Patents - the Appeal in Supponor Ltd v AIM Sport Development AG

Etihad Stadium

Author Cléria De Souza Licence CC BY  2.0  Source Wikimedia Commons

Jane Lambert

Court of Appeal (Lords Justices Males,, Phillips and Birss) Supponor Ltd and another v AIM Sport Development AG [2024] EWCA Civ 396 (23 April 2024)

This was an appeal against Mr Justice Meade's judgment in AIM Sport Vision AG v Supponor Ltd and another [2023] EWHC 164 (Pat) (30 Jan 2023) which I discussed in Patents - AIM Sport Vision v Supponor on 6 Sept 2023.  That had been an action by AIM Sport Vision AG ("AIM") against Supponor OY and Supponor Ltd. ("Supponor") for infringement of European patent (UK) 3 295 663 B1 by Supponot's SVB system and a counterclaim by Supponor for the revocation of the patent on the grounds of obviousness and insufficiency.  His lordship had held that the patent was valid and infringed.

The Invention

The patent was granted for digitally overlaying an image with another image.   Many sports stadiums are equipped with display boards that carry advertisements directed to audiences in the stadium. Those advertisements may be for goods or services that are of no interest to TV audiences in other countries.   It had previously been possible for broadcasters to blot out the advertisements in the stadium and superimpose others that are likely to interest their audience.   

A problem with superimposing advertisements over the billboards is that players, balls, birds and other things come between cameras and display boards which may move very quickly in unpredictable directions. That problem had been addressed by using display boards to emit infrared light and cameras to detect such light.  The infrared camera controlled the operation of the TV cameras.  When an object passed between the camera and the display board the infrared camera caused the TV camera not to pick up light from that object.  

The patented invention worked by detecting light from an occluding object and using a filter to cut out light from the display board.  Advertising is superimposed on the filtered space.

The Appeal
Supponor appealed on grounds summarized in para [3] of the judgment of Lord Justice Birss who heard the appeal with Lord Justices Males and Lord Justice Phillips on 13 and 14 March 2024:

"Grounds 1 and 2 challenge the judge's claim construction. Ground 3 challenges the finding of infringement and is advanced in the event grounds 1 and 2 fail. Ground 4 relates to one of the two approaches to obviousness advanced by Supponor over Nevatie. They both failed below. Ground 5 relates to what was called the Promptu point, about the impact on claim 12 of an admission made below by AIM that claim 1 was invalid. The judge rejected Supponor's argument on this point below but gave permission to appeal on the basis that the issue raised an important aspect of practice. Finally ground 6 relates to two sets of conditional amended claims. These had been advanced by AIM as back up to its case on the issue of construction to which ground 2 applies. The judge decided the amendments in AIM's favour albeit that they were unnecessary. By ground 6 Supponor challenge that conclusion."

The hearing was filmed and can be viewed on YouTube. Their lordships delivered judgment on 23 April 2024. By para [79] of his judgment in Supponor Ltd and another v AIM Sport Development AG [2024] EWCA Civ 396 (23 April 2024), Lord Justice Birss, who delivered the lead judgment, agreed with the appellants on ground 2 but allowed the respondents to amend claim 12 which put the patent outside the scope of the prior art.   He was against the appellants on all the other grounds with the consequence that the appeal as a whole had to be dismissed.  Lord Justice Males and Lord Justice Phillips agreed with Lord Justice Birss.

The Technical Case

In paras [4] and [5] of his judgment Lord Justice Birss set out the problem that the invention set out to solve. In para [6] he discussed the teaching of  PCT application WO 2013/186278 A1 which the Court referred to as “Nevatie”.  At para [7] he summarized the patented invention reproducing in full claim 12 at para [8].  The claim broken down into integers appears in full in Patents - AIM Sport Vision v Supponor which I mentioned above.  Paras [9] to [15] are a commentary on that claim.  He said at para [16] that the three further issues to deal with at that stage were the term "detection image", the question of so-called "pixel-by-pixel" processing and the distinction between "dark-on-light" and "light-on-dark.  He discussed "detection image" between paras [17] and [18] and "pixel-by-pixel processing and dark-on-light vs light-on-dark" between [19] and [24].  At para [25] he said that Ground 1 of Supponor's appeal challenged Mr Justice Meade's finding that the integer 12.5 does include pixel-by-pixel processing.  He said at [27] that Ground 2 challenged the judge's conclusion that claim 12 excluded dark-on-light processing. He added at [30] that Ground 3 challenged the finding on infringement if the counterclaim failed.

Ground 1
Supponor argued that the "image property" referred to in integer 12.5 of claim 12 necessarily involved consideration of the neighbourhood of a pixel which would amount to "higher order processing" The result would be that the property of a single pixel on its own cannot be an image property and so pixel-by-pixel processing would not be within the claim.  The trial judge had rejected that contention and Lord Justice Birss agreed with him.

