Patents - AIM Sport Vision v Supponor
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Patents Court (Mr Justice Meade) AIM Sport Vision AG v Supponor Ltd and another [2023] EWHC 164 (Pat) (30 Jan 2023)
In AIM Sport Vision AG v Supponor Ltd and another [2023] EWHC 164 (Pat) (30 Jan 2023), the claimant, AIM Sport Vision ("AIM"), accused the defendants, Supponor OY and Supponor Ltd. ("Supponor") of infringing its European patent (UK) 3 295 663 B1 for digitally overlaying an image with another image with their "SVB System". The invention for which that patent had been granted enables the superimposition of advertisements in TV broadcasts of sporting events that are different from the advertisements seen by spectators on billboards in the stadium. They are also different from advertisements appearing in other television broadcasts of the same game. Thus, the spectators in the stadium may see an advertisement for beer on the billboards around the ground but viewers of the same channel may see an advertisement for a car and viewers of another channel an advertisement for confectionary. The patent contained method and product claims though only one of those claims was in issue. Supponor denied infringement and disputed the validity of the patent. The action came on for trial before Mr Justice Meade on 1, 2 and 17 Nov 2022. By para [274] of his judgment which he handed down on 30 Jan 2023, his lordship held that the patent was valid and infringed.
The Issues
The judge set out the issues in dispute in dispute at para [11] of his judgment:
ii) Whether the SVB System infringes. This depends entirely on claim interpretation.
iii) Obviousness over Patent Application WO 2013/186278 A1 “Nevatie”.
iv) A squeeze argument over Nevatie, in addition to the allegation that the Patent is obvious over it in any event. This arises from the fact that Nevatie was filed by Supponor, and a major theme of Supponor’s case was that the SVB System was an obvious development of Nevatie.
v) An insufficiency allegation run mainly as a squeeze.
vi) Whether the proposed amendments to the patent are allowable, the sub-issues being:
a) Whether they render the Patent valid in the event that it is invalid without them;
b) Clarity;
c) Added matter.
vii) An allegation by Supponor that the combined effect of two separate admissions by AIM is that AIM admitted that the remaining claim in issue, claim 12, is invalid. I will call this the 'Promptu' point."
The Invention
The Disputed Claim
This was claim 12 broken down into the following integers:
| "12 | A method of digitally overlaying an image with another image, |
| 12.1 | comprising creating (200) a model of a real world space, |
| 12.1.1 | wherein the model includes an overlay surface to be overlaid with an overlay image, |
| 12.1.1.1 | wherein the overlay surface in the model represents a display device in the real world, |
| 12.1.1.2 | wherein the display device is configured to display a moving image on the display device in the real world by emitting radiation in one or more pre-determined frequency ranges; |
| 12.2 | identifying (201) camera parameters, which calibrate at least one camera with respect to coordinates of the model; |
| 12.3 | capturing (202) at least one image with respective said at least one camera substantially at the same time, said at least one captured image comprising a detection image, |
| 12.3.1 | wherein the camera used to capture the detection image is configured to detect radiation having a frequency outside all of the one or more predetermined frequency ranges and distinguish the detected radiation outside all of the one or more pre-determined frequency ranges from radiation inside the one or more pre-determined frequency ranges; |
| 12.4 | positioning (203) the overlay surface within said at least one captured image based on the model and the camera parameters; |
| 12.5 | detecting (204) an occluding object at least partially occluding the overlay surface in a selected captured image of said at least one captured image based on an image property of the occluding object and the detection image; |
| 12.6 | overlaying (205) a non-occluded portion of the overlay surface in the selected captured image with the overlay image, by overlaying the moving image displayed on the display device in the real world with the overlay image in the selected captured image." |
Two Points on Claim Interpretation.
At para [121] of his judgment, the learned judge identified the first issue as whether integer 12.5 required higher order processing. There was no agreed definition of "higher order processing" but, using the words of Supponor's expert, the judge explained that "higher order processing" as "an image property of the occluding object requires a descriptor that is 'a property of the detection image whose presence can be associated specifically with the presence of an expected type of occluding object, and which can be identified by the detector and used to ascertain the size, shape and location of the area of pixels which correspond to the occluding object with the detection image.'” The judge added: "This requires some pre-existing overall appreciation of the occluding object’s likely appearance and does not extend to simply looking at one pixel at a time in isolation to see how bright or dark it is." The second issue was whether 12.3 was to be interpreted to require one and only one detection image" (para [143]).
- Integer 12.5 The significance of this point was that if the claim extended to an assessment of the brightness of individual pixels then it would catch the SVB system. On the other hand, if the claim extended to identifying a dark occluding object against a light background then the patent would have been obvious over Nevatie. His lordship held that AIM was right on both interpretations setting out his reasoning on the first between para [126] and para [140] and his reasoning on the second in para [141].
