly relevant to the field to which the claims in the patent in suit relate. Mr. Pumfrey's principal support, however, is derived from the speech of Lord Reid in the Technograph case at page 355 where he defines the characteristics of the hypothetical skilled man and where, after referring to the fact that, in section 32(1)(e), the words "having regard to what was known" included matter which no-one ever knew in fact or was likely to know, he observed:

"I think that in head (f) the words should have the more natural meaning of what was or ought to have been known to a diligent searcher." 10 This view was not supported by Lord Diplock (see page 361), but Mr. Pumfrey points out that it was concurred in by Lord Morris. Mr. Pumfrey accepts that this was, in any event, obiter, but adopts it as justifying a more restricted approach to 15 the extent of the knowledge to be imputed to the hypothetical skilled man than that which would be appropriate to a case of anticipation under head (e). Essentially, his argument is that, although he accepts Darby as a relevant document which would be assumed to be within the knowledge of the skilled man, nevertheless, when considering whether the patent in suit is an obvious development, one has 20 to consider what a person confronted with Darby in 1966 would actually have done. If, he suggests, there was then no reason for considering Darby to be of any interest, the improvement of Darby, even by what might be considered mere workshop trial and error, would not have been obvious.
25 Now, even assuming this to be a correct approach, it is not, in our judgment, one which derives any support from the dictum of Lord Reid referred to above nor, we think, does Mr. Pumfrey so suggest, for, as has been mentioned, he accepts Darby as a relevant document within the knowledge of the skilled man. What he challenges, or what we understand him to challenge, is that Darby would have led 30 to any further inquiry at all, even of a routine or workshop kind. If and so far as it is necessary to express a preference for the two obiter views expressed in Technograph, we would respectfully favour that of Lord Diplock, for we find it difficult to see any context for reading the same words in the two sub-paragraphs in different senses. 35

But, in fact, even accepting Lord Reid's more restricted reading of the subparagraph, one inevitably arrives, as it seems to us, at the conclusion that Darby is a document which must be taken into consideration by the hypothetical skilled man and we do not find that Lord Reid's formulation assists in determining what 40 the skilled man would have done with it. He does, it is true, go on to describe-and, it is common ground, rightly to describe-the hypothetical skilled man as "unimaginative" but he describes him as being "well acquainted' with workshop technique" and as having "carefully read the relevant literature". What Mr. Pumfrey's refinement on this seeks to suggest is not only that the skilled man, who 45 is to set the standard, is uninventive but that, in the absence of some evidence to the contrary, he is uninterested; and that is, in our judgment, a view which obscures the real question that has to be answered and which is not supported in authority. What has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to 50 exploit it.

73
[No. 4]

Court of Appeal

Oliver J.

Thus the test as formulated by Lord Herschell in Siddell v. Vickers, Sons & Co. Ltd. (1890) 7 R.P.C. 292 at 304 was whether what is claimed is " ... so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end ... ". 5 Similarly, Lopes LJ. in Savage v. D. B. Harris & Sons (1897) 13 R.P.C. 364 at 370 observed: "The material question to be considered in a case like this is, whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject .... "

10

The same approach-namely that one has to assume a man skilled in the relevant art who is at least sufficiently interested to address his mind to the subject and to consider the practical application of the information which he is deemed to 15 have-appears to us to emerge from the judgment of Sachs LJ. in The General Tire & Rubber Co. v. The Firestone Tyre & Rubber Co. Ltd. [1972] R.P.C. 457 at 497 when he said: 20 "When head (j) is invoked it is, of course ... for whoever seeks revocation of a patent to show that the alleged inventive step was obvious to a normally skilled addressee in the art. On the way to that end there are here a number of preliminary questions to be resolved. These include the common general knowledge to be imputed to that addressee; whether what had to be done to achieve the step was truly a matter of inventive experiment or merely a matter of that type of trial and error which forms part of the normal industrial function of such an addressee; what documents he would find in the course of such researches as he would be expected to make; and how he would regard those documents in the light of common general knowledge."

