Patents - Reactec Ltd v Curotec Team Ltd

By Kim Traynor - Own work, CC BY-SA 3.0,
https://commons.wikimedia.org/w/index.php?curid=22544850














Jane Lambert

Court of Session, Outer House (Lord Doherty) Reactec Ltd. v Curotec Team Ltd. [2020] CSOH 77, [2020] ScotCS CSOH_77

This was a patent infringement claim with a counterclaim for revocation of the patent on the ground of obviousness.  The proceedings took place before Lord Doherty in the Outer House of the Court of Session in Edinburgh.  For those unfamiliar with the Scottish court system, the Court of Session is the highest civil court in Scotland with original and appellate jurisdiction.  The first instance division is called the Outer House and the appellate division the Inner House (see "About the Court of Session" on the Scottish Courts and Tribunals website).  Rule 55.2 of the Court of Session Rules provides for patent cases in the Outer House to be heard by a designated intellectual property judge.

Patent in Suit
The patent in suit was European Patent (UK) No 1971262 (“the Patent”) entitled “Monitoring Apparatus for Monitoring Hand Held Tool”.
First page clipping of EP1971262 (A2)

"The present invention relates to hand held tool monitoring apparatus (10). The hand held tool monitoring apparatus (10) comprises a mount, which in use of the hand held tool monitoring apparatus forms part of a hand held tool (22), and a monitoring component (12) configured to be releasably attached to the mount. The monitoring component (12) comprises an operative part of the hand held tool monitoring apparatus (10) and the hand held tool monitoring apparatus further comprises a vibration sensor and a timer. The vibration sensor is operable to sense vibration of the hand held tool (22) and to provide a vibration signal in response to sensed vibration when the monitoring component is attached to the mount. The timer is operative in dependence on the vibration signal to record a duration of vibration of the hand held tool (22)."

Skilled Addressee
The parties agreed that the persons skilled in the art would be a team and that an electronics engineer would be one of its members but they could not agree whom the other should be.  Lord Doherty decided that he or she would be a mechanical engineer or physicist with knowledge of vibration monitoring.

Construction of the Claims
Lord Doherty directed himself at [45] that the claims should be interpreted in accordance with s.125 and s.130 of the Patents Act 1977, art 69 of the European Patent Convention and the Protocol on the Interpretation of Article 69 EPC. He noted that

"the court construes the Patent objectively, but adopting the mantle of the notional addressee to whom it is directed and in the light of the common general knowledge with which the addressee is assumed to be imbued (Terrell, supra, paragraph 9-181). Evidence is admissible to assist the court in reading it through the eyes of the notional person. This includes, in particular, evidence as to (i) the common general knowledge in the relevant art; (ii) the meaning of technical terms; and (iii) the technical consequences of what is described or of any putative construction. As the authors of Terrell note, the teaching of the specification, once construed, is a question of fact, as is what the skilled reader would do with that teaching. A distinction is to be drawn between construction - the meaning of the words used - and disclosure - what they would teach the reader. The latter is a question of fact in respect of which evidence is admissible (Terrell, supra, paragraphs 9-181 to 9-194)."

The Claims
The patent has 14 claims all of which are dependent on claim 1 and his lordship recited all of them in his judgment.   Claim 1 claims:

"Hand held tool monitoring apparatus (10) comprising:
a mount (24), which is configured to, in use of the hand held tool monitoring apparatus (10), form part of a hand held tool (22), and
a monitoring component (12) configured to be releasably attached to the mount (24), the monitoring component (12) comprising an operative part of the hand held tool monitoring apparatus (10),
the hand held tool monitoring apparatus (10) further comprising a vibration sensor (56) and
a timer, the vibration sensor (56) being operable to sense vibration of the hand held tool (22) and to provide a vibration signal in response to sensed vibration when the monitoring component (12) is attached to the mount (24),
characterised in that :
the mount (24) contains a passive Radio Frequency Identification (RFID) tag holding information relating to the hand held tool including information on vibration, and
the timer being operative in dependence on the vibration signal to record a duration of vibration of the hand held tool (22), and
wherein the monitoring component (12) further comprises an RFID interface (60) operable to actuate the RFID tag when the monitoring component is received in the mount (24) and to receive the information relating to the hand held tool (22) from the RFID tag."

The judge said at paragraph [48]:

"In relation to claim 1 there were issues as to the proper construction of the following terms: 'hand held tool monitoring apparatus'; 'information relating to the hand held tool including information on vibration'; 'the timer being operative in dependence on the vibration signal to record a duration of vibration of the hand held tool'; and 'an RFID interface operable to actuate the RFID tag. I shall discuss the contentious issues of construction of the Patent when I come to consider infringement."

