Patents - Technetix BV v Teleste Ltd
Patents Court (HH Judge Hacon) Technetix BV and another v Teleste Ltd  EWHC 3106 (Pat) (18 Nov 2019)
This was a claim for patent infringement and a counterclaim for revocation on grounds of anticipation, obviousness and added matter. There was also an application for unconditional and conditional amendments to the patent. The claim and counterclaim came on before His Honour Judge Hacon sitting as a judge of the Patents Court in Technetix BV and another v Teleste Ltd  EWHC 3106 (Pat) (18 Nov 2019). His Honour tried the action in May and delivered judgment on 18 Nov 2019. The learned judge held at paragraph  of his judgment that the patent was invalid on all three grounds .and refused the amendments though he found that the patent would have been infringed hand it been valid.
The patent in suit was European patent 1259074 for a communication system comprising means for preventing intermodulation products which had been granted to the Dutch company, Technetrix BV, with effect from 4 May 2002. That company granted an exclusive licence to Technetix Limited. The judge defined "intermodulation" as a form of signal disruption for cable programmes and broadband. The invention was the use of a filter to block low-frequency signals and thereby at least partially to prevent the generation of intermodulation products.
The Alleged Infringement
Technetrix BV and its British subsidiary alleged that Teleste Limited ("Teleste") infringed that patent indirectly by supplying components to Virgin Media. Those components were numbered GISX-100B, GIZ-101 and ASH4P. Teleste admitted that the first two of those components would infringe the patent as amended though not the third but contended that the patent was invalid and that the invalidity could not be cured by amendment.
S.1 (1) (a) of the Patents Act 1977 provides that a patent may be granted only for an invention that is new. S.2 (1) further provides that an invention shall be taken to be new if it does not form part of the state of the art. In Synthon BV v SmithKline Beecham plc  UKHL 59,  1 All ER 685,  RPC 10 Lord Hoffmann said at paragraph :
"If I may summarise the effect of these two well-known statements, the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing: "whether or not a person is working [an] … invention is an objective fact independent of what he knows or thinks about what he is doing": Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd  RPC 76, 90. It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so."
Teleste alleged that the claimants' invention lacked novelty over a Combination surge and diplex filter for CATV distribution systems that had been invented by Catherine Jelinek and others for which US patent number 5,390,337 ("337") had been granted. The judge broke the first claim of the patent in suit down into integers and considered whether they were disclosed by 337. The claimants had argued that there was no express reference to the prevention of intermodulation products in 337. They contended that a skilled addressee might see that a high-pass filter protects against line transients which could affect the amplifier's 'performance' but he or she would not make a connection with intermodulation products. The judge said at paragraph  that that did not matter because the partial prevention of intermodulation would happen whenever the invention in 337 was performed. For that reason, the claimants' patent lacked novelty.
S.1 (1) (b) of the 1977 Act provides that a patent may be granted only for an invention that involves an inventive step. 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. In Pozzoli Spa v BDMO SA and another  EWCA Civ 588,  FSR 37,  BusLR D117,  Bus LR D117, the Court of Appeal offered the following guidelines for determining obviousness:
"(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?"
Although he did not mention Pozzoli by name in his judgment, Judge Hacon appears to have applied the above methodology. He noted at paragraph  of his judgment that the parties had agreed that the skilled person would be a design engineer working in the R&D section of a company which makes products for broadband and cable TV networks or alternatively working for a network operator. Between paragraphs  and  he considered such persons' common general knowledge. He had already identified the inventive concept in claim 1 of the patent in suit and considered Catherine Jelinik's invention when determining novelty. Given his conclusion on novelty, it was inevitable that the patented invention would be obvious.
However, Teleste also contended that the invention was obvious over a paper entitled 'Introducing Intermodulation – Its Role in Cable Modems And Reverse Path Operation' which had been written by Martin Lee and Keith Mothersdale of Channel Corporation and read to a conference in New Orleans in 2000 and an article by one Buie in the May 1999 edition of Cablemaster magazine. The judge considered the Lee and Mothersdale paper between paragraphs  and  and Buie's article between paragraphs  and  and concluded that the invention was obvious over both publications.
The learned judge considered the proposed unconditional and conditional amendments and decided that they would not overcome the problem of obviousness.
S.72 (1) (d) of the Patents Act 1977 provides that a patent may be revoked if
"the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8 (3), 12 or 37 (4) above or as mentioned in section 15 (9) above, in the earlier application, as filed."
The judge addressed this provision in relation to the requested amendments. He found that the amended patent would be invalid as disclosing matter that extended beyond that disclosed in the application as filed.
Whether ASH40 would have infringed the Patent
The question whether component number ASH4P infringed the patent in suit turned on the single issue of whether the unit contained a high-pass filter as claimed in claim 1 of the amended patent and set out in paragraphs  and  of the judgment. At paragraph  the judge found that component contained such a filter and that the patent as amended would have been infringed.
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