Ground 2

Lord Justice Birss considered Mr Justice Meade's reasoning at para [43] and commented on its steps between [44] and [48].  He said at [49]:

"Addressing the question of whether the claim is limited to a light-on-dark method, thereby excluding a dark-on-light approach, is in effect a proxy for the question whether the claim excludes Nevatie."

He concluded at [51]:

"Nevatie describes a method which involves examining the image captured by an IR camera on a pixel-by-pixel basis and detecting an occluding object by examining the brightness of each pixel, attributing a bright pixel to the display board and a dark pixel to the occluding object. This amounts to detecting an occluding object by means of an image property of the occluding object, which is the brightness of the pixel associated with that object. I would hold that this is within claim 12 (subject to the irrelevant issue about moving images)."

His lordship would therefore have allowed the appeal on Ground 2 had he not allowed the claim to be amended.

Ground 6

As Supponor had succeeded on Ground 2 it was necessary for the Court of Appeal to consider AIM's proposed amendments. These were amending integer 12.1.1.2 to limit the display device to an LED board and the insertion of a new 12.7:

"wherein the LED screen has a uniform, monotone distribution as if it was not active on the captured detection image."

Supponor had no objection to the first of those amendments but opposed the new integer. The appeal was against the judge's finding that the amendments were allowable but unnecessary. Lord Justice Birss agreed that the amendments were allowable and that their effect was to remove the patent as amended from the scope of the Navatie PCT application.

Ground 3

Supponor argued that if claim 12 excluded a method of inferring the presence of an occluding object by observing bright pixels, identifying them as being from the display board, and thereby inferring that the dark pixels are from an occluding object, then it followed that there could be no infringement because that was also how the SVB system works. Lord Justice Birss rejected that argument on the grounds that was not an accurate characterization of how the SVB system worked and he had already held that "detecting" in claim 12 had a wider meaning.

Ground 4

Because of the findings on Grounds 1, 2 and 6, this issue did not arise.

Ground 5

In pre-action correspondence, AIM had offered not to contest the validity of claim 1. Supponor argued that there was no difference between claim 1 and claim 12.   If claim 1 was invalid then so too must claim 12 and the whole patent should be revoked.   In support of its contention, Supponor relied on Mr Justuce Meade's decision in Promptu Systems Corporation v Sky UK Ltd and others [2021] EWHC 2021 (Pat) (19 July 2021).  At trial, the judge held that the concession in respect of claim 1 did not extend to claim 12.  AIM had always argued that claim 12 needed to be resolved.  AIM had applied to the court for permission to withdraw the admission if necessary but the trial judge did not think that it was.  

On appeal, Supponor argued that if claim 1 was obvious over Navatie then claim 12 must also be obvious since there was no material difference between the two claims.  Lord Justice Birss rejected that contention at [69]:

"Supponor's oral submissions on appeal ranged quite widely, mentioning s72 and s74 of the Patents Act 1977 and drawing an analogy with the law of limitation. However the analogy does not matter and the references to the provisions of the Patents Act do not assist."

Turning to the concession, he added at [70]:

"......The letter is clear that AIM is saying it no longer contends in the UK proceedings that claim 1 is valid and, in the same breath, it is saying that it is maintaining its case that claim 12 is valid. I am doubtful that this is really an admission of any fact at all. Rather it is a pragmatic proposal about case management, that AIM will not seek to defend claim 1 but will defend claim 12. It does I think carry with it a statement that AIM will not oppose any relief granted on the footing that claim 1 is invalid, but that is a different thing from an admission of a fact. The difference would not normally matter but given the point raised by Supponor it does matter. An admission that claim 1 is invalid is the foundation for Supponor's case but there was no such thing.
[71] Even assuming what took place amounted to an admission, it cannot be summarised simply as an admission that claim 1 is invalid because it is clearly bound up with a statement that claim 12 is not. This I think is what the judge was referring to at [272] when he doubted what exactly the admission which would need to be withdrawn was. Therefore again, in my judgment the foundation for Supponor's point is lacking."

He also observed that claim 1 and claim 12 were not identical: claim 1 was a product claim and claim 12 was a method claim.  Yet another objection was that the concession did not amount to an admission of invalidity but an offer not to defend.  Lord Justice Birss said that it would be unfortunate to discourage patentees in this sort of situation from making sensible case management proposals about what claims are in issue other than the main ones for fear of an unforeseen consequence.  However, he also said that this case was also an object lesson in making sure that the precise basis and extent of a concession is made clear. A simple statement that the claimant made no concession about claim 12 at all, but would not contend claim 1 was valid, would have avoided this problem.

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