Case No. IP-2016-000202

123.Would the skilled person reading the Patent have concluded that the patentee nonetheless intended that a base unit containing circuitry was an essential requirement of the invention? Reflecting what Lord Neuberger said in Actavis (at [65]), this is an inquiry into whether the skilled person would have concluded that a base unit containing circuitry is essential to the inventive concept, or inventive core, of the Patent. 124.In my view not. For reasons already discussed, the skilled person reading the Patent would think that the location of the relevant circuitry is irrelevant to the inventive concept. Nothing in the specification or the common general knowledge would steer the skilled person away from that view. Conclusion 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.