Case No: HC03C01963

Neutral Citation Number: [2004] EWHC 2246 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 8th October 2004
Before :

THE HONOURABLE MR JUSTICE MANN
- - - - - - - - - - - - - - - - - - - - -
Between :

	1)	NIKKEN KOSAKUSHO WORKS
2)	NIKKEN KOSAKUSHO UK LIMITED
	Claimants	
	- and -		
	(1)	PIONEER TRADING COMPANY
(2)	NIKKEN HEARTECH (EUROPE) MASCHINENHANDELSA GMBH
	Defendants	

Mr John Baldwin QC and Dr. Michael Tappin (Instructed by Messrs. DLA, Leeds) appeared on behalf of the Claimants

Mr Iain Purvis and Mr Benet Brandreth (instructed by Messrs. Field Fisher Waterhouse) appeared on behalf of the Defendants

Hearing dates : 17th-21st, 25th,28th May 2004

Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

.............................
Mr Justice Mann

Introduction

1.	This action started life as a claim for infringement of a UK patent no. 2,322,316 (“the patent”) which relates to a milling chuck, as a claim in passing off and as a claim for infringement of copyright.  During its subsistence it became refined to claims relating to the patent.  There was a counterclaim for a declaration of non-infringement of the patent and for revocation of the patent.  Over a period of time various aspects of the claim were successively abandoned, and by the time of the trial the action was in substance a trial of the counterclaim.  By the time of final speeches there was no opposition to the claim for a declaration of non-infringement, so the issue which now occupies centre stage is the defendants’ claim for revocation on the grounds of lack of novelty and obviousness.  The first claimant (a Japanese company – “Nikken”) is the patentee under the patent.  The second claimant is its UK subsidiary.  The defendants are respectively a Japanese company and its German subsidiary, both trading in engineering tools; it will not be necessary to treat them separately in the course of this judgment and I shall call them both “Pioneer”. 

The invention

2.	The invention said to be disclosed in the patent is an improvement to high speed tool chucks.  These are carefully manufactured pieces designed to hold a cutting tool used for high speed precision cutting or drilling.  One end fits on to the machine tool itself, and the other holds the tool.  The chuck, and thus the tool, is then rotated at great speeds – 15,000 rpm or so. The tool has to be held securely.  The first invention is said to improve the grip on the tool.  The second is said to improve sealing of certain parts against debris, and damping of vibration.

3.	
Chuck sleeve

Flange

Clamp sleeve

Groove

NB – arrowed annotations not on original

The invention is shown in a cross-section diagram in the patent thus:

In this diagram the orientation is such that what appears at the top is the part that fits into the spindle of the machine tool; and the cutting tool is fitted into the bottom – its shaft is shown as 7A.  Working from the top of the diagram, there is first a tapered portion which fits into the machine itself where it is held firm.  This has an obvious taper, and it ends in a thick flange (102).  Below the flange (in the orientation in the diagram) is a narrower sleeve (the chuck sleeve, (103), which holds the tool.  The shaft of the cutting tool fits into a collet (8), which in turn fits into the chuck sleeve.  This has to be gripped very firmly so that the tool can perform its function.  The grip is achieved as follows.  The outer surface of the chuck sleeve is tapered towards its end ie it narrows towards the bottom of the diagram in the above orientation.  Over the outside of that sleeve is fitted a metal cage or sleeve (20), tapered like the chuck sleeve, and which contains needle rollers inclined so that they are not in line with the longitudinal axis of the chuck sleeve.  They protrude through the roller sleeve, so that on one side they engage with (by rolling against) the chuck sleeve.  On the other they engage with (by rolling against) a clamp sleeve (50), which fits over them.  This enables that clamp sleeve (which again has a taper matching that of the chuck sleeve) to rotate against the roller sleeve, and this in turn allows the clamp sleeve to be “screwed down” towards the flange of the chuck so as compress the chuck sleeve which grips the collet which in turn grips the tool shaft.

4.	Thus far the description of the features of the chuck coincide with prior art. The invention is said to comprise two aspects of the chuck shown in the diagram.  The first is a groove which is cut into the flange at the base of the sleeve.  It is shown in cross-section at 104 in the diagram above.  The second is an elastically deformable O-ring which fits into that groove and against which the clamp sleeve and needle roller cage are screwed down.

5.	The purpose of the first aspect (claim 1 in the patent) is to improve the grip on the tool shaft.  It is said that the amount of grip can be ascertained by measuring the internal diameter of the clamp sleeve in its clamped and unclamped states.  The greater the reduction in diameter, the greater the grip; and the more the diameter can be reduced along the length of the sleeve, the greater the overall grip.  It is said that the effect of this aspect of the invention is to lengthen the effective length of the chuck sleeve, and to increase the extent to which the internal diameter can be reduced at the flange end, thus increasing grip at that flange end.   Various things can be done at the other end (the tool end) to increase grip there; this aspect of the invention achieves a similar effect at the flange end, increasing uniformity of grip along the length of the tool shaft.

6.	The purpose of the second aspect (the O-ring – claim 8 in the patent ) is to improve damping and to form a seal.  At the flange end of the roller cage there is a retainer ring.  Its inner surface supports the needle roller sleeve.  When the clamp sleeve is fully rotated down (to fix the tool) the outer surface of the outer surface of the retainer ring is pressed against the O-ring.   This is said to reduce “chatter” and absorb other vibrations; those vibrations would otherwise adversely affect accuracy of machining.  It is also said to provide a seal which prevents dust and cutting fluid from entering the roller cage and the groove. 

The true construction of Claim 1 the patent

7.	Before moving on to consider the attacks on the patent, it is necessary to deal with a question of construction that arises out of it, because certain questions of anticipation turn on the point.  That question arises out of the terminology used in claim 1 of the patent, which is the claim which encapsulates what I have described as the first aspect of the invention.  It describes “A chuck comprising” various features, including the chuck sleeve and the clamp sleeve, and then adds the following words:

“wherein movement of the clamp sleeve in a direction which includes an axial component with respect to the chuck sleeve is operative to urge the chuck sleeve in a substantially radially inward direction in order to reduce the internal diameter of the chuck sleeve, and wherein an annular groove of predetermined depth is formed in the end surface of the flange distant from the shank portion such that the radially inner surface of the said groove is contiguous with the outer circumferential surface of the chuck sleeve.” (emphasis supplied).

The relevant words are underlined.  They are the words which describe the depth of the groove, and are the only words in the Claim which purport to do so.  It is obvious that taken by themselves, and at face value, they do not contain any objectively ascertainable measurement or criteria by which one can determine the depth (or indeed the width) of the groove in question.  

8.	The rival contentions of the parties as to the meaning of the words is as follows:

a)	Pioneer says that the words mean what they say – a “groove of predetermined depth” means any groove whose depth has been decided in advance by the creator or designer of the groove.

b)	Nikken say that that construction is unrealistic.  It says that on its true construction this Claim bears one of two alternative meanings. First, it means a groove of sufficient depth to achieve the object of the invention.   Alternatively, if that is not right, then it means a groove of “approximately 3-5mm” in depth because in this respect the patent acts as its own dictionary.  In putting forward these constructions Nikken relies on what appears in the specification as forming important material for the construction of the claim.

9.	The significance of this dispute arises out of the reliance by Pioneer on a piece of prior art, namely a drilling chuck called (in the parlance of this case) “Daishowa 1”.  I shall have to deal with the detail of this prior art in due course, but for the present it is sufficient to say that this chuck has what might be called a groove in what might be said to be in the same contiguous position as the groove in the invention.  If Claim 1 refers to any groove whose depth is predetermined, then subject to a question as to contiguity Daishowa 1 can be said to manifest such a groove, and it therefore anticipates the invention and invalidates the patent in this respect.  On the other hand, if Nikken’s arguments are correct, there is no evidence that the groove in Daishowa 1 has the effect of the groove in the invention, and it does not appear to be 3-5mm in depth, so there is no anticipation.  

10.	In determining this point I bear in mind the principles of construction set out in the authorities and in Article 69 of the Protocol on Interpretation.  So far as the latter is concerned, it requires me to eschew literalness and to eschew using the claims as mere guidelines.  I have to interpret the patent as:

“defining a position between those extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”

The inter-relationship between the claims and the specification was referred to by Laddie J in Merck & Co v Generics UK Ltd [2003] EWCA 2842:

“38.  The purpose of the patent is to convey to the public what the patentee considers to be his invention and what monopoly he has chosen to obtain.  These are not necessarily the same.  The former is primarily to be found in the specification and the latter is primarily to be found in the claims.  Although he is not deemed to be a patent lawyer, the patentee should be taken to be aware of the primary, and rather different, purposes of the specification and the claims when he is drafting his patent.  So, the patentee must be taken to know the framework of the form and purpose when drafting his patent.  It is his duty to communicate his invention and his assertion of monopoly to the public in language it will understand.  He is warned by the Protocol that his exclusive rights will not necessarily extend to everything which, from a reading of the specification and claims, it can be seen that he contemplated.  … The patentee can be taken to be aware of the fact that there is always a balance to be achieved between width of protection and validity.  It is up to the patentee to choose the level of risk he wishes to run.

