Case No. IP-2016-000202

on infringement 125.The Tap Bank falls within the scope of claim 1 pursuant to the doctrine of equivalents. Formstein defence 126.This case provides an example of how a Formstein defence, if it exists, provides a squeeze on infringement. I have found that the Tap Bank falls within claim 1 partly because the inventive concept is relatively simple. Where, as here, the simplicity of the inventive concept or core tends to make the scope of the claim broader, this will also increase the likelihood that a Formstein defence will apply. 127.In cross-examination Mr Bailey accepted that it was part of the common general knowledge to fix one or more directional couplers and one or more splitter units (which would have signal outputs) to a wooden or metal board and install that in a street cabinet as a tap unit. He accepted that this would allow faulty splitter units and/or groups of directional couplers to be replaced individually, which I take to mean independently of each other. Mr Bailey also said that this old type of tap unit had all the advantages of the Tap Bank. 128.Mr Chacksfield submitted that the Tap Bank would therefore at the priority date have lacked inventive step over the common general knowledge. 129.Aside from asserting that a Formstein defence does not exist in English law, Mr Gamsa’s only answer to this was that the units of the common general knowledge discussed by Mr Bailey (I will call them ‘CGK Tap Units’) were not ‘cable tap units’ because (a) the components were connected by coaxial cable and (b) they had no sealing to protect the units from RF interference and moisture. 130.On my findings on the construction of claim 1, only (a) could be relevant. But anyway, the correct construction of claim 1 was not to the point. The question was whether it would have been obvious at the priority date to adapt the CGK Tap Unit, with components connected by coaxial cables, to create a unit the same as the Tap Bank. Does the extension of claim 1 by the doctrine of equivalence mean that the claim embraces a tap unit, namely the Tap Bank, which was obvious over the CGK Tap Unit at the priority date? 131.Teleste’s Defence and Counterclaim asserted that it was obvious. Technetix’ Reply put Teleste to proof. Mr Bartlett’s evidence fell away. Mr Bailey said that the two had all the same advantages and Mr Gamsa only felt able to deal with this allegation by falling back on definitions, which had no real bearing. 132.This was just about a different means to connect the components electrically. I believe it is likely, in fact very likely, that at the priority date the skilled person would have thought it obvious to adapt the CGK Tap Unit to create a unit like the Tap Bank. 133.I think that Mr Chacksfield was right about this: if a Formstein defence exists in English law, Teleste is entitled to the defence. Amendment 134. In closing Mr Chacksfield did not pursue any objection to the amendment of the patent as granted, save that it would remain invalid. I have found that it would. Exclusive licence 135.Paragraph 2 of the Re-Amended Particulars of Claim included the following: “During the period 23 May 2006 to 19 December 2016 the Second Claimant was the sole legal entity with the authority of the proprietor of the Patent to manufacture products falling within the scope of the claims of the Patent in the jurisdiction. In the premises the Claimants contend that the Second Claimant was the exclusive licensee of the Patent under an implied licence.” 136.On 19 December 2016 the proprietor of the Patent, the First Claimant (‘BV’), granted an exclusive licence in writing to the Second Claimant (‘Limited’). 137.Technetix argued that on the facts stated in paragraph 2 of the Re-Amended Particulars of Claim and also because all three claimants are part of the same group, I should infer on the balance of probabilities that there was an exclusive licence granted to Limited in the relevant period. 138.There are two problems with this. First, paragraph 2 of the Re-Amended Particulars of Claim does not assert as a fact that there was an exclusive licence, only that there was a sole licence. Secondly, I was shown a written assignment dated 8 August 2016. I understand that prior to that date the Third Claimant (‘Group’) owned the Patent. The assignment identifies Group as the proprietor of the Patent and assigns “the full and exclusive benefit thereof and all rights privileges and advantages appertaining thereto” to BV. This suggests that in the period 23 May 2006 to 19 December 2016 Group, and after 8 August 2016 BV, held the total and exclusive benefit of the Patent. That is not consistent with an exclusive licence having been granted to Limited. 139.I see no basis for inferring an exclusive licence granted to Limited in the period in question. I find that no such licence existed. Conclusion 140.The patent as granted is invalid and it would remain invalid as proposed to be amended. Had it been valid it would have been infringed, unless there exists in English law a Formstein defence, in which case Teleste has a Formstein defence to infringement. 141.There was no exclusive licence granted to Limited under the patent in the period 23 May 2006 to 19 December 2016. 1 This is subject to the exception of a secret or uninformative use, which can be stopped by the grant of a patent (itself qualified by s.64 of the Patents Act 1977), see Merrill Dow at p.86 lines 16-36. Notwithstanding the exception, I do not understand Lord Hoffmann to have meant that the general principle should be abandoned.