- Integer 12.3 Supponor argued that integer12.3 required one and only one detection image because claim 12 repeatedly used the words “at least one” in relation to the captured image in integers 12.3, 12.4 and 12.5 but not in relation to the detection image. Also, similar language was used in relation to “at least one image”, with “at least one camera” and “substantially at the same time”. The judge thought that the claim could have been expressed better but there was nothing in its language to support Supponor’s narrow reading. Nor was there any purposive reason why it should support that reading.
Whether the SVB System infringed
The learned judge found that it did. As noted above, claim 12 did not require higher order processing and covered pixel-by-pixel brightness analysis. Accordingly, the SVB system fell within integer 12.5. Since claim 12 was not limited to a single detection image, integer 12.3 was met.
Whether the Patent was obvious over Nevatie
Mr Justice Meade directed himself as follows at [172]:
"The basic approach to obviousness is as set out in the decision of the Supreme Court in Actavis v. ICOS [2019] UKSC at [52] - [73], with its endorsement at [62] of the statement of Kitchin J, as he then was, in Generics v. Lundbeck [2007] EWHC 1040 (Pat) at [72]. The number of routes forward is one relevant factor, but there may be more than one obvious option (Brugger v Medicaid [1996] RPC 635 as interpreted in the case law since)."
"The basic approach to obviousness is as set out in the decision of the Supreme Court in Actavis v. ICOS [2019] UKSC at [52] - [73], with its endorsement at [62] of the statement of Kitchin J, as he then was, in Generics v. Lundbeck [2007] EWHC 1040 (Pat) at [72]. The number of routes forward is one relevant factor, but there may be more than one obvious option (Brugger v Medicaid [1996] RPC 635 as interpreted in the case law since)."
In Acfavis Lord Hodge said in para [60] of his judgment:
"In addressing the statutory question of obviousness in section 3 of the 1977 Act it is common for English courts to adopt the so-called Windsurfing/Pozzoli structure which asks these questions:
(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?”(Pozzoli SPA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, para 23 per Jacob LJ)."
"In addressing the statutory question of obviousness in section 3 of the 1977 Act it is common for English courts to adopt the so-called Windsurfing/Pozzoli structure which asks these questions:
(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?”(Pozzoli SPA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, para 23 per Jacob LJ)."
- The Skilled Addressee: As to the first of those questions, the judge had identified the skilled addressee in para [38] as "someone with an interest in cameras and associated displays and computer systems for overlaying advertisements at live events, in particular sporting events, and with relevant academic training, probably a computer science degree, and practical experience implementing computer graphics rendering and image processing."
- Common General Knowledge: The skilled addressee's common general knowledge was agreed and set out in a joint document. It was summarized by the judge between para [39] and para para [106].
- Inventive Concept: No attempt was made to identify the inventive concept probably because the construction of only 2 integers of claim 12 was disputed.
- Differences between Nevatie and the Patent: Mr Justice Meade discussed Nevatie between para [173] and para [180] of his judgment. The third and fourth steps of the Windsurfing/Pozzoli analysis were not addressed specifically in the judgment but Supponor's argument in para [186] approximated to step 3 and the judge's analysis between [190] and ]200] equated to step 4.
The judge rejected Supponor's argument on obviousness because it was not supported by their own expert. Also, it did not deal with AIM's point that Nevatie seemed to offer a complete solution and was unlikely to prompt further enquiry.
AIM argued unsuccessfully that the delayed launch of the SVB system indicated that Nevatie satisfied a long-felt need. That argument was raised for the first time in cross-examination of Supponor's expert and had not been pleaded. His lordship was unimpressed:
"this is not the sort of case where the prior art was known to a whole industry and no one progressed it in the way said to be obvious. Moreover, there could be a host of practical reasons why Supponor did not progress matters, such as having other priorities, and the fact that the SVB System was not launched until 2016 does not necessarily mean that the ideas behind it took that long to conceive. It cannot be excluded that Supponor had the basic idea much earlier."
AIM argued unsuccessfully that the delayed launch of the SVB system indicated that Nevatie satisfied a long-felt need. That argument was raised for the first time in cross-examination of Supponor's expert and had not been pleaded. His lordship was unimpressed:
"this is not the sort of case where the prior art was known to a whole industry and no one progressed it in the way said to be obvious. Moreover, there could be a host of practical reasons why Supponor did not progress matters, such as having other priorities, and the fact that the SVB System was not launched until 2016 does not necessarily mean that the ideas behind it took that long to conceive. It cannot be excluded that Supponor had the basic idea much earlier."