…

The interaction of the specification and the claims was elaborated on further in Rosedale Associated Manufacturers v Carlton Tyre Saving Co Ltd [1960] RPC 59 at p 69:

“It is no doubt true and has been well established… that you must construe the claims according to their terms upon ordinary principles, and that it is not legitimate to confine the scope of the claims by reference to some limitation which may be found in the body of the specification but is not expressly or by proper inference reproduced in the claims themselves.  On the other hand, it is clearly no less legitimate and appropriate in approaching the construction of the claims to read the specification as a whole.  Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification.” 

And the approach of the court was summarised by Robert Walker LJ in Cartonneries de Thulin v CTP White Knight Ltd [2001] RPC 6 when he said:

“21 … The court has to do the best it can to reconcile the literal meaning of the language of the claims with the context provided by the rest of the specification (as both would be read by the ordinary skilled man) in order to provide both fair protection for the patentee and reasonable certainty for the patentee’s competitors.”

11.	For Pioneer, Mr Purvis says that predetermined means what it says, no more and no less, and it is inappropriate to go off into the specification to add to that meaning.  “Pre-determined” means something that is fixed in advance.  There is no warrant for giving it any narrower meaning, and the attempts by Nikken to refine that wording are not warranted by a proper process of construction, or by the facts of this case.  Nikken’s preferred construction (which relates the pre-determination to a groove which performs as the specification purports to require) involves introducing a lot of words and concepts in a manner which is inappropriate, and its secondary construction (which propounds a depth of 3-5mm) is not justified when one looks to see where that reference comes in the patent itself.

12.	Mr  Baldwin QC, for Nikken, has to produce a more elaborate meaning of the words “of predetermined depth”.  He starts by pointing out that Pioneer’s argument robs the expression “of pre-determined depth” of any real meaning.  Since any groove is likely to have been thought about before, and is unlikely to be the product of haphazard or random thinking, any groove has a pre-determined depth.  Accordingly “a groove of pre-determined depth”, on Pioneer’s reasoning, means any groove.  That, says Mr Baldwin, cannot be right.  Whether or not there is an infringement is not dependent on the infringer’s state of mind; subjective matters do not come into the construction of patents so the words cannot mean “decided in advance” (as Mr Purvis asserts) because that introduces a subjective element which is impermissible.   He goes on to equate the wording of this claim with the wording of the claims in cases such Minnesota Mining & Manufacturing Co v Plastus Kreativ AB [1997] RPC 737 and SEB SA v Societe de’Longhi spa [2003] EWCA 952, in which the courts were prepared to give qualified or elaborated meanings to words in the claim by reference to the specification and in particular the purpose of the patent.  When that is done, the concept of “a groove of pre-determined depth” becomes a question of degree, and the answer to the question “how deep” is, in effect, “deep enough to fulfil the object of the invention”, which is “ to provide a chuck in which a chuck sleeve can be easily deformed in the direction of decreasing diameter over substantially the entire length of the chuck sleeve, and which can increase the effective chucking length with no accompanying increase in the  length of the chuck sleeve” (those words are taken from the specification).  

13.	I reject this line of reasoning of Mr Baldwin as it stands.   I start with his first point – that “pre-determined” cannot mean what Mr Purvis says it means because it introduces a subjective element which does not exist in the construction of patents.  I think he is confusing several things.  I accept that the subjective intention of the alleged infringer does not affect the question of whether there has been an infringement or not.   There either has or there has not, and whether or not the alleged infringer intended to infringe does not matter.  One looks at what he did, not what he thought he was doing.  That, however, is a different question from the point of construction which arises in this case.   The purpose of construction is to find out, objectively and from the language of the patent, the intention of the patentee.   It is beside the point to say that the subjective intention of an alleged infringer is irrelevant – that is a different person and a different context.  It does not follow that one cannot construe the patent so as to introduce a purely subjective element if that is what the words of the patent require.  It may be that to introduce such words would lead to all sorts of problems with the validity of the patent, but that too is a different point.  One first has to find out what the words mean, and if they refer to a subjective state of mind then that is what they refer to.  I therefore reject that facet of Mr Baldwin’s argument.

14.	However, there is another way of putting this part of the case.  It may be that words having an ostensibly subjective meaning raise a question of absurdity.  If they did, then it would be open to the court to approach the construction of the patent, as with any other document requiring construction and having the same feature, on the footing that the patentee is unlikely to have intended an absurdity or an uncommercial effect, and to consider whether there is a construction which is more likely to coincide with the intention of the patentee.  This is a familiar approach to construction, and I do not see why it cannot be deployed in relation to patents.  I think that Mr Baldwin’s argument (if I may paraphrase it for him) is a version of this.  He is in effect saying that the patentee in this case cannot have intended to refer to any groove (or “any old groove” as he put it in argument), irrespective of depth, and dependent entirely on the whim of the skilled person considering the patent or implementing its inventive concept, because that would be absurd.  Therefore he must be saying something different, and what he is in effect saying is a groove that achieves his inventive intention (as set out above).  In argument Mr Baldwin accepted that this might be a different way of putting his point (though he preferred his own).  

15.	Having set up that alternative argument, I have to say that I do not think that it assists him all that much.  I do not think that the evidence shows that one can pre-suppose that the patentee thought that his wording was absurd or would introduce some uncommercial effect.  They could be taken to mean any groove, and it is not obvious that some sort of minimum groove was posited.  Having said that, I do consider that the term in dispute has an air of oddity about it to cause one to see if there is any guidance elsewhere in the patent as to whether there are any constraints or pre-requisites on or to the pre-determination of the groove which, absent such constraints or pre-requisites, does seem to be utterly at large in terms of its dimensions (both depth and width).  

16.	Mr Baldwin would say that there is a competing construction which strikes the right balance between the patentee and third parties (in terms of the Protocol) and which makes more sense than leaving the groove to be decided on in purely unguided fashion.  I have referred to it above – he says that the patent demonstrates that the intention is that the groove should be sufficiently deep to achieve the object of the invention, and he relies on Plastus and SEB v de Longi in support of that approach.  It is therefore necessary to consider both the wording of the remainder of the patent and the effect of those authorities.

17.	The patent starts by describing the Field of the Invention – it relates to a chucking tool which operates by reducing the diameter of a chuck sleeve to grip a tool tightly.  Then it describes prior art – in effect it describes a chuck as in the invention but without the groove.  It then seeks to describe how the clamping forces operate in such a chuck, and contains a graph which seeks to show the amounts by which the internal diameter of the chuck sleeve decreases when the clamp sleeve is turned up the chuck sleeve to secure the tool.   The reduction in internal diameter is described in the graph in millimeters, and it is measured at 12 points from just inside the nose of the chuck sleeve (P1) to a point just past where the flange commences (ie just past where the outer edge of the chuck sleeve finishes – P12).  The measurements are expressed on the x-axis of the graph to be at 6mm intervals.  If one were deducing the size of the tool one could therefore deduce that external length of the chuck sleeve in question was about 72mm long, but no other dimension is apparent or deducible.   The graph shows a falling off of the decrease in internal diameter from just past point P9 such that beyond that point:

 “the reduction in internal diameter becomes very small and the rate of the reduction increases towards the flange.”

It is then explained that this phenomenon occurs because:

“the rigidity against radial elastic deformation increases with the decreasing distance from the flange …, and therefore the portion of the clamp sleeve … facing the [area of points P10 to P12] deforms elastically to increase its diameter.  As a result the chucking force in [this area] decreases, with the result that the shank … of the tool … cannot be held with a uniform chucking force over the entire length thereof.  Moreover, the effective chucking length … over which the chuck sleeve … actually chucks the tool … decreases.”    

This can lead to eccentric motion of the tool.  If the clamp sleeve is turned so that it abuts the flange then the internal diameter of the chuck sleeve is reduced somewhat close to the flange (ie at points P10 to P12), but this requires a large clamp force to be applied to the clamp sleeve and the load on the needle rollers can become excessively large.

18.	Under “Summary of the Invention” the patent says:

“The present invention has been accomplished to solve the above-mentioned problems, and an object of the invention is to provide a chuck in which a chuck sleeve can be easily deformed in the direction of decreasing diameter over substantially the entire length of the chuck sleeve, and which can increase the effective chucking length with no accompanying increase in the length of the chuck sleeve”.