25

In summary, Mr. Pumfrey's submission is that in 1966 nobody would have considered Darby as more than a beach novelty (which was the reaction of Mr. McAlpine-Downie and Professor Bradfield) and that, therefore, nobody would in fact have been interested in doing anything more than, perhaps, building it and playing with it. Thus, the argument proceeds, there would not have been any 35 reason for developing Darby and hence no development, even of a routine nature, would have been obvious or even have occurred to the skilled man, who would merely have dismissed Darby as a not very practical toy. It is from this foundation that he goes on to submit that the learned judge asked himself the wrong question and wrongly accepted as evidence of what was obvious the evidence of witnesses 40 as to how Darby might have been improved, for, in suggesting improvements to or embellishments upon that which called for no improvement or embellishment, they were doing so in response to an invitation to treat Darby as a springboard to further development and invention and were in fact suggesting inventive steps. 45 We have not felt able to accept Mr. Pumfrey's submissions. There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common 50 general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged

30

74
Oliver J. Windsurfing International Inc. v. Tabur Marine (G.B.) Ltd. [1985] R.P.C.

invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. As regards the first step, we respectfully agree with the learned judge that the inventive concept of the patent is the free-sail concept. It is that which constitutes the essential difference between the patent in suit and other conventional vehicles propelled by sail. Going back, then, to the priority date, anyone familiar with sailing and sailing craft would then have known, as part of his general knowledge, the difference between square sail and Bermuda rigs and the disadvantages as regards manoeuvrability presented by the former. He would also have been familiar with twin booms arcuate in shape known as "wishbone" booms which, though not in wide use in the 1960s, were well known to anyone interested in constructing light craft. Darby's article was addressed initially to the knowledgeable handyman for whom the American journal Popular Science Monthly (in which it first appeared) was designed and, so far as the publication in this country was concerned, was directed to members of a society dedicated to amateur research into yachts. It in fact disclosed, and disclosed to persons knowledgeable in the art, the self-same inventive step claimed by the patent in suit, the only difference of any substance being the use of the kite rig held by the crossed spar and boom instead of a Bermuda rig with a wishbone boom. We agree, of course, that one must not assume that the skilled man, casting his experienced eye over Darby, would at once be fired with the knowledge that here was something which had a great commercial future which he must bend every effort to develop and improve, but he must at least be assumed to appreciate and understand the free-sail concept taught by Darby and to consider, in the light of his knowledge and experience, whether it will work and how it will work. In the light of the evidence, it seems to us inescapable that anyone skilled in the art and contemplating Darby's article in 1966 would immediately recognise, as the witnesses did, that the kite rig suggested for this very simple and elementary device would suffer from the disadvantages that it would perform poorly upwind and would require to be manipulated from the lee side of the sail. It does not, in our judgment, require the attribution to the skilled addressee of any inventive faculty to say that, if he applied his mind to it at all, it would be immediately obvious to him that these disadvantages would disappear if the rig were changed to Bermuda, a change which, as would also be obvious to him, required the sail to be stretched by means of a wishbone boom. It may well be that nobody in the United Kingdom at that time would have considered that there was a commercial future in this interesting beach novelty, but that is not. as we conceive the question which has to be answered. One has, in our judgment, to postulate a person who comes to Darby knowing of the advantages of a Bermuda rig over a square rig and who is at least sufficiently interested to read the article and consider how the vehicle described would work on the water. All the evidence suggests that such a person would immediately see, by application of his own general knowledge, the adoption of a Bermuda rig as an obvious way of improving the performance of the Darby vehicle.

10

15

20

25

30

35

40

45 We do not find an answer to this in the two forensic questions which Mr. Pumfrey poses, namely, why, if it was obvious that a fore-and-aft rig would perform better, did Darby himself (who clearly knew about such rigs) not suggest it and why, so far as the evidence shows, did no development of Darby take place in the United States? As to the former, there was, so far as we are aware, no evidence as to Mr. 50 Darby's qualifications or experience, but in any event the answer is, we think, to be found in Mr. Nicolson's evidence that, in his view, Darby was merely directing

75
[No. 4] Court of Appeal Oliver J.

