Case No. IP-2016-000202

is assessed as set out by the Court of Appeal in Pozzoli SpA v BDMO SA [2007] EWHC 1372 (Ch); [2007] FSR 36. Mr Gamsa also referred me to Kitchin J’s observation in Generics (UK) Ltd v H. Lundbeck A/S [2007] EWHC 1040 (Pat); [2007] RPC 32 that the court must consider the weight to be attached to any particular factor in all the relevant circumstances (at [72], approved by the House of Lords in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49; [2008] RPC 28, at [42]), and to Jacob LJ’s warning that hindsight must be avoided in Technip France SA’s Patent [2004] RPC 46, at [112]. Rocci 55.The invention claimed in Rocci is entitled ‘Radio frequency tap unit which can be reconfigured with minimal disruption of service’. The tap unit is used in a cable TV network. Minimising disruption of the service is achieved by creating modules within the unit which can be individually replaced without interfering with the signal to all the subscribers fed by the tap, just some. The directional coupler and the splitter (with signal outputs) are each in modules. The directional coupler may be removed from or placed into the base unit independently of the signal outputs. 56.There are 10 figures in Rocci. The first three illustrate the prior art. Figures 4 to 10 illustrate the only embodiment of the invention described. It has one directional coupler module and one splitter module. 57.Rocci was directed to the United States market. There, cable TV signals are generally transmitted on overhead wires and tap units are exposed to the elements unless protected within a weather-proof box. When cable TV came to the UK, regulations required that the cables were laid underground and it became customary to locate tap units in street cabinets. The cabinets are enough to protect the tap units from the weather without the need to put them into a box. 58.The single embodiment of Rocci has the splitter in the front plate of the box, with the base unit and directional coupler inside the box. Novelty 59.Technetix argued that Rocci did not enable the invention of the Patent. As was common ground, when an engineer sought to replace a directional coupler, he or she would be obliged to open the lid of the box and thereby interrupt the signal to the signal outputs because the splitter is in the lid. The invention of the Patent was distinguished from Rocci by Mr Gamsa in this way in closing: “There are clearly benefits to the Patented approach of being able to remove the directional couplers without physically affecting any of the signal outputs.” 60.I have discussed this argument in the section on construction. I think the paragraph just quoted reveals the flaw in Technetix’ argument. As it accurately states, the advantage of the invention in the Patent is that the directional coupler is replaceable (separable from and insertable into the base unit) without physically affecting the signal outputs. This means that the engineer need only carry a range of directional couplers and can select the grade needed. Claim 1 does not require that the directional couplers be replaceable without interrupting the signal to the signal outputs. That would be an impossibility. Mr Bailey confirmed that removing the directional coupler is going to interrupt the signal anyway. 61.Mr Gamsa submitted that my construction of claim 1, i.e. the irrelevance to claim 1 of the signal path being cut when the tap unit is accessed, must be wrong because it would have led the skilled reader of the Patent to conclude that claim 1 lacked novelty. The argument was that tap units like Rocci were part of the common general knowledge, specifically the idea of a unit with a lid which, when removed, interrupted the signal path to the signal outputs. The skilled reader of the Patent would not construe claim 1 to cover such an arrangement. 62.I find this hard to follow. The common general knowledge relied on, if it existed, would not have rendered claim 1 lacking in novelty. I do not see that it could have driven the skilled person to any conclusion about the construction of claim 1. 63.Rocci enabled the invention as described and claimed. Claim 1 lacks novelty over Rocci. Inventive step 64.Here I assume that Rocci does not anticipate claim 1 because it does not enable the invention for the reason given by Technetix. Teleste’s argument was that it would have been obvious to the skilled person at the priority date to take the Rocci tap unit out of its box and put the components in what Mr Chacksfield called a ‘flat design’, i.e. arranged such that the base unit could be put into a street cabinet. There would be no splitter in a lid and so no interruption of the signal caused by opening the lid. 65.Mr Bailey had two related reasons in his report for saying that changing Rocci to a flat design would not be obvious. First, the skilled person would consider Rocci to be inherently impractical; there was a risk that the environmental and RF seals would not have sufficient integrity to ensure that the unit was sealed. Secondly, it would not be obvious to move Rocci outside its box because that would render the directional coupler vulnerable to water ingress. 66.These concerns of the skilled person would carry no force if it was obvious to move the Rocci tap unit into a UK-style street cabinet which would offer sufficient protection from the weather. Mr Bailey also said in his report that the skilled person would not have modified Rocci so that it could be installed in a cabinet because the Rocci tap unit did not make efficient use of space. In cross-examination he changed his mind. He conceded that the skilled person would find it obvious to modify the embodiment shown in figure 4 of Rocci into a flat design without a lid. Such a design would be suitable for a street cabinet. 