“To achieve the above objective, the present invention provides a chuck comprising:

- and there is then set out a description of the chuck which coincides with the prior art, in precisely the same terms as the introductory words of claim 1 having the same effect, and which then ends with precisely the same form of words as appear in claim 1 and which have been quoted above in paragraph 7.  Two paragraphs later on the specification says:

“In the chuck according to the present invention, a groove having a predetermined depth is formed in the end surface of the flange opposite the shank portion such that the groove surrounds the base end of the chuck sleeve through which the chuck sleeve is joined with the flange.  Therefore, the overall length of the chuck sleeve can be increased with no accompanying increase in the overall length of the holder body.  Thus, the radially inward elastic deformation of the chuck sleeve in the base end area adjacent to the flange can be made substantially equal to that in the remaining area.”  

There are drawings showing the invention (including that which appears at the beginning of this judgment), and on the same graph of internal diameter reduction that I have referred to above there is an additional line showing “variation in the reduced internal diameter of the tightened chuck sleeve” as a result of the invention, by reference to the same points P1 to P12.  This graph shows a slower fall-off of the reduction in diameter, with the steep fall-off occurring at P11 rather than P9.   

19.	I think that there are difficulties in construing “pre-determined” in the manner suggested by Mr Baldwin.  They arise out of the nature of the process that his construction requires, and from difficulties in defining the objectives.

20.	As to the first, it should be noted that what Mr Baldwin’s suggested construction requires is not so much elaboration, or filling in a blank; it is more in the nature of a significant re-writing of the words to give them a non-natural meaning.  That is not a promising start, particularly bearing in mind the constraints on construing patents as set out above.  There has to be “reasonable certainty for the patentee’s competitors” (Cartonneries, cited above).

21.	When one turns to consider just what the objectives are, there are difficulties in finding the objectives sufficiently closely and unambiguously described:

a)	I have already set out a later paragraph in the specification which suggests that the effect of the groove is that “the overall length of the chuck sleeve can be increased with no accompanying increase in the overall length of the holder body.”  The apparent contradiction with the opening words of the summary (“with no accompanying increase in the length of the chuck sleeve”) is doubtless explicable on the footing that the opening words measure the sleeve from the (ungrooved) face of the flange whereas the later words treat the sleeve as extending to the bottom of the groove.  There is not much difficulty about that, but the definitions of objective are still not free from difficulty.  Presumably the depth of the groove is taken as being a pro tanto extension of the length of the chuck sleeve.  This objective, of lengthening the chuck sleeve by the amount of the groove, is achieved whatever the depth of the groove – any pre-determined depth of groove would have that effect.  This supports Mr Purvis’s construction.  The next sentence states: “Thus the radially inward elastic deformation of the chuck sleeve in the base end area adjacent to the flange can be made substantially equal to that in the remaining area”.  The word “Thus” suggests a direct causal effect  of increasing the sleeve length.  There is no suggestion of any qualification to the effect that some grooves will not do the trick.  

b)	Later on, the following two consecutive paragraphs occur:

“In the chuck of the present invention, the groove having a predetermined depth is preferably formed along the entire outer circumference of the chuck sleeve to have a ring-like shape.

In this case, elastic deformation of the chuck sleeve in the direction of decreasing diameter becomes easier.  Therefore a strong chucking force can be generated even when the tool length of the holder body is decreased.”

This introduces a degree of equivocation when compared with earlier statements of objective.  The first statement of objective anticipates that “a chuck sleeve can be easily deformed in the direction of decreasing diameter”.  Whatever “easily” means in this context, it is not the same as “easier”.  The former suggests a final position; the latter suggests a relative, and not an absolute, concept.  Neither is necessarily the same as the result (provided for in the other passage cited above) that the deformation “can be made substantially equal” at the flange end of the sleeve.  This degree of equivocation as to what the objective is is not resolved by the measurements that have apparently been graphed.  The measurements of the reduction in internal diameter when the groove is in place might be consistent with all the alternatives that I have just referred to, but it does not help in deciding which is the objective (and therefore what the depth of the groove has to be), and it is not expressed to be the measurable objective of the invention.  

c)	There are two other contexts in which the word “pre-determined” is used in the specification, and in each of those there is a strong suggestion of subjective elements.  In the first there is a reference to “the needle rollers being inclined of [sic] a predetermined angle with respect to the centre axes of the chuck sleeve”.  There is no apparent limit to the predetermination of that angle.  In the second there is a reference to “a plurality of grooves [which] are preferably formed in the inner wall surface of the chuck sleeve at predetermined intervals”.  Again, there is nothing in the patent which suggests any clear limit on the predetermination of those intervals, and the context suggests a certain freedom of choice.   While the approach to construing a patent may not be quite the same as construing an inter partes document such as a deed, it must be relevant to pay some attention to the use of the questioned word in other parts of the document.  If that is done, then this use is contrary to the use advocated by Mr Baldwin in relation to the word “predetermined” appearing in Claim 1.

22.	Bearing in mind the manner in which patents are to be interpreted, and the primacy given to the Claim in that context, then even if it were permissible, in this patent, to look to the specification to elaborate the meaning of the words “pre-determined depth”, I do not think that the specification provides a sufficiently clear elaboration if indeed it contains any.  What Mr Baldwin’s suggested construction requires is not so much elaboration, or filling in a blank; as I have already observed, it is more in the nature of a significant re-writing of the words to give them a non-natural meaning.  That might be possible in some contexts, but in my view not in the present one. 

23.	I have not ignored the Plastus and SEB v de Longhi cases.  Those authorities do indeed allow the meaning of a word in the claims to be qualified or explained by reference to the scope of the objective of the invention.  In the case of Plastus the word was “opaque” in the context of a flap on an overhead projector document pocket.  It was held that its literal meaning was “impenetrable to light” (see p 752).  However, 

“it is to the specification that the court must turn to ascertain the sense in which a word or phrase is used and the purpose of its use.  … In this case the patent itself indicates the amount of variation from that literal meaning which is encompassed by the claim.  It includes those variants which have, and the skilled reader would realise would have, no material effect upon the way the invention worked and excludes those that have and would be thought to have a material effect … The patent uses the word “opaque” to differentiate the invention from the prior art.  Claim 1 encompasses within its ambit and only encompasses flaps that are opaque in the sense that they eliminate the disadvantages of the prior art.  Those disadvantages are spelt out as lack of masking of the gap and projection of the contours of holes and notes”  (per Aldous LJ at p 752)

That was a decision which turned on the construction of the particular patent in question.  It demonstrates that a word in the claim can take its colour from the specification and from the object that the patent was stated to be intended to realise, and that a word with absolute overtones can be made to bear relative ones.  In that case the objects were easy to define and it was relatively easy to assess whether they were achieved – in essence, it was whether one could see writing or holes in the plastic through the “opaque” flap.  That assisted in determining what the patent really meant by opaque.  

24.	In de Longhi the word in question in the claim was “closes” in a patent relating to hot kitchen equipment;  though the reasoning seems to have proceeded on the meaning of the corresponding adjective “closed”.  It was common ground that that word was not used in the sense of hermetically sealed, so its meaning became a question of degree – “how closed” (see para 55).  

“The word “closed” [sic] is used in the claim to distinguish the prior art and to prevent the risk of burning.  … We are of the opinion that the judge was right … to answer the question “How closed?” with the answer, “closed enough practically to prevent connection between the skirt and the vessel and the consequent escape of hot air, with the associated risk of burning.  We believe as a practical matter third parties are left in no uncertainty …”  

Thus, again, an adjective capable, in ordinary parlance, of being a question of degree, was given its colour by the specification and the objects of the invention, which again were clear enough from the specification.  

25.	These factors do not operate in the same way in the present patent.   “Pre-determined depth” means, literally, a depth which has been decided on before its creation.   Mr Baldwin’s construction is not so much a “variant” of those words (to use Aldous LJ’s expression); it is a wording which sets about ascertaining how one “pre-determines”  what the depth is to be.  It supplies missing words; it does not define the scope of existing words.  That is a different approach from that adopted in the two cases just referred to and renders those cases distinguishable.  That is enough to distinguish those cases, but in addition I also observe that the clarity of the objects of the inventions in those two cases was greater than it is in the present case.  If one is to qualify or elaborate on the meaning of a word by reference to the objects of the invention then those objects ought to be clear.  Otherwise the skilled but unimaginative reader, through whose eyes the patent has to be read, will be confused.  The process of construction should not be to introduce uncertainty.  It seems to me that Mr Baldwin’s approach would do just that.  I have set out the first description of the objective intended to be achieved by the patent.  It is to provide a chuck sleeve which can be “easily deformed over substantially the entire length of the chuck sleeve” – but how easily and how substantially does not appear from the specification.  The same applies to the words “and which can increase the effective chucking length” – by how much?  One is given no guidance as to what the measure of success is.  It is not sufficiently “spelt out”, in the words of Aldous LJ.   The later passage of the patent, also set out above (“In the chuck according to the present invention”), introduces additional uncertainty  by apparently assuming that any groove will indeed suffice.  Accordingly, the approach to construction demonstrated by the two cases cited (and others that were also cited to me) is no basis for introducing Mr Baldwin’s construction.