himself to constructing the simplest possible design both as regards hull and rig. As to the latter, there was no evidence either way as to whether or not Darby was taken up or developed in the United States. No doubt, if the defendants had produced evidence that Darby's article excited great interest in the United States 5 and that the kite rig was immediately replaced with a Bermuda rig, that would have reinforced their arguments on obviousness, but we do not think that it can be right to treat the lack of such evidence as detracting from the argument and as leading to the necessary conclusion that there was no interest and no development. We are, therefore, unable to accept Mr. Pumfrey's criticism that the learned judge was wrong in saying that what happened in the United States was of no significance. Nor do we think that he can be legitimately criticised for his approach to the evidence. He had, as appears from his judgment, well in mind that he had, in Mr. McAlpine-Downie and Professor Bradfield, witnesses who were very highly 15 qualified and for this reason he cautiously sought confirmation from other evidence (namely that of Mr. Chilvers) that the degree of percipience which their evidence showed in relation to Darby was not beyond that which the ordinarily skilled man might properly be assumed to possess. It does not appear to us that the questions which they were asked involved the application to Darby of any inventive faculty. 20 In our judgment, the learned judge did not make any wrong assumption. He asked himself the right questions and gave the right answers. Subject to a point raised in the Notice of Appeal as regards amendment of the specification, that is sufficient to dispose of the appeal but, in deference to the very full arguments addressed to us, we ought to deal with the other two points raised 25 by the defendants, one of which formed the primary ground for the learned judge's decision. These relate to the evidence of Mr. Chilvers, whose evidence was that, in 1958 when he was 12 years old, he had made a sailboard which he had used for sailing in an inlet at Hayling Island on summer weekends during two consecutive seasons. There is no doubt that that user was in public in the sense that it was open 30 and visible to anyone in the vicinity of the caravan site at Hayling Island where the family stayed, and it was relied upon by the defendants to support objections based both on anticipation and obviousness. Mr. Chilvers' device and its relation to the patent in suit cannot be better described than by adopting the following extract 35 from the judgment of the learned judge: "He was able to sail it both before the wind and into the wind, indeed on a triangular course. The Peter Chilvers board is illustrated at page 444 of volume 5. This was a first rough sketch which was prepared to indicate what the nature of the Chilvers board was. At page 21 of bundle 1 there is a perhaps more accurate representation. It is particularly I think possibly more accurate in the indication it gives as to the height of the booms which Peter Chilvers held at about shoulder level. If one looks at the illustration, at page 21 of bundle 1, one can see the board which consists of a hull, there is a daggerboard, and as illustrated there is a rudder with a tiller. There is a mast which is mounted upon a crude type of universal joint-these were, I understand, two hooks which were pressed together so that the mast was held in such a manner that it could be moved in any direction. The sail is attached down the leading edge to the mast and it is held at the far end between two booms which extend across to the mast, to which they are lashed in a somewhat crude way. These are not as shown in his drawing arcuate booms. Originally, Peter Chilvers told me, he envisaged steering the craft by means of the rudder but he ascertained in practice that he could steer it by movement of the sail. He cut off most of the tiller and nailed the rudder down. 10

40

45

50

76

Oliver J.

Windsurfing International Inc. v. Tabur Marine

(G.B.) Ltd.

[1985] R.P.C.

"Mr. Jacob, having accepted that the evidence plainly established a prior public use, further very properly accepted that the Peter Chilvers sailboard had all the features of claim 1 other than, on the face of the drawing provided, a pair of arcuate booms. As I have said, there is a pair of booms. They are straight as we see them in the illustration. They hold the sail taut and provide, 5 and this was the purpose for which they were used by Peter Chilvers, a handhold for the user. They are not arcuate booms when the vehicle is at rest. In use Peter Chilvers gripped the boom on the windward side of the craft on which he would be standing. Depending upon the strength of the wind he was able to lean into the wind to a certain extent. The wind held the sail taut 10 against the boom to leeward. Peter Chilvers in fact by holding on to the boom and leaning out would cause the boom to bend, the wind in the sail would cause the unheld boom to bend in the opposite direction. His evidence as to what happened in practice is confirmed by Mr. McAlpine-Downie's expectations as to how the board would operate in use." 15 Now, it is clear from that description that the Chilvers sail board constituted, beyond argument, an anticipation of the patent in suit save for one point, namely the arcuate booms employed in the Schweitzer patent, for it embodies every other feature of the alleged invention. The defendants pray it in aid as an anticipation but they also sought to rely upon it as something which was "used in the United Kingdom" within sub-paragraph (f) and thus as the foundation for an argument that, quite apart from Darby, the alleged invention was obvious. In the light ofthe view which he took that the Chilvers sailboard was an anticipation and that the Schweitzer patent was obvious having regard to Darby, the learned judge found it unnecessary to determine this point, merely contenting himself with observing that interesting questions might arise as to the extent to which a use of this kind, ten years before the date of the patent, ought in any event to be allowed to form a satisfactory basis for an attack on the ground of obviousness. Assuming, for the moment, that the learned judge was wrong in concluding that Chilvers was an anticipation of the Schweitzer patent, the limited and fairly distant use of the Chilvers board appears indeed to constitute the only ground upon which the attack on the ground of obviousness could be resisted. The arcuate booms form the only feature of the Schweitzer patent which differs in any material respect from the Chilvers board and, although their substitution may not have been immediately apparent to a 12 year old boy-all other considerations apart they would be more difficult to manufacture-anybody with a reasonable degree of sailing knowledge, looking at the Chilvers board, must at once have seen that the perfectly well known device of a wishbone boom would be an obvious substitute for the primitive split boom actually employed.