Defender's Devices
In the very next paragraph, Lord Doherty described the defender's Curo Plus device comparing its features to integers in claim 1.  He did the same with the defender's Q2 device in paragraph [50].

Infringement
Between paragraphs [51] and [73] he considered whether the Curo Plus infringed the patent by reference to claim 1 and concluded that it did. Between paragraphs [74] and [82] he considered whether the device infringed any of the dependent claims and decided that it infringed claims 2, 4, 6, 7 and 9.  Between paragraphs [83] and [110] he considered whether the Q2 infringed claim 1 and he found that it did.  Between [111] and [128] he considered whether that device infringed any of the other claims of the patent and he held that it also infringed claims 2, 4, 6, 8 and 9.

Nobel’s Explosive Co Ltd v Anderson
Neither his lordship nor any of the counsel on either side referred to the Court of Appeal's decision in 
Nobel’s Explosive Co Ltd v Anderson (1894) 11 RPC 519.   Had they done so, they would have found the following passage from the judgment of Lord Esher MR:

"As to construction, he said: ‘Now what is the very first canon of construction of all written business documents? Why, that the Court ought to construe them the day after they were published. That is the first. Therefore in construing this patent, one has no right to do what Mr Moulton so often invited us to do, by considering what the Defendant has done. I adjure that altogether, and I say we are bound to construe the patent as if we had to construe it before the Defendant was born, if the patent was before that time."

This is one of the first principles of patent law I ever learnt.  In fact, it was drummed into me very sarcastically but unforgettably by that great judge, the late Sir Nicholas Pumfrey who died well before his time and for whom I have the utmost respect and affection.   Whether it would have made any difference, in this case, had Lord Doherty construed the claims first and then considered whether they had been infringed is impossible to say without detailed scrutiny.

Obviousness
The learned judge referred to s.72 (1) (a)s.1 (1) (b) and s.3 of the Patents Act 1977, paragraph [23] pf Lord Justice Jacob's judgment in Pozzoli Spa v BDMO SA and another : [2007] FSR 37, [2007] BusLR D117, [2007] EWCA Civ 588, [2007] Bus LR D117 and paragraph [60] of Lord Hodge's judgment in Actavis Group PTC EHF and others v ICOS Corporation and another [2019] Bus LR 1318, [2019] UKSC 15.

The first step of the Pozzoli/Windsurfing test is to notify the person skilled in the art.  At paragraph [133] of his judgment, Lord Doherty confirmed that the skilled addresses would be a physicist or mechanical engineer with knowledge and experience of vibration and an electronic engineer.

The next step is to identify the skilled addressees' common general knowledge.  The judge found it established by the evidence that the skilled team would know the relevant legislation, standards and HSF guidance as at the priority date but not necessarily afterwards. They would also have known about RFID and its applications including bar coding, magnetic swipe card technologies, identity verification, asset management and inventory control.

As for the next question, the inventive concept in his lordship's view was "(i) that the vibration monitor is releasably mounted on the tool; (ii) that a timer operates in dependence on the vibration
signal to record the duration of vibration; (iii) that the mount contains a passive RFID tag holding information relating to the tool, including information on vibration; and on being connected to the mount, the monitoring component actuates the RFID tag and reads the information,"

The third step of Pozzoli/Windsurfing is to 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.  It was at this stage that the judge mentioned the prior art for the first time, 
  • namely: a manual for the Bruel & Kjaer Type 2239B Sound Level Meter and Hand-Arm Vibration Meter (dated Dec 2001); 
  • a product data sheet for the same device' and 
  • British patent application GB2299169A for a British Gas vibration monitoring device.
It was agreed by the pursuer's experts that the differences between the British gas device and the claimed invention were "(i) the claimed monitoring component is releasably mounted on the tool, whereas the monitor in the British Gas patent is worn by the operator; and (ii) the mount described by the Patent contains a passive RFID tag which is read by the monitor when the latter is attached to the mount." This was not challenged by the defender's expert.  There was a dispute over the differences between the invention and the Bruel & Kjaer device.   The defender contended that the claimed invention records the duration of vibration in dependence of the vibration signal; and uses RFID to communicate information about the tool, including information about vibration.  The pursuer agreed with those differences but added several more of its only mainly relating to the meter and mount. The judge agreed with the pursuer.

Between paragraphs [150] and [188] the judge considered the fourth Pozzoli/Windsurfing question, namely whether those differences constituted steps which would have been obvious to the person skilled in the art or whether they required a degree of invention?” He concluded at [188] that none of those claims was obvious from the prior art and the skilled team's common general knowledge.

Judgment
At paragraph [189] of Reactec Ltd. v Curotec Team Ltd. [2020] ScotCS CSOH_77 (31 July 2020), Lord Doherty found that the patent was valid and that it had been infringed.

Further Information
Anyone wishing to discuss this article or patent law generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.

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