26.	If he fails on that point (which he has), Mr Baldwin urges an alternative construction on me.  This, as Mr Purvis pointed out, was introduced late in the day (shortly before the trial), but if it is correct then it is correct irrespective of when it was conceived and introduced into argument.  According to this argument the expression “predetermined depth” means approximately 3-5mm.  This is said to be because there are two references to that as being the appropriate depth and the patent provides its own dictionary in this respect.   

27.	The two references to that depth are as follows.  After the section of the patent headed “Summary of the Invention”, there is a section headed “Brief Description of the Drawings”.  This opens with the words:

“Various other objects, features and many of the attendant advantages of the present invention will be readily appreciated as the same becomes better understood by reference to the following detailed description of the preferred embodiments, when considered in connection with the accompanying drawings …”

which are then listed and described.  The following section is headed “Detailed description of Preferred Embodiments”, and so far as material it contains the following:

“Embodiments of the present invention will be described with reference to the accompanying drawings … “

Figure 1, which is that appearing in this judgment, is then described by reference to its consitituent parts and the document continues:

“In the end surface 102a of the flange 102 opposite the tapered shank portion 101, a groove 104 having a predetermined depth (approximately 3 to 5 mm) is formed … “ (emphasis supplied)

Then, after further description of features of the design (somewhat repetitiously), the following appears:

“In the above-described embodiment, the groove 104 having a predetermined depth (about 3 to 5 mm) is formed in the end surface of the flange 102 … However, the shape of the groove 104 is not limited to the continuous ring-like shape, but may be a [sic] uncontinuous groove that extends along part of the outer circumference of the chuck sleeve 103.  Even in this case, the same effect is expected to be achieved.” (emphasis supplied)

Mr Baldwin bases his alternative case on the emphasised words.  He says that by using those words the patent has acted as its own dictionary and provided a definition for “predetermined depth”.  

28.	The first problem he faces in this respect is the positioning of these words.  They do not occur in the description of the invention.  They appear in the section of preferred embodiments.  That gives them the quality of preference, not of requirement.  Second, while it may not be objectionable for the predetermined depth to fall within a specified range, the words in question do not specify a range – they specify an approximation to a range.  This vagueness does not help the argument.  Third, and crucially, the argument is irreconcilable with the closing words of the section:

“Obviously, numerous modifications and variations of the present invention are possible in the light of the above teachings.  It is therefore to be understood that within the scope of the appended claims, the present invention may be practised otherwise than as specifically described therein.”

This makes it clear that what has preceded these words are merely examples of how the invention might be applied.  Thus the approximate range (about 3 to 5 mm) is merely an example – it is not intended to impose restrictions on the depth of the groove for the purposes of the patent.  In my view it is clear that in suggesting those dimensions the patent is not acting as its own dictionary – it is merely suggesting ingredients for parts of a variable recipe.

29.	I therefore conclude that the expression “groove of predetermined depth” means, in effect, a groove whose depth the maker has decided in advance. 

The experts

30.	I shall have to apply that construction to the relevant material, but before doing so I should say something about the expert evidence that I heard in this matter.  Each side called an expert in cutting tool design and technology.  Nikken called Professor Keith Ridgway, who is the Professor of Design and Manufacture in the Department of Mechanical Engineering at Sheffield University.  After an engineering degree he obtained a special apprenticeship and became a Chartered Engineer and a Member of the Insitution of Mechanical Engineers.  Pioneer called Professor Graham Smith, a Professor of Industrial Engineering in the Faculty of Technology at the Southampton Institute.  Before embarking on an academic career he undertook an engineering apprenticeship and he too is a Chartered Engineer  and a Fellow of the Instution of Mechanical Engineers.  Each expert’s qualifications are rather longer to state than that, and both are clearly very experienced men in both the practical and academic fields of mechanical engineering.   The evidence of both men was of considerable assistance to me.   I deal below with the reasons why, in one area, I prefer the evidence and views of Professor Ridgway over those of Professor Smith.  

Anticipation or lack of novelty – Daishowa 1

31.	With that construction established, it is necessary now to consider the attack of lack of novelty in relation to this patent.  Pioneer maintains this attack on the footing of a prior patent which in the parlance of this case  became known as Daishowa 1.  This is a patent published in the European Patent Office on 13th April 1988, and it relates to a drill chuck with a similar purpose to the Nikken chuck.  The relevant drawing in the patent is as follows: 

Area expanded below

On the flange, just to the right of the number 10, is a compressible ring sitting in a groove cut in the flange.  It is shown cross-hatched.  Just below and inboard of it is a small part-circular cut-out which, absent compression of the seal, is not occupied by that seal.   It can be seen a little better in the following blow-up:

Circular cut-out

Seal

32.	The dispute is as to whether the patent reveals the groove which is the subject of Nikken’s alleged invention.  There are no words which refer to it in any way, but Pioneer rely on the drawings appearing above (and similar drawings said to show the same thing).  Pioneer’s case is that the drawings in the Daishowa patent show the whole of Claim 1 in the Nikken patent and it therefore anticipates.  If one looks at the drawings one can see there is in fact:

a)	 an annular groove 

b)	of predetermined depth

c)	formed in the end surface of the flange distant from the shank portion 

d)	such that the radially inner surface of the said groove is contiguous with the outer circumferential surface of the chuck sleeve.  

Nikken’s case was that the Daishowa patent did not demonstrate the features of the Nikken patent because on its true construction the latter had performance qualifications (the ability to allow additional deformation of the chuck sleeve) which the Daishowa patent did not show.  However, I have decided against that construction.  That being the case, Mr Baldwin accepts that the first three of the elements that I have listed are apparent from the drawing, but he says the last (contiguity) is not, so there is therefore no anticipation.  If he is wrong on that then he accepts that Daishowa 1 anticipates, albeit accidentally.

33.	I therefore have to decide whether the radially inner surface of the groove is contiguous with the outer circumferential surface of the chuck sleeve.  The arrangement is not quite as simple as the groove in Nikken.  There is a groove in which a seal is seated.  However, as Mr Baldwin points out there is a small nub on the chuck sleeve above the groove.  Mr Baldwin’s submissions on this seem to characterise this nub as the end of the chuck sleeve – his closing skeleton argument described this nub as being “below the chuck sleeve”.  Accordingly the groove was not “contiguous” with the outer surface of the sleeve.  Furthermore, there is a circular cut-out whose innermost point is radially inward of the line of the chuck sleeve above it.  That too, says Mr Baldwin, means that the groove is not contiguous with the outer circumferential surface of the chuck sleeve.   Mr Purvis, for Pioneer, says that contiguity is shown.  The small nub, whether or not at the bottom of the sleeve, is the sleeve, and the inner surface of the groove abuts it immediately and is therefore contiguous with it.  It makes no difference that the edge of the groove “digs into” the face of the chuck sleeve a little more so as to create a rounded depression – it is still contiguous.

34.	I think that Pioneer’s case is correct on this point, though I may not wholly agree with the exact form of Mr Purvis’s reasoning on this point.  The wording of claim 1 of the Nikken patent requires that the radially inner surface of the groove be contiguous with the outer circumferential surface of the chuck sleeve.  If one looks to the patent to see how that is implemented one finds the drawings, which show the topography illustrated above.  The inner surface of the groove is in effect the same thing as what has become an extension of the length of the chuck.  The former is contiguous with the latter.  That situation is present in the Daishowa chuck.  The groove is a different shape in the latter, because of the circular cut-out, but its inner face is still contiguous with what has become the outer face of the chuck.  The fact that it is slightly more indented than the line of the chuck sleeve above the nub does not prevent its being the edge of the groove for these purposes; nor does the fact that at this point the edge of the groove is curved rather than straight.  This circular edge is also as much the edge of the chuck sleeve for these purposes as it would have been had it been a straight edge which continued the precise line of the chuck sleeve above the nub.  Although Professor Ridgway at first seemed to express the view that a groove had right-angled corners, he withdrew the suggestion and I think he was right to do so.  Nor does the fact that the circular cut-out bulges slightly below the rest of the groove where the seal is seated stand in the way of this analysis.  Mr Baldwin’s analysis depends on the surface of the chuck sleeve stopping at or above the nub; but that analysis is contrary to the evidence of his own expert, Professor Ridgway, who accepted that the milling of the groove extended the length of the chuck sleeve (by the depth of the flat part of the groove).  That view (which I accept) is contrary to an analysis which predicates that the chuck sleeve has been milled away by the amount of the cut-out so it is no longer the chuck sleeve.  If it is still the chuck sleeve (extended in length) then what abuts it is in my view still the groove.  The two surfaces are therefore contiguous.  Alternatively, if that is not the correct analysis because the circular cut-out is not part of the groove, there is still a groove cut in the flange and while the edge of the groove becomes notional at this point in the argument rather than physical, it is still contiguous with the surface of the flange at the nub in the same way as the edge of the groove is contiguous with the surface of the sleeve at the comparable point on the Nikken chuck.  