20

25

30

35

40

The real question is how far Peter Chilvers' relatively isolated user of his device-albeit carried out publicly-can be relied on in support of a case of obviousness as opposed to anticipation. Mr. Pumfrey submits that it cannot be 45 relied upon at all-it was, he suggests, a "freak" use which no man skilled in the art would have considered for one moment as seriously meriting his attention, let alone any development. It is, he submits, contrary to commonsense that a patent which has resulted in a considerable commercial success over the past ten years should be invalidated as the result of the use, years ago and on a comparatively 50 obscure holiday beach, of a primitive plaything put together by an adventurous youth.

77 [No. 4] Court of Appeal Oliver J.

We do not see why such a notion should be repulsive to commonsense. If Peter Chilvers had adopted, as part of his device, the conventional wishbone boom in place of the more primitive straight split boom which he in fact used, it would, we should have thought, have been quite unarguable that this would not have been 5 an anticipation under sub-paragraph (e), for the notion behind anticipation is, as we understand it, that it would be wrong to enable the patentee to prevent a man from doing what he has lawfully done before the patent was granted. No doubt, the philosophy behind sub-paragraph if) is different to this extent, that a patent is granted only for an invention and that which is obvious is not inventive, but it 10 also must, we think, take into account the same concept as anticipation, namely that it would be wrong to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was known in the art before the priority date of the patent granted. This emerges perhaps most clearly from the following passages from the speech of Lord Moulton in Gillette Safety 15 Razor Co. Ltd. v. Anglo-American Trading Co. Ltd. (1913) 30 R.P.C. 465 at 480: "But he "-a prior inventor-"has shown the world how to make a safety razor by clamping a blade in the way which I have described ... The knowledge so communicated applies to blades of any section. After the public has been shown how thus to clamp a blade, one cannot make a novel invention by saying that, instead of clamping a thick blade, one will clamp a thin one .... If the claims of such a patent were so wide as to include it, the patent would be bad, because it would include something which differed by no patentable difference from that which was already in possession of the public. Such a patent would be bad for want of novelty ... from the point of view of the public it is important that this method of viewing their rights should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material shape or size."

20

25

30

35 Mr. Chilvers, of course, and, indeed, any of the persons who witnessed or copied his aquatic feats, are members of the public and one asks then on what principle should such persons, who clearly cannot be prevented from doing exactly that which they did before, be prevented from doing that which is no more than an obvious variant of what they did before? 40 It is, of course, perfectly true that the user proved was relatively short, extending over two summer seasons, that it can, of its nature, have had only a limited audience, and that there is no evidence that it excited anything more than mild amusement in those who witnessed it. But it was certainly not secret and it was not accidental. 45 Mr. Chilvers knew perfectly well what he was doing and he was doing it to achieve exactly the same result as the patent in suit (see the speech of Lord Reid in Bristol-Myers Co. (Johnson's) Application [1975] R.P.c. 127 at 141 lines 1-15). Nor can it matter that the user was of relatively short duration. In his speech in Bristol-Myers (at pages 144-5), Lord Morris recognised that it was possible to 50 conceive of circumstances in which prior user was so trivial as to be capable of being disregarded, but said that he could find no warrant either in reason or in authority for the contention that what amounts to a user is not to be so regarded if it is "merely temporary"; and Lord Diplock (at page 159) observed that:
c

