Patents - EnOcean GmbH v Far Eastern Manufacturing Ltd.

Jane Lambert

Intellectual Property Enterprise Court (Mr Nicholas Caddick KC) EnOcean GmbH v Far Eastern Manufacturing Ltd and another [2023] EWHC 2615 (IPEC) (24 Oct 2023)

This was an action for the infringement of claims 1 and 3 of European patent (UK) 1 611 663 B3 by the importation into, and marketing in, the UK of a product called the Quinetic Wireless Switch and a counterclaim for revocation on the grounds of anticipation and obviousness.   The action and counterclaim came on before Mr Nicholas Caddick KC sitting as a Deputy High Court Judge between 21 and 22 Sept 2023,  By his judgment dated 24 Oct 2023 Mr Caddick held that the patent was obvious over UK Patent No. GB 879,938 ("Harding"),  He dismissed the action and allowed the counterclaim in  EnOcean GmbH v Far Eastern Manufacturing Ltd and another [2023] EWHC 2615 (IPEC) (24 Oct 2023).

The Issues

The deputy judge noted at para [3] of his judgment that the defendants, Far Eastern Manufacturing Limited and TLC (Southern) Limited, did not dispute that the Quinetic Wireless Switch fell within claims 1 and 3 of the patent but they challenged the claims' validity.  The outcome of the litigation depended on the result of the counterclaim.

Revocation

The court may revoke a patent pursuant to s.72 (1) (a) of the Patents Act 1977 if the invention is not patentable.   The conditions for patentability are set out in s.1 (1) of the Act.  They include novelty and inventiveness.  S.2 (1) provides that an invention shall be taken to be new if it does not form part of the state of the art.  S.3 adds 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 s. 2 (2) above (and disregarding s. 2 (3) above).

The "state of the art" in the case of an invention us "taken 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 (see s.2 (2)).   It also includes:

"in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say—

(a)  that matter was contained in the application for that other patent both as filed and as published; and
(b)  the priority date of that matter is earlier than that of the invention."

Novelty

Mr Caddick noted at para [57] that the parties had agreed that a patent lacks novelty if a piece of prior art clearly and unambiguously discloses all the features of its claims and that such disclosure can be implicit as well as explicit as His Honour Judge Hacon noted at para [139] of his judgment in Edwards Lifesciences LLC v Boston Scientific Scimed, Inc. and others [2017] EWHC 405 (Pat) (3 March 2017).

Obviousness

The learned deputy judge also noted at [62] that there had been little debate as to the relevant legal principles on obviousness.  He directed himself as follows between paras [63] and [68] of his judgment::

"[63]  As appears from Actavis v ICOS [2019] UKSC 15, per Lord Hodge at [60], in deciding the issue of obviousness, the courts commonly adopt the so-called Windsurfing/Pozzoli four-step approach[4], namely: (1) identifying (a) the relevant skilled person and (b) the relevant common general knowledge, (2) identifying the inventive concept of the claim (or if that cannot readily be done, construing it), (3) identifying 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 and (4) asking whether, viewed without any knowledge of the alleged invention as claimed, those differences constitute steps which would have been obvious to the person skilled in the art or whether they would require any degree of invention.
[4] Guidance as to how the court should approach step (4) was provided by Kitchin LJ in MedImmune Ltd v Novartis Pharmaceuticals Ltd [2012] EWCA Civ 1234, at [89], [92] and [93] as follows:

'[89]. It is step (4) which is key and requires the court to consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. He is equipped with the common general knowledge; he is deemed to have read or listened to the prior disclosure properly and in that sense with interest; he has the prejudices, preferences and attitudes of those in the field; and he has no knowledge of the invention.
..............
[92] Moreover, whether a route is obvious to try is only one of many considerations which it may be appropriate for the court to take into account. In Generics (UK) Ltd v H Lundbeck [2008] EWCA Civ 311 …at [24] and in Conor [2008] UKHL 49 … at [42], Lord Hoffmann approved this statement of principle which I made at first instance in Lundbeck:

'The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.'

[93] Ultimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim. As Aldous LJ said in Norton Healthcare v Beecham Group Plc (unreported, 19 June 1997):

'Each case depends upon the invention and the surrounding facts. No formula can be substituted for the words of the statute. In every case the Court has to weigh up the evidence and decide whether the invention was obvious. This is the statutory task.'