35.	It follows, therefore, that Daishowa 1 anticipates claim 1, and that claim 1 is therefore void for want of novelty.

The other attacks on claim 1

36.	 That conclusion means that it is not strictly necessary for me to go on to consider the other attacks on claim 1, but since I heard extensive submissions and evidence on them I shall make findings in relation to them.

Obviousness

37.	Pioneer maintains that the invention in claim 1 is obvious.  In support of this they rely on the evidence of the experts, and it says that its case on obviousness is supported by the fact that other chucks shown in other patents also show the invention.  Furthermore, there was evidence from a former employee of Nikken, a Mr Kim, that the same idea had occurred to him a short while before the Nikken patent.

38.	The notional person in relation to whom obviousness has to be tested is the familiar skilled but uninventive technician, familiar with the background technical knowledge but devoid of imagination, and who has recently been more graphically described by Jacob LJ in Rockwater Ltd v Technip France SA and others [2004] EWCA (Civ) 381.  I extract three attributes of that man, asn set out by Jacob LJ, which are of particular relevance and assistance in the present case:

a)	“He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one (para 8).

b)	“He does, on the other hand, have a very good background technical knowledge – the so called common general knowledge.”  (para 9)

c)	“… the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevails in the art concerned.” (para 10)

39.	In his first report, Professor Smith, giving evidence on behalf of Pioneer, expressed the view that the skilled person would be wanting to increase the gripping force without increasing the length of the chuck sleeve (when measured from the face of the flange).  Making the clamp sleeve and chuck sleeve the same length would cause a difference in the deformation brought about by the clamp sleeve along the length of the clamp sleeve because the mass of the flange would give rise to resistance at that end.  Putting the matter colloquially, it would be harder for that end of the clamp sleeve to be squeezed.  That would give rise to an undesirable discrepancy in gripping torque which would in turn lead to undesirable eccentricity in the rotation of the tool.  Eccentricity, in high speed precision turning tools, is very undesirable.  It would be apparent to the skilled person that he would need to improve the elastic deformation of the chuck sleeve in the region of the flange, and in particular something would have to be done to remove the extra resistance caused by the joint between the chuck sleeve and the flange. “The obvious engineering expedient” to weaken the joint is to introduce a groove around the bottom of the sleeve, which effectively moves the joint further into the body of the flange.  Professor Smith said this kind of groove, known as an “undercut”, was a common feature in the machining industry wherever it was desirable to reduce the rigidity of a joint.

40.	Professor Ridgway was of the contrary view.  He accepted that in 1997 the skilled person would know of the technique of cutting grooves or slots around the internal circumference of the chuck sleeve to increase the ability of the sleeve to deflect when force is applied by the clamp sleeve and rollers.  However, to cut a groove in the flange would actually be counter-intuitive.  One important element in these chucks is rigidity, and to put a groove into the flange at the base of the chuck sleeve would have been seen as doing something which would or could compromise rigidity; it would not have occurred to the skilled man and required an inventive step to think of it.  This would particularly be so if the angle in the undercut was a right angle, since right angles cause high stress.

41.	The experts were, of course, closely cross-examined on their respective views.  Neither of them resiled from their principal views (though both were prepared to accept correction on some matters), and there was some useful common ground.  In particular, they both agreed that in 1997 (which is the important date f.or testing obviousness) the focus of the industry, when it came to trying to improve grip, was at the other end of the clamp sleeve (ie the end farther from the flange).  Manufacturers were not generally concerned with improving grip at the flange end – that was the clearly expressed view of Professor Ridgway in his report, and Professor Smith agreed with it in cross-examination.  The experts also agreed that it would indeed compromise rigidity if one introduced a groove where the Nikken patent has it.  Professor Smith, however, considered that the skilled person would realise that there was a potential trade-off of decreased rigidity against better grip which he might be willing to undertake.   He would be prepared to contemplate weakening this joint in the interests of getting a better grip.  But the important point is that putting a groove in the flange was something which, he said, would occur to the skilled man.   He told me that weakening joints in this way was something that every engineering apprentice learned, and that he had been doing it himself for very many years (from his own days as an apprentice).  He supported his case with examples of its being done in other chucks – I shall come to this in due course.  Professor Ridgway stuck to his views on the topic.  Mr Purvis took him carefully through the steps that a skilled man would go through in order to increase grip, but at the end of the day he declined to accept that he would go so far as to consider milling a groove in the flange at the base of the chuck sleeve.

42.	Having heard the evidence of these experts, I prefer the evidence of Professor Ridgway in relation to this aspect.  Professor Smith is obviously an eminent and experienced man, but his evidence sometimes bordered on being a little over-vigorous and over-assertive, with one or two important aspects not fully thought through.   Thus in his report he had suggested that creating the groove would involve “considerable extra machining and therefore non-trivial increased manufacturing costs”, and suggested that this was a reason why the skilled man might see some advantage in the groove but not want to incorporate it.  He was cross-examined on the extra cost, and on the first occasion when this happened he sought to maintain his ground that the cost of the groove was significant.  However, Mr Baldwin returned to it a little later on, and when actual figures were put to him he eventually conceded that the cost was “minimal”.  It is of course the case that the mere fact that a witness thinks better of his earlier evidence is not necessarily to be held against him – it might be caused by an understandable change of mind, or a commendable open-mindedness.  However, this was a significant part of Professor Smith’s evidence, and I think that the way in which he dealt with it showed an unwillingness to let go when he should, and a tendency on occasions to take positions that were a little ill-advised.  The same can be said of some of his evidence about shortening chuck sleeves and overall tool length.   Again, he propounded a 1930’s chuck (the Steiber chuck) as being something that went to obviousness, and sought to maintain that it helped on the point even when it transpired that it was not a tool-holding chuck but a piece holding chuck (ie it held the piece worked on, not the tool), which is in my view a very significant difference.  Professor Smith suggested a way in which the Steiber chuck could have been modified in order to turn it into a high speed tool holder but that is hardly the point and it moves a long way from what would have been apparent to a skilled man at the relevant time.  I think that his tendency to adopt false positions and then not resile was part of the quality of some of his evidence.  I do not think that Professor Ridgway’s evidence had that quality.  I should, however, add that a large amount of Professor Smith’s evidence had real value, and I am quite satisfied that he was trying his utmost to assist me.

43.	I therefore prefer Professor Ridgway’s evidence on this point to Professor Smith’s where they conflict.  I can start from their common view that the focus of attention of chuck design was at the other end of the chuck.  Professor Ridgway said that one could look at the other end, but at the time a skilled person would be unlikely to do that because of preconceived ideas that rigidity needed to be maintained there.  Professor Smith acknowledged the perception that rigidity was important, and I find that it was highly important.  Because of that, I find that it would (as Professor Ridgway said) have been thought to be counter-intuitive to compromise that rigidity.   That reflects a conservative prejudice of the kind which Jacob LJ held the skilled man to share in Rockwater.  To overcome that counter-intuition would require an inventive step beyond the skilled man’s attributes.  This conclusion is strengthened by the fact that attention was focused at the other end of the clamp sleeve.  Again, it would have taken an act of imagination beyond the skilled man’s abilities to bring his focus to the flange end of the chuck.  Although Professor Smith expressed the strongly held view that making undercuts like the groove in order to weaken a joint was a very frequent occurrence in engineering, and well known to the meanest apprentice, he was unable to give any concrete or actual examples from his vast experience of where it had been actually been done in practice.  Accordingly it was impossible to judge the strength or significance of this piece of his evidence, and I am unable to give it a lot of weight.  In any event, even if it had been done before and in other circumstances for the purpose described by Professor Smith it does not follow that it would occur to the skilled man to do it to a chuck of the Nikken kind for the purposes of the Nikken groove.  All in all, I prefer Professor Ridgway’s reasoning, from which reasoning he concluded, as do I, that the cutting of the Nikken groove was not obvious.