78
Oliver J. Windsurfing International Inc. v. Tabur Marine (G.B.) Ltd. [1985] R.P.C.

"it is, at any rate by now, clear law that prior use which defeats a patent, need not be habitual--one single instance is enough. . ." Nor can it be said that Mr. Chilvers was merely carrying out an uncompleted experiment (as postulated in the summing-up in Galloway v. Bleaden (1839) 1 W.P.C. 521 at 525). No doubt the craft was initially experimental in the sense that 5 it had not been done before, but Mr. Chilvers in fact worked it and used it for two seasons for the recreational purpose for which it was constructed. It cannot legitimately be objected that his user was simply recreational and non-commercial. The purpose, indeed, of the patentee's embodiment is recreational and the commercial success of the product has been achieved by popularising the recreation; 10 and it is clearly established that non-commercial user for the private purpose of the user is sufficient to found an objection based on prior user, so long as the user is overt, in the sense of being exposed to public view: Stead v. Williams (1843) 2 W.P.C. 126, Carpenter v. Smith (1841) 1 W.P.c. 530, Taylor's Patent (1896) 13 R.P.C. 482. The user, Lord Diplock observed in Bristol-Myers (at page 159) need 15 not be for the purposes of trade "if it is use from which the user derives a practical benefit". Finally, it is no objection that the user excited no interest and created no public demand (Losh v. Hague (1838) 1 W.P.c. 202 at 205). In our judgment, Mr. Chilvers' user is clearly user to which regard must be had under sub-paragraph (e) and we can see no context for giving the words "having regard to what was 20 used" any different meaning for the purposes of sub-paragraph (J). "A man cannot be said to be the inventor of that which has been exposed to public view and which he might have had access to if he had thought fit" (Carpenter v. Smith) (1841) 1 W.P.C. 530 at 536 per Lord Abinger C.B.). 25 If that be right, then one asks "upon what ground could it be said that the substitution of a wishbone boom was not obvious?" Only, we think, upon the ground that the hypothetical skilled man in 1958 would have been so uninterested in this child's plaything that he would not have applied his mind to the matter at all for, on the evidence, it is, we think, clear that any skilled adult who applied his 30 mind to Chilvers' device would at once have seen it as obvious that the unconventional and primitive split boom devised by Chilvers ought to be replaced by the conventional wishbone boom which, even though not in everyday use, would then have been familiar to anyone skilled in yachtbuilding. 35 As already mentioned, one has, in our judgment, to postulate a skilled man who is applying his mind to making what he sees work, and accordingly we hold that the Schweitzer patent was obvious having regard not only to Darby but also to Chilvers. That conclusion renders it strictly unnecessary to consider the primary ground of anticipation upon whicht the learned judge decided the case in the 40 defendants' favour. Nevertheless, in deference to the arguments addressed to us we ought to express a view. As mentioned already, the only feature which, in substance, distinguishes claims 1 to 6 from Chilvers is the use of the arcuate booms or wishbone boom. The 45 purpose served by those booms in relation to the alleged invention is described in lines 67 to 70 on page 1 of the specification as "to hold the sail taut and provide a handhold for the user". If their purpose is thus limited, it is clear that they are merely an alternative means of achieving exactly the same result as the two connected straight booms used by Mr. Chilvers. What is said by the plaintiffs, 50 however, is that, if one studies the specification carefully, it will be seen that there

79
[No. 4] Court of Appeal Oliver J.

is a further purpose served by the arcuate booms not comprehended in the passage to which reference has been made and not encompassed by the Chilvers boom. On page 3 of the specification there is a description of how the user can perform the operation of tacking, in the course of which it is said (lines 9 to 14):

"he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other side and setting the sail 14 so that the wind captures it" .

In the course of his evidence Mr. McAlpine-Downie drew attention to the 10 importance of the sail being properly "set" so that it assumes an aerofoil shape. He said: "The basic premise, that you want a sail which sets as an aerofoil, one cannot argue with. The assumption of the wishbone is the best way of getting it."

