Patents - Adolf Nissen Elektrobau GmbH & Co KG v Horizont Group GmbH

Author: Nigel Cox
Licence CC BY-SA 2.0
Source  Wikipedia M1 Motorway

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Adolf Nissen Elektrobau GmbH &Co KG v Horizont Group GmbH [2019] EWHC 3522 (IPEC) (18 Dec 2019)

This was a claim for revocation on grounds of obviousness of UK patent number GB2410366 Mobile for a warning device for road traffic. The patentee was the Horizont Group GmbH which is a private company incorporated with limited liability in Germany. The party seeking revocation was Adolf Nissen Elektrobau GmbH & Co KG, a German limited partnership with a limited company as the general partner.  The parties compete in the business of electric road traffic signs.  The action came on before His Honour Judge Hacon on 5 and 6 Nov 2019.  He delivered judgment in Adolf Nissen Elektrobau GmbH & Co KG v Horizont Group GmbH [2019] EWHC 3522 on 18 Dec 2019.

The Invention

The patentee claimed the following monopoly:

"1. A mobile warning device for road traffic with a board to be mounted on a vehicle on which strobe lights and warning lights are arranged in a flat pattern and which can be switched on in groups so that they selectively form an illuminated pattern in the form of flashing directional arrows or, alternatively, warning crosses or similar patterns, characterized in that an illuminated warning cross can be optically produced in constant light that differs in colour from the flashing directional arrows.
..................................
4. A mobile warning device according to Claim 3, characterized in that an additional spotlight is placed next to each end point of the cross, whereby those four additional spotlights, upon activation of the warning cross that shines in red, emit in pairs a red flashing light, achieved by activating both lamps to the left of the warning cross and both lamps to the right of the warning cross in sequence.
5. A mobile warning device according to Claim 4, characterized in that the additional spotlights allocated to the upper end points of the cross are individually attached to the upper edge of the board, outside the board surface.
6. A mobile warning device according to any one of preceding Claims, characterized in that the warning lights include lights for the emission of both constant light and flashing light configured as LED spotlights with separate LED arrays for permanent light and flashing light respectively."

The Law

S.72 (1) of the Patents Act 1977 provides:

"Subject to the following provisions of this Act, the court or the comptroller may by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say -
(a) the invention is not a patentable invention ......."

S.1 (1) (b) requires a patentable invention to involve an "inventive step".  S.3 explains that:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2 (2) above (and disregarding section 2 (3) above)."

"The state of the art in the case of an invention" shall is to comprise "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way" by virtue of s.2 (2).

In Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd. [1985] RPC 59, [1985] FSR 59 the Court of Appeal held 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 known in the art before the application for the patent in suit.  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, 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.  To reach that result, the following steps should be taken:
(i) identify the inventive concept embodied in the patent;
(ii) impute to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
(iii) identify the differences if any between the matter cited and the alleged invention; and
(iv) decide whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

In Pozzoli SpA v BDMO SA and another [2007] BusLR D117, [2007] FSR 37, [2007] Bus LR D117, [2007] EWCA Civ 588, Lord Justice Jacob reformulated that 4-step test at paragraph [23]:

"(1) (a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

Identifying the Person skilled in the Art

At paragraph [4] of his judgment, Judge Hacon said:

"The invention claimed in the Patent would be of practical interest to a designer of mobile warning devices for road traffic. Such an individual would work for, or at least with, a manufacturer of those devices and will broadly know how they are made. He or she will also of necessity know how the devices are used since they must be designed to serve the market. The design and use of the devices is highly regulated and it was agreed that the skilled person would be familiar with the relevant regulations."

He added that as this was a UK patent, "the relevant regulations" would be British regulations.

Identifying the Relevant Common General Knowledge of the Skilled Addressee

There was little difference between the parties' experts on the common general knowledge of the skilled addressee.  Gary Knight gave evidence for the claimant and Hans Meseberg for the patentee.   The judge found as follows:

"[36] Mr Knight said that at around the filing date of the Patent in January 2004, LED lamps for signboards were being introduced in place of halogen lamps because the former were more reliable. His evidence was that the LEDs could be grouped within a spotlight, behind a lens. This was consistent with a brochure published by Horizont. It was a Swiss brochure, but the experts both treated it as if it were a sound guide to what was known in the UK in January 2004. The date March 2000 appeared on one page, which was taken to be its date of publication, almost 4 years before the Patent's filing date. The brochure referred to 'new' LED spotlights for use in traffic signs.
[37] Mr Knight said that by January 2004 there was talk of LED spotlights which could emit alternatively amber or red light, but he could not recall seeing one by that date.
[38] One way of creating a two-colour spotlight was by installing two sets of single colour LEDs within it. Mr Knight thought that because the idea of two-colour LED spotlights was known in January 2004, a designer of traffic signboards (which did not include him) would have known how to achieve that result as part of his common general knowledge.
[39]  Dr Meseberg gave evidence in cross-examination, in relation to one of the items of prior art, that it would have been technically easy in January 2004 to use LEDs of different colours within one spotlight. This is consistent with Mr Knight's expectation. I find that Mr Knight's expectation was correct. The concept of an LED spotlight which could emit alternative colours and a way to create it were part of the common general knowledge."

Identifying the Inventive Concept

The only issue in dispute in relation to the claims of the patent lay in the meaning of the term "mobile warning device".  The learned judge concluded at paragraph [21]:  

"I accept Mr Knight's evidence that the UK-based skilled person would not ever have used the term 'mobile warning sign'. I also accept that the word 'mobile' in this context would be taken to mean that the device is vehicle-mounted when in use, but the vehicle need not necessarily be in motion during use of the device."

He also found in the next paragraph that the conventional understanding of 'for' would apply to a 'mobile warning device for road traffic' and that the device must be suitable for directing road traffic.

The Relevant Prior Art

The claimant relied on:

"(1) German Utility Model No. DE 297 06 007 ('DE007') (all argument was conducted by reference to an agreed translation);
(2) United States Patent No. 6,590,502 ('Pederson'); and
(3) The advertisement, offer for sale and sale of the Nissen Fahrbare Vorwarntafeln mit LED-Wechselverkehrzeichen product No. 129-265 ('the Nissen Board')."

Identifying Differences between the Prior Art and the Inventive Concept

The judge considered, in turn, each of those items of prior art.

Between paragraphs [40] and [60] he considered the differences between DE007 and each of the claims of the patent in suit.  He held at paragraph [56] that claim 1 was obvious over DE007, at paragraph [57] that claim 4 was obvious over DE007, at paragraph [59] that claim 5 lacked an inventive step and at [60] that 6 lacked an inventive step.  Between paragraph [61] and [64] he considered the differences between Pederson and the claims and concluded that none of them lacked an inventive step over Pederson.  The claimant relied on the prior use of one of its own traffic warning devices. The defendant did not deny that the Nissen Board had been made available to the public before it applied for the patent in suit. The judge thought that the position with the Nissen Board was similar to that relating to DE007 and reached the same conclusion as to whether there had been an inventive step.  In view of his findings on DE007 and the Nissen Board, the patent was invalid and apt to be revoked.

Comment

Although Judge Hacon made no new law, his decision is worth reading for its textbook analysis of the issues and the application of the Windsurfing and Pozzoli principles.  Anyone wishing to discuss this article or patents, in general, is welcome to call me on 020 7404 5252 after the 6 Jan 2020.  Alternatively, I will answer any enquiries that may be made through my contact page.  As this will probably be my last case note of 2019 I wish all my clients, colleagues and readers a happy and prosperous New Year.