[65] While the skilled person is deemed to read the prior art with care and interest, he or she does not have any expectation in advance of doing so that the prior art will be useful, either generally or for something specific. As Laddie J explained in Inhale v Quadrant [2002] RPC 21 at [47]:

'… The notional skilled person is assumed to be interested in the field of technology covered by the patent in suit, but he is not assumed to know or suspect in advance of reading it that any particular piece of prior art has the answer to a problem that he faces or is relevant to it. He comes to the prior art without any preconceptions and, in particular, without any expectation that it offers him a solution to any problem he has in mind. Some pieces of prior art will be much more interesting than others. A document directed at solving the particular problem at issue will be seized upon by the skilled addressee. Its very contents may suggest that it is a worthwhile starting point for further development. But the same may not be the case where a document comes, say, from a distant and unrelated field. For example, in theory a notional skilled person engaged in trying to improve the operation of an internal combustion engine is assumed to know, have read and assimilated the contents of all published material including those, say, in the baking field. It may be that a document in the latter field discloses something which, if applied to the internal combustion art, would produce a marked improvement in performance. However, the person skilled in the art is not deemed to read the baking document in the knowledge, or even with a suspicion, that it is of significance to the problems he has to deal with. It may be that it is written in such a way that, although he understands it, the skilled person will dismiss it as irrelevant to his work. The more distant a prior art document is from the field of technology covered by the patent, the greater the chance that an intelligent but uninventive person skilled in the art will fail to make the jump to the solution found by the patentee.'

[66] In relation to this passage from Inhale, Floyd LJ in E Mishan & Sons v Hozelock [2020] EWCA Civ 871, at [90], commented that:

'It is important to understand what Laddie J. meant by a 'problem he has in mind' and 'an answer to a problem he faces'. If the art is facing a particular unsolved problem, then a reading of a prior document from a wholly different field which suggests a specific solution to that problem may indeed cause the skilled person to seize on it. But the same is not true merely because the remote document discusses a design consideration which is also a design consideration for his own field. The skilled person may have common general knowledge ways of satisfying the design consideration in his field, so that achieving it is no longer a problem that he faces.'

[67] Mr Conway referred me to other parts of Hozelock including at [91]-[94] where Floyd LJ noted that there could be less force in an obviousness argument where the prior art in question is old and/or unimplemented and/or a mere paper proposal and at [95]-[98] where Floyd LJ warned against the danger of hindsight in determining the issue of obviousness, particularly in the case of what might appear to be a simple invention.
[68] Finally, the issue of the skilled person's motivation to implement the disclosure from the prior art so as to take the steps needed to arrive at the invention is clearly an important one. However, as noted by Daniel Alexander QC in Meter-Tech v British Gas [2016] EWHC 2278 (Pat) at [325], in some cases it can be dangerous to make too much of the issue of motivation. As Mr Alexander pointed out, applying a prior art disclosure so as to make a product can be obvious even though the skilled person would have had no motivation to take that step and he gave the example of a 100cm dining plate. Ultimately, as Mr Alexander QC pointed out at [326], the question is whether the step involved is technically obvious or whether it is inventive and the court should not become side tracked by issues of whether the step would actually have been taken in view of commercial or regulatory reasons."

The Patent

The patent had been granted for an "Electromagnetic energy converter",  That was described at para [16] of the judgment as "an electromagnetic energy converter comprising at least one permanent magnet, a moving element, an electrical coil surrounding at least part of the permanent magnet or the moving element, and the use of such an electromagnetic energy converter in radio switches and radio sensors."  The problems that the invention was intended to address were that power sources such as batteries often greatly exceed the size of the electronic circuit, thereby negating the space and weight advantages gained from miniaturization and require frequent maintenance.  The object of the invention was to provide an electromagnetic converter that does not suffer from those disadvantages.

Claim 1 broken down into agreed integers was as follows:

"1.1: The use of an electromagnetic energy converter, wherein the electromagnetic energy converter comprising at least
1.2: one permanent magnet and
1.3: a moving element,
1.4: wherein an electrical coil surrounds at least a part of the permanent magnet or the moving element,
1.5: wherein any movement of the moving element from a first rest position or from a second rest position leads to opening or closing of a magnetic circuit which is formed by the permanent magnet and the moving element,
1.6: and the moving element is held in the first or the second rest position by magnetic latching forces,
1.7: wherein the moving element is provided with a dead-center mechanism, which results in rapid opening or closing of the magnetic circuit as soon as a predetermined force acting on the moving element is exceeded,
1.8: wherein an autonomous-power switch, for example a radio switch or a signal transmitter, is supplied with electrical power by the electromagnetic converter,
1.9: and the electrical power is stored in a capacitor."

Claim 3 claimed:

"Use of an electromagnetic energy converter according to either of the preceding patent claims, wherein a spring element makes the second rest position unstable, so that the moving element returns to the first rest position after a movement to the second rest position."

In relation to those claims, there were differences between the parties over how the skilled person would construe the words "an autonomous-power switch" in integer 1.8 and "a spring element" in claim 3.

