Patents - Research And Development Ltd v dSPACE Digital Signal Processing & Control Engineering GMBH
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| Jane Lambert |
This was an action for the infringement of European Patent (UK) 1 163 622 B1 and counterclaim for revocation on grounds of obviousness and insufficiency. The action and counterclaim came on for trial before Mr Justice Meade between 18 and 21 and on 25 and 26 May 2021. His lordship delivered judgment on 17 June 2021 (see Add2 Research and Development Ltd v dSPACE Digital Signal Processing & Control Engineering GMBH and another [2021] EWHC 1630 (Pat) (17 June 2021)). By para [247] of his judgment, the learned judge held that all the claims were invalid for obviousness but had they been valid the patent would have been infringed.
The Patent
The title of the patent was "interface circuit". It is described as follows in the abstract:
"A signal interface circuit (10) having a terminal (14) for connection to a simulator system indicated schematically at (16), and a terminal (18) for connection to a system under test, indicated generally at (20). The simulator system may, for instance, be a PC based software simulation and the system under the test may, for instance, be an engine management system. The circuit (10) provides a reconfigurable interface between the systems (16, 20), allowing analogue or digital signals to pass in either direction, in accordance with the configuration of the circuit (10)."
The judge outlined the specification between para [75[ and para [88] of his judgment.
The Disputed Claims
The claimant alleged that the following claims were independently valid and infringed: 1, 10, 22A, 24 and 32. He set out the integers of claim 1 at para [89]:
(b) for providing an interface between a simulation system and a system under test
(c) comprising circuit portions operable to provide a digital interface, and
(d) circuit portions operable to provide an analogue interface,
(e) the circuit further comprising control means
(i) operable selectively to enable or disable the said circuit portions,
(ii) so as to reconfigure the interface provided by the signal interface circuit,
(f) in which the circuit further comprises a load
(i) connectable between a terminal on which an input signal is received,
(ii) and in which the load is connectable selectively to a high or low power rail
(iii) whereby to apply a loading to the input signal."
He also set out the integers of claim 22A at para [90]:
"A signal interface circuit according to claim 1 in which
(a) the load is connectable at one side to the terminal
(b) and at the other side to a switch to connect the load to ground or to a positive rail, according to the state of the switch,
(c) and in which the setting of the switch is determined by the control means."
"A signal interface circuit according to claim 1 in which
(a) the load is connectable at one side to the terminal
(b) and at the other side to a switch to connect the load to ground or to a positive rail, according to the state of the switch,
(c) and in which the setting of the switch is determined by the control means."
Alleged Infringement
The claimant alleged that part of the defendants' Scalexio product lines infringed its patent. More specifically it complained that the DS2680 unit and the combination of the DS2642 board and the DS2601 board infringed. As the trial proceeded it became clear that there really were just two aspects of the products that mattered, and that they were the same for the DS2680 and for the DS2642 + DS2601 combination. They were load connection and the boundary of the “signal interface circuit”.
The Issues
His lordship listed the disputed issues at para [10]:
ii) The common general knowledge (“CGK”). The main issue here was the Claimant’s allegation of a “mindset” that interface circuitry for HIL projects would always be bespoke.
iii) Claim interpretation. The issues on claim interpretation went to infringement.
iv) Infringement. The facts about the physical characteristics of the Defendants’ products are not in dispute, but there is a factual issue about how customers might foreseeably use them, relevant to secondary infringement under s. 60(2) of the Act.
v) Obviousness over:
a) A 1996 article entitled “CARTS - A Hardware in the Loop Simulator for Test and Development of Automotive Control Units” and referred to in these proceedings as “Woermann”;
b) A prior art product of the Defendants called the DS1103 and associated documentation.
vi) The insufficiency squeeze referred to above.
vii) Allowability of the proposed claim amendments - an added matter point.
viii) Under s. 62(3):
a) Did the Defendants know or have reason to believe that they infringed?
b) Was the Patent’s specification framed in good faith and with reasonable skill and knowledge?
c) Was the claim brought in good faith?
ix) Was the Pr
e-Action Protocol complied with, having regard in particular to a meeting on 29 August 2019?