44.	In reaching this conclusion as to obviousness, and as to the quality of Professor Smith’s evidence, I do not ignore the supporting material deployed by him and by Pioneer in support of the submission of obviousness.  This supporting material was as follows:

a)	A US patent filed in 1967 by Sykes – the “Sykes” chuck.  This was a chuck with a chuck sleeve, a clamp sleeve and rollers, but unlike the Nikken chuck the outer circumference of the chuck sleeve was not a continuous round surface but was sloped to form 3 cam slopes.  The rollers bore on those cam slopes.  The purpose of this invention was to provide a centralised gripping of the chuck at the local points of the rollers, not gripping along the whole length and around the whole circumference of the tool.  A close study of the drawings of the patent reveals that there is a groove at the base of the chuck sleeve.  The wording of the patent makes no reference whatsoever to the groove, though, as Professor Smith (who relied on this patent in support of his arguments as to obviousness) observes, the groove is used to seat the roller cage when the clamp sleeve is wound up to the flange.   In his report Professor Smith said the absence of any reference to the groove means that Sykes did not think it was worth mentioning because its purpose (to introduce weakness to facilitate grip) would have been obvious to any skilled person.  I do not think that that is a fair reading of this patent.  The groove is clearly there to house the roller cage.  The question is whether it can be inferred that it is there for the additional purpose suggested by Professor Smith.  I do not think it can.  The expressed purpose of the patent was to deflect the chuck sleeve “locally inwardly along the positions of the rollers to grip the tool in an accurately centralised manner”.   The position of the rollers is shown in the drawings.  There are 6 in all.  Three are arranged equidistantly around the circumference of the chuck sleeve towards the tool end; there is then a short gap and three more are arranged lower down but a short distance from the flange end.  If the purpose was to apply deflection “locally” then it cannot be inferred that Sykes was seeking to get more elastic deformation at the root of the clamp sleeve.  I think that what the skilled man would take from the Sykes drawings would be the method of producing deflection but not more.  Professor Smith’s view of this patent, and what he said about its effect in this respect, was to some extent coloured by his knowledge of what the Nikken patent was trying to achieve with its groove, as he himself was inclined to admit.

b)	Daishowa 1.  I have described this above.  There is a groove, but, as in Sykes, its purpose is not described.  Its ostensible purpose, taken from the drawings, is to seat a seal.  I do not think that its presence in this drawing demonstrates that the Nikken invention was obvious.

c)	“Daishowa 2”.  This is another European patent of which Daishowa Seiki Co Ltd is the patentee, and is yet another chuck of the same sort of style as the Nikken chuck.  The details of the invention do not matter.  Its priority date is 26th September 1997, which is some months after the priority date of the Nikken patent (24th February 1997) and some months after the launch of the Nikken chuck (spring 1997) which embodies its alleged invention.  The drawings of the chuck show a groove at the base of the chuck sleeve, in the same position as the Nikken groove, albeit differently shaped (it has an assymetrically curved profile).  At one point in the “Description of the preferred embodiment” in the patent the document describes the presence of this feature as being “a groove form cut-out for good resilient deformation”.  This feature is not (contrary to a suggestion put to Professor Smith by Mr Baldwin) part of the invention.  It is a feature of the preferred embodiment in question.  Professor Smith relies on this in support of his case that the inclusion of a groove for this purpose was obvious and not inventive, as at the date of the Nikken patent.  The dates which I have mentioned raise a serious question-mark about this. By the time of the Daishowa 2 priority date, the features of the new Nikken chuck were available to the competition because it was being marketed.  Professor Ridgway said in a supplementary report that in the industry it was common to look at the novel features of a competitor’s products.  That is not surprising.  His assertion was not challenged in cross-examination and for all we know that is where Daishowa got the idea from.  Of course, it may not, but it makes this very weak evidence in support of a case of obviousness.  

45.	All in all, therefore, I do not think that this material gives much support to a case of obviousness.  I do not consider that it adds sufficient weight to the views of Professor Smith to lead me to prefer his views to Professor Ridgway’s.

46.	There is one more piece of evidence which was deployed by Pioneer in support of their obviousness case.  They produced a witness called Mr Kim.  Mr Kim worked for Nikken in Korea between 1988 and 2000.  In that year he left and went to work for another toolmaker, and shortly before he gave evidence he became employed by Pioneer.  He acquired a degree in mechanical engineering from Yuhan University, and has been a mechanical engineer for his entire working life.  He accepted in cross-examination that he was a creative and imaginative designer.

47.	In 1996 it occurred to Mr Kim that the predecessor of the Nikken chuck which is the subject of this action, known as type B, had certain problems.  He told me that he identified those problems as being, or including, a restriction on the collapsing capability of the chuck sleeve close to the flange.  In the summer of 1996 it occurred to him that Nikken should cut a groove in the flange where it touches the chuck sleeve to improve the clamping power.  He drew a sketch for his then superior, Mr Jeon (who died 3 or 4 years ago).  The sketch has been lost but he produced what he said was as faithful a reproduction as he could achieve, for the purposes of this action.  Mr Jeon told him that it was not worth thinking about that, and Mr Kim understood that Nikken Japan would not be interested in ideas emanating from Nikken Korea.  About a year later he saw the Nikken chuck with the groove, and remarked to Mr Jeon that it was the idea he had suggested a year previously.  Mr Jeon gave no reply to this.  He did not think that people found the idea of the groove novel or surprising; and he himself did not regard his idea as particularly clever or novel.  Pioneer says that all this shows that the idea was obvious.

48.	In cross-examination it was suggested to Mr Kim that he was fabricating his story, and he was doing to in order to help his new employer (Pioneer).  However, in his final speech Mr Baldwin did not go so far as to repeat that suggestion.  While he did not positively accept Mr Kim’s evidence, he did not actively pursue the question of fabrication.  I think he was right to adopt that course.  I am prepared to find that Mr Kim did have the idea of the groove and that he mentioned it to Mr Jeon, who dismissed it as alleged.  However, I do not find that that means that the idea was obvious.  Mr Kim was not just a skilled man.  He was a very experienced man by this time, as his qualifications and length in the industry testify.  Furthermore, he viewed himself as being more than the familiar skilled man.   It was put to him that he was a “creative and imaginative designer”, and he accepted that in terms (with an appropriate indication of modesty).  That disqualifies his ideas as being necessarily obvious.  Furthermore, this particular idea was not adopted by his company; if it was obvious, one might have thought that it would be have been.  Accordingly I do not think that this evidence is of any weight in establishing obviousness.

49.	Last, Pioneer rely on the fact that Mr Kiriyama of Pioneer himself came up with the idea and conveyed it to Mr Mikado of Nikken Japan.  This area of fact falls to be considered in relation to the separate head of prior disclosure, and I will deal with it shortly.   As will appear when I do, I am not satisfied that this disclosure occurred or that Mr Kiriyama did indeed come up with the idea himself.  Accordingly this piece of objective evidence designed to support obviousness is not established on the evidence.

50.	It follows, therefore, that had it been necessary to do so I would have found that the attack based on obviousness fails.

Lack of novelty and prior disclosure

51.	Pioneer led a case which said that the Nikken groove was deprived of novelty by reason of prior disclosure by Mr Yoshi Kiriyama of Pioneer to Mr Mikado.  Mr Kiriyama is the founder and president of Pioneer.  He has in the past also worked for Nikken, but not since 1973.  He is clearly very experienced in the drilling chuck industry, and claims that during his time at Nikken he would make suggestions for product improvements to Mr Matsumoto, now the President of Nikken and who claims (in a witness statement served under the Civil Evidence Act and which has not been tested in cross-examination) to have made the invention of the groove in the Nikken chuck.  In his principal witness statement, prepared for these proceedings but incorporating by reference some material from an earlier witness statement prepared for an interim hearing, he explains how up to 1996 Nikken had been supplying a particular chuck (which he designated, for the purposes of these proceedings, type A).  This had a rubber stopper ring in or on the flange against which the clamp sleeve abutted.  Then in 1996 Nikken stopped supplying that type and instead supplied a shorter type with no ring and in which the clamp sleeve abutted against the face of the flange when it was tightened up.  He did not think that design was satisfactory and refused to sell it.  One day Mr Mikado, Nikken’s technical director, rang him and demanded to know why Pioneer was not selling type B.  Mr Kiriyama told him that he thought it would not work.  Mr Mikado “demanded” (Mr Kiriyama’s word) that he (Mr Kiriyama) visit him and explain why he thought it would not work and why he refused to sell it.   Mr Kiryama duly did so in August or September 1996 (a journey of some 150km), met Mr Mikado and had a discussion in which he told him two things.  The first thing he told him was that Nikken’s claim to be able to claim to clamp the shank of the tool for for its entire length was impossible unless a groove was cut into the flange at the base of the clamp sleeve.  The second was that unless the faces of the clamp sleeve and the flange were truly parallel when they met (which would have to be achieved by grinding) then accuracy of drilling would be impossible.  He illustrated what he was doing by sketches which he did at the time and which he gave to Mr Mikado, and he has recreated those sketches (as best he can) for the purposes of this action.  The events at this meeting are relied on as being prior disclosure. 