Construction

The parties agreed that Mr Justice Meade had set out the correct approach to claim construction in para [91] of his judgment in Add2 Research And Development Ltd v dSPACE Digital Signal Processing & Control Engineering GmbH and another [2021]  EWHC 1630 (Pat) by referring to the judgment of Lord Justice Floyd in Saab Seaeye Limited v Atlas Elektronik [2017] EWCA Civ 2175 at paras [18] and [19]:

"[18] There was no dispute about the principles which apply to the construction of patent claims. Both parties relied, as did the judge, on the summary in this court's judgment in Virgin Atlantic v Premium Aircraft [2010] RPC 8 at [5]:

'(i) The first overarching principle is that contained in Article 69 of the European Patent Convention.
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively – the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone – the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol – a mere guideline – is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(ix) It further follows that there is no general 'doctrine of equivalents.'
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.'

[19] Sub-paragraph (ix) must now be read in the light of the Supreme Court's judgment in Actavis v Lilly [2017] UKSC 48, which explains that, at least when considering the scope of protection, there is now a second question, to be asked after the patent claim has been interpreted, which is designed to take account of equivalents. There was some reference in the written arguments to the impact of that decision on the present case. In the end, however, Mr Mellor disclaimed any reliance on any doctrine of equivalence for the purposes of supporting an expansive scope of claim in the context of invalidity. That issue will therefore have to await a case in which we are called upon to decide it."

Mr Caddick noted that Mr Justice Meade has added at para [92] of his judgment:

"Principle (v) is important in the present case. Counsel for the Defendants submitted that given that there is only one preferred embodiment, it was more likely than if there had been multiple embodiments that the patentee had chosen claim terms to correspond to the preferred embodiment, rather than to have a more general meaning. I do not accept this. Even where there is only one preferred embodiment the patentee is likely to have had a generalised concept in mind, and it is necessary to work out from the language whether that is so, and what the concept is. Multiple preferred embodiments may, by their consistency, give further clues as to what the claims were intended to mean, but general claim language cannot be restricted to the preferred embodiment just because there is only one."

The deputy judge discussed the meaning of "an autonomous-power switch" in integer 1.8 between [36] and [42] and that of "a spring element" in claim 3 between [43] and [49].

Prior Art

The defendants relied on two items of prior art, namely:

• Harding; and 
• European Patent Application EP 0 836 166 A1 ("Goiran").

Mr Caddick discussed Harding between paras [51] and [56] and Golran between [79] and [89].

Anticipation

The deputy judge rejected the contention that Harding had anticipated the invention, He said at para [6-]:

"a device made according to Harding, taken as a whole, is not a switch. The device as a whole does not operate to turn the flow of power down an existing conducting path on or off. Rather, it operates to generate power. In effect, what Harding discloses is an electrical generator (one that could provide a source of power for a device such as a dosimeter), it does not disclose an electromagnetic converter wherein an autonomous power switch is supplied with power by the converter. As Mr Conway argued, if a device (such as that in Harding) which generates electricity upon the pushing of the button could of itself be said to constitute an autonomous-power switch, then integer 1.8 would appear to be otiose."

He also rejected at para [91] the contention that magnetic forces operating in the way described in Goiran amounted to a disclosure of a "spring element" within the meaning of claim 3.

Inventive Step

The first step of the Windsurfing/Pozzoli analysis was to identify the skilled addressee.  Mr Caddick said  in para [7]:

"A patent is directed at the skilled person and issues of construction and obviousness are addressed through the eyes of the skilled person. The skilled person is a notional person (or, in some cases, a team of notional persons) with a practical interest in the subject matter of the invention and with practical knowledge and experience of the kind of area in which the invention is to be used. Whilst the skilled person is a notional person, the skills attributed to such person must be those that real life people skilled in the relevant art would in fact have had as at the priority date which, here, is 7 April 2003."

The parties agreed that the skilled person would be an electronic engineer with some experience in the design of similar low-power electronic devices. He or she would probably hold a master's degree in electrical/electronic engineering and have a few years of experience in designing small electronic devices within industry. He or she would be familiar with concepts of circuit design and electromagnetics but would be unlikely to have had any direct experience of designing energy-harvesting devices.

The skilled addressees' common general knowledge was largely agreed (see paras  Anyoone  [12] to [14] ). There were however two points of disagreement the first of which the learned deputy judge considered later in his judgment.  The second was conceded by the defendants' expert.

The parties did not disagree that the inventive concept was the use of the electrical energy generated by an electromagnetic energy converter for powering an energy-autonomous switch such as a radio switch. The dispute was whether, the step from Harding to that concept would have been obvious to the skilled person or whether it would have required an inventive step.

The claimant argued that it would not because Harding was almost 50 years old and the only use of the generator suggested in the specification was in relation to dosimeters of which the skilled person would know nothing,

The learned deputy judge rejected that argument between paras [71]  and [78] and held that claims 1 and 3 were obvious over Harding,   He carried out the same exercise with regard to Gorian between [92] and [105] and concluded that those claims were not obvious over Gorian,

Comment

Mr Caddick's judgment contains useful reviews of the cases on novelty, obviousness and claim construction. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form,