“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]:
x) Whether the assignment of the Patent to the Claimant by Add2 Limited on 29 January 2018 (“the Assignment”) was ultra vires and void as an unlawful distribution.
xi) If the Assignment was ultra vires, whether a confirmatory assignment of 4 February 2021 by the liquidator of Add2 Limited (“the Confirmatory Assignment”) was effective to assign the Patent and associated rights of action. This involves:
a) Interpretation of the Confirmatory Assignment;
b) The Defendants’ assertion that the Confirmatory Assignment was or might be ineffective for the same reasons as the Assignment;
c) The Defendants’ assertion that that Patent was or might have been assigned to a third party after the Assignment and before the Confirmatory Assignment."
xi) If the Assignment was ultra vires, whether a confirmatory assignment of 4 February 2021 by the liquidator of Add2 Limited (“the Confirmatory Assignment”) was effective to assign the Patent and associated rights of action. This involves:
a) Interpretation of the Confirmatory Assignment;
b) The Defendants’ assertion that the Confirmatory Assignment was or might be ineffective for the same reasons as the Assignment;
c) The Defendants’ assertion that that Patent was or might have been assigned to a third party after the Assignment and before the Confirmatory Assignment."
At para [11] he said that the central issues were obviousness and infringement and that the other issues were much more minor and peripheral.
Infringement
Mr Justice Meade referred to paras [18] and [19] of Lord Justice Floyd's judgment in Saab Seaeye Ltd v Atlas Elektronik GmbH and another [2017] EWCA Civ 2175 at para [91] of his own judgment:
“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.’
(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 Justice Meade said that principle (v) was particularly important in this case. He rejected the defendants' contention that there was only one preferred embodiment and that the claims should be construed to give effect to that embodiment rather than a more general meaning, He added at [92[:
"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."
"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."
Between paras [93] and [96], his lordship considered the boundary of the "signal interface circuit" indicated in integer (a) of claim 1 in relation to integers (a), (c), (d) and (e). In para [97] he construed “enable or disable the said circuit portions” in integer (e) (i) of claim 1. Between paras [98] and [100] he addressed the meaning of “connectable selectively” in integer (f) of claim 1. He considered whether the defendants' products fell within the contested claims in relation to load connection between [103] and [123] and the signal interface circuit boundary between [124] and [138]. In the last sentence of [138], he concluded that the claim features were met.
Obviousness
At para [140] the judge announced his intention to apply the Pozzoli analysis. The Pozzoli analysis refers to guidelines developed by the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] RPC 59, [1985] FSR 59 and Pozzoli Spa v BDMO SA and another [2007] EWCA Civ 588, [2007] Bus LR D117, [2007] BusLR D117, [2007] FSR 37:
“(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?”
(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?”
The learned judge identified the person skilled in the art as a maker or designer of hardware in the loop interface circuits with a relevant degree or equivalent knowledge based on practical experience at para [29]. He described the common general knowledge of such persons between [31] and [74]. He construed the claims between paras [93] and [100]. The defendants relied on two items of prior art: a publication in the Transactions of the Society of Automotive Engineers called Woremann and a controller board sold by the defendants before the priority date. Turning to the 4th Pozzoli question he held at [165] that Woermann did not disclose the switch matrix as computer-controlled, but it would have been obvious to have made it so. That finding invalidated all the disputed claims. He was less impressed with the controller board describing the ddefendants' case as "laden with hindsight and thoroughly artificial."
Insufficiency
The defendants alleged that if, contrary to their main case, the signal interface circuit boundary infringement point went against them, then all the claims were insufficient because the skilled addressee would not be able to determine where the signal interface circuit ended and the simulator began. The judge observed that that is not an insufficiency to do with the skilled addressee’s ability to make something within the claim that works, or with excessive claim scope, but the kind of insufficiency that arises from insoluble uncertainty about what the claim covers. The allegation failed because his lordship did not find the infringement point especially hard to determine. Even if it were, it would have been no more than a typical situation where there is an arguable dispute over infringement.
Other Defences
Mr Justice Meade also rejected added matter and other defences.
Further Information
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