52.	For its part Nikken completely repudiates this story.  Mr Mikado was called to give evidence, and he denied that there was any contact in which he required an explanation of why Mr Kiriyama was not selling type B, denied the meeting relied on by Mr Kiriyama and denied the disclosure by Mr Kiriyama.  He confirmed that Mr Matsumoto sketched a drawing of the groove and gave it to an engineer to implement.  In essence, he denied the whole of the meeting with Mr Kiriyama.  Mr Matsumoto’s written evidence identified him (Mr Matsumoto) as the inventor of the groove within Nikken; he had the idea and gave it to his engineers to implement.

53.	In determining this point I have to bear in mind how the witnesses gave their evidence, the probabilities and the supporting or corroborative material (or lack of it, where that lack is relevant).  As to the first, this was of some, but only limited, assistance to me.  Mr Mikado gave his evidence entirely through an interpreter (and I pause here to pay tribute to the interpreter, whose assistance was of the highest quality).  Mr Kiriyama gave his with some assistance from the interpreter, but was able to cope with some of it without that assistance, and he was obviously more at home in a Western milieu than Mr Mikado. In those circumstances it was not always easy to gain the assistance that might otherwise have been available from demeanour and the manner in which questions were answered (particularly in comparative terms).   However, I find that to an extent Mr Kiriyama seemed less comfortable than Mr Mikado, and I certainly find that he was less careful in some of his evidence (particularly in relation to some of the history of the Nikken chuck types).   

54.	As to the probabilities, I bear in mind what each side’s respective cases mean for the other.  If Mr Mikado is correct, and the meeting never took place, then it is hard to avoid the conclusion that Mr Kiriyama has deliberately fabricated his account.  It is not easy to see how he can be mistaken.   The same might be said about Mr Mikado’s evidence if Mr Kiriyama’s evidence were to be accepted.   It is not particularly plausible that he can merely have forgotten about it if it occurred.  In any event, I firmly bear in mind the additional burden that a party bears when asserting deliberate fabrication over mere forgetfulness (or embarrassment).  

55.	Mr Kiriyama puts forward a positive story.  If it were correct one would expect some supporting evidence.  His version of events (or at least one version) involves him returning some type B chucks that he says were unsatisfactory.   One would have expected some corroborative documentary records of that had it occurred, yet there is very little.  There is an order for chucks by Pioneer in October 1995, an invoice by Nikken in August 1996 (though under a different product code demonstrating chucks of a different length),  and a credit note issued in March 1997.  But there is no contemporaneous evidence of delivery or return showing their dates (or indeed anything else) or any other contemporaneous record of the events relied on by Mr Kiriyama, which is surprising.  Although the main participants had diaries which record appointments, none has recorded this meeting.  The drawings which Mr Kiriyama says he made are not available; and the alleged dealings between the parties are not recorded in any letter, fax or other form of written communication.  This lack of contemporaneous documentation is understandable on Nikken’s version of events; it is less so on Pioneer’s.  There is one quasi-contemporaneous document which might be said to record a version of events consistent with Mr Kiriyama’s version of events, namely a fax of 30th July 1997, but it is not, in my view, particularly strong.  I shall deal with it in the course of my findings below.

56.	On this issue I find that the meeting did not happen and I do not accept Mr Kiriyama’s version of events.  In addition to such assistance as I could get from the manner in which he gave his evidence (as to which I have already made my remarks), I rely principally on the following matters.

57.	Mr Kiriyama’s version of events involved a certain amount of equivocation and inconsistency, and some elements which I do not find particularly plausible.  The equivocation and inconsistency arise out of the following facts and matters.

58.	In February 2004 Mr Kiriyama served a witness statement in opposition to a claim by Nikken for an interim injunction.  This ran to 95 paragraphs.  At paragraphs 65 to 68 he dealt with the meeting.  He describes there how in the summer of 1996 he received a new chuck (type B), and on examining it, and “after a discussion with Mr Mikado” (the contents of which are not specified) he decided its design was faulty and further decided to return the chucks to Nikken.  After the first return of chucks, Mr Mikado demanded to know why Pioneer would not sell the new milling chuck.  It is not specified how this “demand” was conveyed, but it is a reasonable inference from this witness statement that it was on the telephone.  Mr Kiriyama visited Nikken in August/September 1996 to speak to Mr Mikado and explain why.  He explained that the new design could not collapse the entire length of the tool chuck unless a groove was put at its base.  He also explained that it would be necessary to grind the lower surface of the clamp sleeve to make sure that its surface was truly parallel to the flange; otherwise it would bend the clamp sleeve slightly when it was fully tightened.  Mr Mikado laughed at both points and said that Mr Kiriyama knew  nothing about mechanical engineering.  This account has three contacts with Mr Mikado – the unparticularised discussion, the demand for a visit and the visit itself.

59.	In February 2004 Mr Kiriyama served a witness statement for the purposes of the trial.   Among other things it was expressed to be “further to paragraphs 65 to 71 of my first witness statement”.  At paragraph 12 he cross-referred to paragraph 66 of that first witness statement (without in terms confirming it) and gave the account of events which I have already set out in the introductory paragraph to this section of the judgment.  As soon as he saw the construction of type B chucks in summer 1996 he could see it would not and could not work for the reasons that he set out in his first statement.  He therefore refused to sell it and asked Nikken to supply the older (type A) chucks instead.  One day Mr Mikado telephoned him and demanded to know why he was not going to sell type B, and he was told it was because it would not work.  He “demanded” that Mr Mikado visit him, which he duly did.  He then goes on to describe the meeting he attended in greater detail, most of which I need not recount here.   At this point he recounts for the first time that he demonstrated what he thought the problems were by making drawings for Mr Mikado.  That bit of the story was missing from his first witness statement.  This account has just two contacts with Mr Mikado.

60.	These versions differ from each other.  The later version (which contains more detail than the first) contains no indication of a prior discussion with Mr Mikado before the rejection of the type B chucks.  The earlier version contains no evidence about doing drawings – an important feature of the story.  

61.	On 30th July 1997, Mr Kiriyama wrote a fax to Mr Kashiwakura, another Nikken employee.  It concerns the return of some chucks which are said to be “the same chuck I returned to Nikken last year”.  At the end of the fax he says:

“August last year when we received C32-85 [which is a chuck description], I had two questions.  Since they were not satisfactorily answered by Nikken, I had to return the delivery to Nik.”

This is more consistent with the earlier witness statement if the “two questions” are to be taken to be matters about which he claims to have spoken to Mr Mikado on receipt of the type B chucks prior to their alleged return.  Mr Kiriyama said in cross-examination that they related to those topics but he did not in terms, and as clearly as one might have expected, link those questions to the first alleged conversation with Mr Mikado.  This still leaves the content of that prior discussion very unclear.  

62.	Mr Kiriyama was cross-examined on these inconsistencies.  He was asked about the first discussion with Mr Mikado, but he did not say it took place on the telephone.  Indeed, in response to this line of questioning he said that the only discussion he had with Mr Mikado was at the meeting.   Despite being given the opportunity to do so, he never seemed to be able to justify or elaborate on his initial evidence of the earlier conversation with Mr Mikado, though at one point he briefly seemed to propound that version of events.  This failure makes it harder to treat the fax as somehow corroborative of his version of events, and the inconsistencies overall damage it.  It should be noted that the fax does not mention the fact that Mr Kiriyama provided his own answer to the question of how to achieve the “collapse” of the end of the chuck sleeve, though I attach little weight to that because it might not have been a natural thing to add to the end of this fax (assuming that it had happened at all).

63.	The thrust of Mr Kiriyama’s evidence in his first witness statement was that it was the return of the type B chucks that prompted Mr Mikado to demand that he went to see him.  The documentary evidence of what chucks were returned and when is surprisingly thin.   The evidence shows 20 chucks ordered on 17th October 1995, invoiced on 2nd August 1996 and a credit note issued on 18th March 1997.  The delay between ordering and invoicing was apparently because of a dispute about prices (that seems to be common ground).  The credit note does not specify the date of return.  Another order was placed on 16th September 1996, invoiced on 21st December and a credit note issed on 18th March 1997.  Again, the date of return is not apparent, though this sequence may be of less significance since it is unlikely that this order can have been the subject of a return which induced Mr Mikado’s response since the order is probably too late. Last under this head, Nikken documents show one chuck invoiced on 5th November 1996 with a credit note of 3rd December 1996.  This is probably a piece used for an exhibition and then returned.   Nikken’s records do not show that any chucks were returned because of any design deficiencies – I was told that Mr Mikado had looked at the relevant records where that issue would have been recorded if Mr Kiriyama had made his complaint, and could vouch for their silence on the topic.   Apart from the July 1997 fax to which I have referred, Pioneer have no documents bearing on the topic at all – no notes, no diary entries and, perhaps more significantly, no stock records.  Mr Kiriyama told me that his company had computer records which recorded stock, and that the returns that he referred to ought to have appeared in those records.  None were produced to me, and Mr Kiriyama told me that none could be found.  This absence of any reliable contemporaneous records, when taken with the equivocation of Mr Kiriyama’s evidence on the point, seriously damages this part of Mr Kiriyama’s evidence.  There is some evidence which tends to suggest that the returns which are apparently documented by the credit notes were because the chucks were not of the right length, but that cannot be said to be clear.