15

Thus, the argument proceeds, the specification as a matter of construction prescribes the arcuate booms not only for the purpose of holding the sail taut and providing a handhold (which could equally well be served by a pair of straight booms so 20 connected as to leave sufficient room for a handhold) but also for the purpose of giving the sail room to belly and so be properly set in an aerofoil shape. Otherwise, the argument proceeds, there is really no sensible meaning given to the word "arcuate" and the specification might just as well have specified merely a pair of connected booms. Now the evidence was that, when in use, booms of the Chilvers 25 craft were sufficiently flexible to assume, to some extent, an arcuate shape, although Mr. McAlpine-Downie did not think that the bowing would be particularly large. He agreed, however, that the effect would be to start to return the sail to a "reasonably fair shape". Thus, if and so far as the arcuate booms in the specification are designed to achieve this purpose, which depends upon the degree of curvature 30 of the arc, the Chilvers design achieved, albeit perhaps to a very limited extent, the same purpose by becoming arcuate in use. The learned judge observed that the extent of the freedom of the sail to assume a perfect aerofoil shape would necessarily depend on the nature and curvature of 35 the booms and continued: "But this of course is not a matter which forms any part of the disclosure or the claims of the specification. All the arcuate booms have to do is to hold the sail taut and provide a handhold for the user. There is in fact a reference in the document to a boom arcuate in shape which could properly be described as a wishbone boom: it has to be arcuate, it has to bow out on both sides, and quite plainly, so far as any question of achievement of effect is concerned, it has got to do that when the craft is sailing .... Claim 1 of the patent is not concerned with arcuate booms so shaped that the sail will take up an aerofoil shape: it requires no more than a pair of arcuate booms which hold the sail taut, as stated, and which provide a grip for the user in use. It is quite plain on the evidence that the Peter Chilvers boom would have taken an arcuate form. The craft when sailing would fall within claim 1, and indeed within the remainder of claims 2 to 6. If this be right, then in our view anticipation by prior public use is plainly established." The plaintiffs submit that, in saying this, the judge failed properly to construe

40

45

50

80 Oliver J. Windsurfing International Inc. v. Tabur Marine (G. B.) Ltd. [1985] R.P .C.

the specification purposively in accordance with the recent decision of the House of Lords in Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.c. 183. The difficulty that we feel about this, however, is that, if one is to give a purposive construction to the word "arcuate" in the specification, then the only useful purpose that one can conceive is that envisaged by the learned judge, and that leads, as it seems to us, to the conclusion that the only significance of "arcuate" is that the booms shall be arcuate in use, which leads in turn to the conclusion as to anticipation at which the learned judge arrived. The plaintiffs' argument has, therefore, to be for what might more properly be described as a "non-purposive" construction, a construction which would involve the conclusion that the booms have to be arcuate at rest and that it is this feature which prevents Chilvers from being an anticipation of the patent in suit, for his booms were straight at rest and not arcuate. But then one has to ask: What purpose does the arcuate nature of the booms serve when the article is not in use? There is no specification of the degree of curvature and there is nothing to indicate why, on this footing, the work "arcuate" is in the least material to the claim, save as indicating the use of a wishbone boom. In their evidence, both Mr. McAlpine-Downie and Mr. Nicolson appeared to agree that the Chilvers boom was in fact a primitive form of wishbone boom. Thus it seems to us that the plaintiffs are faced with the dilemma that, if "arcuate" means "arcuate at rest", it is immaterial and achieves nothing beyond the stated purposes on page 1 of the specification-purposes which would be achieved by any split boom-or it means "arcuate in use" and signifies no more than a pair of booms so constructed as to permit the sail to assume a more or less aerofoil shape according to the distance allowed in manufacture and the flexibility of the material used-a purpose achieved, a1though perhaps not very effectively achieved, by the Chilvers boom. One has to bear in mind always Lord Diplock's statement of principle in Catnic at pages 242-243 of the report:

10

15

20

25

" ... a patent specification is a unilateral statement by the patentee, in words 30 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 arC), 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 those novel features only that he claims to be essential that constitute the so-called 'pith 35 and marrow' of the claim. A patent specification should be given a purposive construction .... 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 40 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." Judging the patent in suit by this test, we are clearly of the opinion that the 45 learned judge was right in the conclusion to which he came. It is, in our judgment, beyond doubt that a skilled man reading the specification would at once identify what was described as "arcuate booms" as a wishbone boom. Chilvers used what was clearly a primitive form of wishbone boom and, if he had manufactured his article in 1980 instead of 1958, it would, in our judgment, quite clearly have 50 constituted an infringement of the plaintiffs' patent.

81 [No. 4]
Court of Appeal Oliver J.