67.Mr Bailey’s only reservation in the end, which he maintained in cross-examination, was that Rocci would not be a good starting point. 68.Mr Bailey had said in his report that he considered Rocci before being shown the Patent and that in his view the skilled person would not contemplate modifying Rocci in any way at all. This could rarely be true of any prior art in any field. It implies that the prior art defies the very idea of modification. 69.By the time of cross-examination it became clear that what Mr Bailey really meant was that there were better starting points because the skilled person would hold a low opinion of Rocci. Perhaps. Even so, Mr Bailey conceded that it would have been obvious to amend Rocci in such a way as to create the claim 1 invention. 70.On that evidence, if Rocci did not anticipate claim 1, claim 1 would have lacked inventive step over Rocci. Toner 71. The invention in Toner is a housing used to accommodate components for a cable TV network, including taps and splitters. It has a number of modular cavities into which components can be inserted. When a modular cavity is empty a switch provides conductivity between the input and output of the cavity so that the signal path remains unbroken across that cavity. Novelty 72.Teleste relied on the embodiment illustrated in figure 8 of Toner: 73.Figure 8 is explained at column 6, lines 14-24. The signal path from input 810 passes to modular cavity 8a and therein to a directional coupler conventionally represented by a circle containing a horizontal and a diagonally descending line (the signal path). The directional coupler taps off part of the signal which passes via a splitter and then two further splitters (shown below the directional coupler) to four signal outputs beneath. The rest of the signal passes to module 8b which has what is called a ‘terminating splitter’. There is no directional coupler in 8b; the signal passes via splitters only to the four signal outputs of that module. 74.While the directional coupler in module 8a cannot be removed independently of the signal outputs in 8a, it can be removed independently of the signal outputs of module 8b. 75.Technetix’ only answer to the allegation of lack of novelty over this embodiment was that as a matter of construction claim 1 requires the directional coupler to be removed independent of all groups of signal outputs in the tap unit. For reasons I have given, I disagree. 76.Mr Gamsa argued that my construction must be wrong because the skilled person would have recognised that it leads to claim 1 lacking novelty over the common general knowledge. He or she would have known that this included arrangements in which the directional coupler could be removed independently of at least one group of signal outputs, but not others. Therefore, urged towards a construction of claim 1 that did not cover the prior art, he or she would construe claim 1 to require that the directional coupler must be independent of all groups of signal outputs. As for evidence of this common general knowledge, Mr Gamsa said that Mr Bailey had agreed with paragraphs 47 and 53 of Mr Bartlett’s report and that in those paragraphs Mr Bartlett had asserted that common general knowledge. 77.Mr Bailey’s agreement with Mr Bartlett about the common general knowledge came in a very short exchange with Mr Chacksfield in which Mr Bailey accepted that there was not much between him and Mr Bartlett on the common general knowledge. Mr Bailey did not turn his mind at all to the point in question. Even Mr Bartlett did not. I do not read his paragraphs 47 and 53 as drawing the required distinction within the common general knowledge between replacing a directional coupler independently of one, or some, or all groups of signal outputs. 78.Also, as I have indicated, I find claim 1 unambiguous in this regard. Claim 1 lacks novelty over Toner. Inventive step 79.Teleste’s case on obviousness went forward on the assumption that Technetix’ construction of claim 1 was correct, i.e. the directional coupler must be replaceable independently of all groups of signal outputs. 80.It was put to Mr Bailey that there could be cable TV signals fed from a tap unit, where one distant property requires a significantly stronger signal than other closer properties. If this were the case, it would have been obvious to adapt Toner to have a directional coupler in one module with a single drop port to feed the distant property. Splitters with a group of signal outputs would be in the next module to feed the closer properties. This arrangement was illustrated as follows: 81.Mr Bailey agreed in cross-examination that it would have been obvious to modify Toner in this way. Mr Chacksfield submitted that the single output of the first module is not a ‘group of signal outputs’. Therefore, even on Technetix’ construction, the directional coupler would be replaceable independently of the only group of signal outputs present. 82.I agree. ‘[A]t least one group of signal outputs’ in claim 1 would not as a matter of natural language be interpreted to cover a single signal output. Nothing in the specification supports such an interpretation. In the arrangement illustrated, the directional coupler would be separable from and insertable into the base unit independent of the group of signal outputs. 83.On Mr Bailey’s evidence claim 1 would lack inventive step over Toner even on Technetix’ view that the directional coupler must be replaceable independently of all groups of signal outputs present.