Finally, Supponor submitted that "while a skilled person would think that Nevatie was attractive to take forward, he or she would at the same time be concerned about its performance and would consider a range of ways to improve it, including at least basic object detection algorithms, going beyond mere brightness but satisfying Supponor’s interpretation of claim 12." The judge accepted the force of some of those points but considered them to be too vague to support a finding of obviousness.
His lordship concluded that the patent was not obvious over Nevatie.
His lordship concluded that the patent was not obvious over Nevatie.
In para [217] the judge noted that Supponor had framed their attack over Nevatie as "a Gillette defence." The learned judge was referring to the House of Lords's finding in Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465, that a claim was either known or obvious in the light of the prior art upon one construction or not infringed under another. In this case, Supponor argued that the SVB System was an obvious development of Nevatie. While understanding the reason for the submission, the judge did not think it could assist Supponnor. As he put it
"If it were obvious to develop a light-on-dark approach from Nevatie then claim 12 would be obvious whatever Supponor had or had not done. If it were not, then the Supponor SVB System would not be an obvious development from Nevatie."
Insufficiency
An insufficiency squeeze was run as part of a squeeze allegation but barely mentioned in the judgment.
Amendment
"Claim 12 - Revised Amendment 2 (conditional)" if the claim were found to be invalid. As the obviousness attack failed at trial such an amendment would be required only if the judge's finding were to be reversed on appeal. AIM's application to amend was resisted on the grounds the amendments made no difference and did not validate claim 12 if it was obvious over Nevatie, they lacked clarity and consisted of added matter. The judge rejected each of the arguments and allowed the amendment.
Promptu
On 21 July 2022, AIM's solicitors offered to abide by the Court’s decision on the validity of claim 1 in relation to the validity of claim 13. Supponor accepted that offer. On 18 Oct 2022, AIM stated that it would not contest the validity of claim 1 and that it would only defend claim 12. By a CPR Part 18 request, Supponor asked AIM to specify the differences between claim 12 and claim 13. AIM denied that Supponor was entitled to that information as claim 13 was no longer in contention. Supponor responded that if claim 13 was invalid then so must claim 12 unless AIM could identify a relevant difference. It referred AIM to Mr Justice Meade's judgment in Promptu Systems Corporation v Sky UK Ltd and others [2021] EWHC 2021 (Pat) (19 July 2021). I discussed this case in Patents - Promptu Systems Corporation v Sky UK Ltd on 5 Jan 2022. In Promptu the judge would not permit the claimant to raise a point that was inconsistent with a concession that it had made in pre-trial correspondence between solicitors.
The learned judge rejected Supponor's contention:
"[263] In my view, and in agreement with AIM, this argument is fallacious at least three stages.The learned judge rejected Supponor's contention:
[264] First, AIM did not admit that claim 13 was invalid if claim 1 was. It just made a pragmatic concession that there was no point defending claim 13 separately. In fact it is quite easy to see how in theory claim 13 could be valid if claim 1 was not, because of the different claim types.
[265] Second, AIM never admitted that claim 12 was invalid if claim 13 was. It may be that the conclusion is difficult to resist in logic, but AIM did not formally admit it, even allowing for its somewhat odd suggestion in its letter of 23 October 2022 that claim 13 should stand or fall with claim 12 instead of claim 1.
[266] Third, AIM never admitted that claim 12 was invalid. It has always defended it, and in its letter dropping claim 1 it made clear that claim 12 required resolution.
[267]. I do not think it is legitimate to combine admissions and matters said logically to flow from admissions to reach a result which was expressly not accepted by the party making admissions.
[268] This case is quite different from Promptu, where the admission that had been made was clear and explicit and not in dispute, and the debate was over the consequences.
[269] I do not believe that a reasonable person in the position of Supponor would have interpreted AIM’s conduct as admitting by implication that claim 12 was invalid. I also do not believe that Supponor in fact thought that. The letter of 19 October 2022 says nothing of the kind but does ask for confirmation that claim 13 (and claim 10) fell away with claim 1. Had Supponor thought as much then I would have expected it to rise to the challenge in Mr Laakonen’s witness statement and to say so. I think Supponor’s conduct was and has been opportunistic and a distraction.
.........
[271] I would also say that it would be unfortunate to discourage patentees in this sort of situation from making sensible admissions about claims other than the main ones for fear of an unforeseen consequence."
Conclusions
His lordship's conclusions were as follows:
"i) Claim 12 of the Patent is valid as granted so no amendment to it is necessary.
ii) The proposed amendments to the Patent would be permissible were they necessary.
iii) Supponor’s SVB System infringes.
iv) All other claims must be deleted because AIM did not defend them (claim 1), accepted that they were not independently valid of claim 1, or (claim 13) accepted that it should stand or fall with claim 1."
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