Even if, however, the reference in the specification to arcuate booms has the effect of preventing Chilvers from being strictly an anticipation, the defendants are, in our judgment, entitled to succeed under their respondents' notice on the ground of obviousness for the reasons already given. The final matter requiring consideration is the plaintiffs' challenge to the exercise by the learned judge of his discretion to permit the plaintiffs to amend their specification pursuant to section 30 of the Act of 1949. What occurred at the trial was that, after judgment, Mr. Jacob, who was then appearing for the plaintiffs, asked for the order revoking the patent to be suspended pending consideration of 10 an amendment to the specification, the nature of which is briefly considered below. After a short discussion, in the course of which the judge invited Mr. Jacob to proceed with his application for amendment there and then, he said that he could see no scope for amendment and the order as subsequently drawn recorded that "this Court doth not think fit to give leave to the plaintiffs to amend the complete 15 specification". The plaintiffs submit that this was quite wrong. What should have happened was that the order should have been suspended and the matter adjourned for the proper steps to be taken to make any appropriate amendments, join any interested parties, and have the amended specification considered on its merits. Such an application might not have succeeded but at least, it is argued, the plaintiffs should have been given the opportunity to try. If the judge had been persuaded that there was any scope for a possible amendment which might save any part of the patent, we are disposed to think that that might have been the proper course and it is Mr. Pumfrey's submission that that is the course which this court ought now to take, remitting the matter back to the judge for consideration of the proposed amendments. What is said is that, so far as anticipation goes, that could be overcome by a disclaimer of the Chilvers device which would make it clear that anything constructed precisely in accordance with Chilvers would not constitute an infringement. Indeed, Mr. Young does not contest that, if the matter rested solely on anticipation by Chilvers, that might be the proper course to take. But it did not. It rested in the court below also on obviousness from Darby, and it rests in this court on obviousness from both Darby and Chilvers. What amendment, Mr. Young asks forensically, could now possibly be made which would disclaim Chilvers and yet leave anything at all in the claims capable of salvage? What is suggested as a possible amendment is this. Claims 1 to 6 are directed to a device applying the free-sail concept, putting it in broad terms, to any vehicle, and although that may fail for obviousness and anticipation, yet nevertheless there is an element of novelty in applying it specifically to a surfboard (as opposed to a simple board) and specifically to a surfboard of the California type shown in the specific embodiment depicted in claim 7. Therefore, it is argued, the plaintiffs ought to be given the opportunity to amend by restricting their claims specifically to surfboards and to the specific claim 7 embodiment, the judge having wrongly concluded that there was no scope for such an amendment on a wrong principle. We are unable to accept this. 5

20

25

30

35

40

45

In the first place, as Mr. Young has pointed out, it was for the plaintiffs, if they wished to support their claim to monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial. In fact, however, no-one, from first to last, advanced or considered the specialised qualities 50 of a surfboard as an inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as the basis for the claim to monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of

82
Oliver J. Windsurfing International Inc; v. Tabur Marine (G.B.) Ltd.

[1985] R.P.C.

the most important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence on an issue never previously suggested either in the specification or in the pleadings. We would require considerable persuasion that the imposition upon a successful defendant of such a manifestly inconvenient and oppressive course would be a proper exercise of 5 discretion even in an otherwise strong case. But, if it is to be justified at all, there must at least be ground for some degree of confidence that such an exercise is capable of yielding a useful result and that, in our judgment, is conspicuously lacking here. 10 The whole emphasis of the specification and the claims is upon a device for applying the free-sail concept to any type of vehicle and the one thing that is quite clearly not treated as of any importance is the type of body to which the invention is to be applied. Quite apart from the fact that, given prior user of the alleged invention in connection with a floating board, its use in connection with a surfboard 15 would, we should have thought, have been so entirely obvious as clearly not to constitute a patentable invention, the effect of the proposed amendment is not simply to amend the specification but to turn it on its head, by elevating to the status of the essential component the one feature of the allegedly inventive combination which was previously described in terms which make it entirely clear 20 that it is non-essential. What was previously put forward as the novelty of a free-sail rig to be fitted to any sort of body is now to become the novelty of a particular type of body to be fitted with a free-sail rig. That seems to us to go well beyond the scope of mere amendment and to be putting forward an essentially different concept. We agree, therefore, with the learned judge. We likewise do not 25 see any scope, in the light of the conclusions to which we have come, for any useful amendment which could salvage anything for the patentees. We refuse the opportunity to amend which the plaintiffs seek and dismiss the appeal.

Appeal dismissed with costs, those costs to 30 include the respondents' notice. Leave to appeal to the House of Lords refused.