64.	Next there is Mr Kiriyama’s evidence that Mr Mikado “demanded” that he attend to explain why he had returned chucks or was refusing to sell them.   This evidence is prima facie surprising.  First, it is not clear why the matter was not explained on the telephone, particularly if there was an initial conversation as set out in Mr Kiriyama’s first witness statement.  Next, on any footing it is surprising that Mr Mikado would have “demanded” his attendance.  Pioneer was a major customer of Nikken.  It is prima facie unlikely that a supplier would adopt such a high handed manner when addressing a customer’s concerns.  That is what would have struck me without any evidence on the topic.  In fact Mr Mikado confirmed it – he said that Japanese business culture, and Nikken’s, would have led to any such problem being dealt with respectfully and with an invitation rather than a demand.  I accept that evidence.   This finding undermines Mr Kiriyama’s version of events.  He was invited to accept that Mr Mikado would not make demands in that situation, but did not accept that.   It is therefore quite clear that he deliberately used the word “demanded” and it was not due to a failure to express himself clearly in English, or any error in translation or nuance.  

65.	In 2002 Pioneer were selling in the US a chuck made by Doo Sung which had a groove like the Nikken groove.  Nikken complained about the infringement of its US patent relating to the present invention.  Mr Kiriyama’s response was to stop the sales, withdraw the product and throw existing stock away.   He made no attempt to assert that he had had the idea himself or to make any reference to it at all.  On its face this is inconsistent with his story about the meeting.  He sought to explain his conduct in this respect by saying that it did not occur to him that he might be said to be the inventor, and he did not realise the significance of the point until he instructed English solicitors in relation to the present claim.  That is, I suppose, plausible, and it is an explanation, but it is still somewhat odd that no reference was made to the events of the meeting at all.  In addition, the manner in which Mr Kiriyama dealt with this in cross-examination did not lead me to have a lot of confidence in his explanation.  This is yet another pointer away from Mr Kiriyama’s version of events.  

66.	All these factors lead me to the conclusion that Mr Kiriyama has not satisfied me that the meeting between him and Mr Mikado, relied on as a prior disclosure, took place.   Other factors were relied on, and they contribute but they are of lesser weight.  Taking it all into account, and taking into account the matters said to point the other way as urged on me by Mr Purvis, I find against Pioneer on this point.  

Claim 8

67.	The last issue in the case is the validity of claim 8 of the patent.  The invention in claim 8 involves the introduction of a flexible O-ring into the groove so that it abuts a retainer ring – I have described it in general terms above.  The precise terms of claim 8 are as follows:

“A chuck according to any one of Claims 1 to 7, wherein an elastically deformable O-ring is fitted into the groove formed in the end surface of the said flange opposite said shank portion; and a retainer ring made of an elastic metal is provided at the flange-side end portion of the said clamp sleeve in such a manner that the outer circumferential edge of the said retainer ring is fixed to the inner circumferential portion of the flange-side end portion of the said clamp sleeve, while the flange-side end of a roller retaining sleeve that retains said needle rollers is supported by the inner circumferential portion of the said retainer ring, wherein when said O-ring is compressed through rotation of the said clamp sleeve, said O-ring is pressed against the bottom of said groove and said retainer ring.”

The summary of the invention contains this explanation:

“In  this case, since vibrations, such as chatter, generated in a tool during cutting operation can be absorbed by the O-ring, the cutting operation can be performed accurately.  Further, dust and cutting fluid used for cutting operation [sic] are reliably prevented from entering the needle–roller section through the clearance between the flange and the clamp sleeve.  Further, dust and cutting fluid used for cutting operation are reliably prevented from entering the flange groove.”

68.	Pioneer’s case is that this alleged invention contains no inventive step and was in fact obvious.  If one looks at Daishowa, one can see a seal there.  It is not an O-ring but a flat seal, but it would be obvious to replace it with an O-ring; and the concept of using O-rings to seal and damp was sufficiently well known in 1997 for the idea to be apparent to the skilled man in any event.  While the seal in Daishowa 1 does not engage with the retainer ring which it is common ground is present in Daishowa 1, that idea is not inventive – precisely where one puts an O-ring on the flange is a matter of design choice, not inventiveness.

69.	Professor Smith’s reports said that “rubberised” O-rings have been available for about 70 years, and are a well-established method of preventing undesirable ingress of debris between two or more regions.  The needle roller cage is an area which, he says, one would want to keep debris out of, and any competent tool designer would think of doing that by a rubberised seal between the flange and the bottom of the clamp sleeve.  O-rings are normally sited in grooves.  A more marginal benefit of such a seal would be some damping effect, but he questions the amount of damping which would be achieved.

70.	Professor Ridgway’s first report contained some generalised statements to the effect that the skilled man would not think to introduce a groove.  In his second report he amplified this.  He agreed that O-rings are frequently used in engineering to provide a seal against debris into the working parts of machinery.  However, he would not have thought that it would occur to the skilled man to add such a seal to a Nikken chuck with its groove, because the drawing of the first embodiment (which is the drawing contained in this judgment) showed that the clamp sleeve screwed right down to the face of the flange.  This created metal to metal contact which would be sufficient to exclude debris.  There was therefore no apparent need for an O-ring for sealing purposes, so the skilled man would not think to place one there.  He maintained that it would also have a useful damping effect.

71.	In his cross-examination Professor Ridgway accepted that the skilled man would be familiar with both methods of sealing between two metal components – metal to metal contact and introducing a seal like an O-ring.  The solution to be adopted would depend on one’s views as to the relative requirements of rigidity (promoted by metal to metal contact) and resilience (promoted by introducing a seal).  Introducing a rubberised seal could assist in damping vibrations.  Turning to chucks, it would be within the scope of the skilled man’s consideration to consider introducing a seal, to consider introducing it into the face of the flange (as opposed to the face of the clamp sleeve which moved towards the flange), and to consider whether to make it an O-ring (like Nikken’s) or flatter (like Daishowa’s in Daishowa 1).  He would have thought that the skilled man would put any seal in a groove which was sited between the flange/chuck sleeve join and the edge of the flange; he accepted that to put a seal in such a position was not “clever”, by which he meant not inventive.  Working from Daishowa 1, and taking that as a starting point, there would be nothing novel in replacing the flat (or largely flat) seal apparent in that design with an O-ring.  He saw it as a seal.

72.	In reliance on the evidence of the experts I find as follows:

a)	The introduction of an O-ring for the purpose of sealing against debris in relation to a high speed chuck would be something that would occur to the skilled man.  The thought process would not require an additional inventive thought capability (which, of course, he does not possess).  It would occur to him to want to keep debris from getting into the needle roller cage at the flange end.

b)	The skilled man might or might not want to do adopt that solution in any given situation.   If metal to metal contact is available then that might be an alternative.  Either idea would be within his capabilities.

c)	The skilled man would be looking at an O-ring solution as a seal, but he would also have in mind the idea that it could be used for damping.  Again, this additional point does not require an inventive step.

d)	It is usual (if not almost inevitable) that an O-ring would have to be housed in a groove.  

e)	In order to achieve these effects, the skilled man might put the ring anywhere on the flange.  Precisely where would depend on design choice, and it might depend on the factors affecting the performance of the chuck; but its position would not require any inventiveness.

f)	If he has already got a groove in at the base of the chuck sleeve, as in the Nikken chuck and as in Daishowa 1, then that would be an obvious place to house the O-ring.  

g)	If it were at the base of the chuck sleeve then it would be likely to engage with the bottom of the needle roller cage, or with whatever feature intervened between the bottom of that sleeve and the ring.  That would not adversely affect the sealing effect.  

h)	The retaining ring at the base of the roller sleeve is not put forward as inventive.  Accordingly, a combination of the abutting O-ring and the retaining ring is not inventive.

73.	Taking these matters into account, I find that there is nothing inventive about an O-ring in a groove at the base of the chuck sleeve, which presses against a retaining ring which retains the needle roller cage.  It is obvious.  It is even more so if one starts from Daishowa 1 where there is a groove and a seal.  The replacement of the (almost) flat seal by an O-ring would not be at all inventive, and if that were done then one has a chuck embodying claim 8 of the Nikken patent.  

74.	Accordingly I find claim 8 to be bad for obviousness or lack of novelty.

Conclusions

75.	Other issues in these proceedings have fallen away.  All other claims in the patent are dependent on one or other of the two claims that I have held to be invalid.  I therefore allow the counterclaim and revoke the patent.