Case No. IP-2016-000202

The law 21.I discussed my understanding of the normal construction of a claim, as explained in Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48; [2017] RPC 21 and Icescape Limited v Ice-World International BV [2018] EWCA Civ 2219, in Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat) at [202]-[208]. 22.Mr Gamsa relied on this from the judgment of Floyd LJ (with whom Patten LJ and Sir Stanley Burton agreed) in Adaptive Spectrum and Signal Alignment Inc v British Telecommunications plc [2014] EWCA Civ 1462: “[107] Mr Wyand submitted that the court should be slow to arrive at a construction which resulted in a finding of invalidity for obviousness over common general knowledge. He relied on a passage in Terrell on the Law of Patents, 17th Edition at paragraph 9-107: ‘The overall principle is therefore that a construction which leads to a foolish result should, if possible, be rejected as being without the intention of the patentee, for a construction which does not lead to an absurd result is to be preferred. However a finding of invalidity cannot of itself be regarded as an absurd result, unless the relevant piece of prior art is specifically acknowledged in the patent, or unless the invention would to the knowledge of the ordinary reader then be obvious simply in the light of common general knowledge.’ [108]This passage follows a discussion of two cases. The first is a decision of this court in Ocli Coating Laboratory v Pilkington [1995] RPC 145. In that case the court concluded that a good reason for confining the meaning of the claims to what it described as a literal construction was that, if the wider construction was adopted, the patent would be rendered obvious in the light of the prior art. As the authors of Terrell point out, however, that cannot be a universal proposition. Where there is no reason to assume that the patentee was aware of a particular piece of prior art, his claim may well have been framed in ignorance of it. In such circumstances it would be wrong to impute to the patentee an intention to frame a claim so as to avoid attacks which could be based on it. It is also perhaps relevant to observe that that case was decided at a time when the courts decided construction by making a distinction between the strict, literal or acontextual meaning of the language and its purposive meaning, as opposed to adopting the unitary approach propounded in Kirin Amgen. One aspect of that approach invited speculation as to whether there was a possible reason why the patentee might have wanted to restrict himself to the strict, literal meaning. [109]The second case cited was a decision of Jacob J in Beloit v Valmet (No 2) [1995] RPC 705. At page 720 Jacob J pointed out: “… there is normally no reason to suppose the patentee when he set the limits of his monopoly knew of a particular piece of prior art … Of course the position is different if the prior art is specifically acknowledged in the patent…” [110]Even if prior art is specifically acknowledged, much may turn, as Lewison J pointed out in Ultraframe v Eurocell [2005] RPC 7 at [73], on the way in which the prior art is referred to in the patent. [111]As with any canon of construction, one must be wary of treating it as a rigid rule. Moreover as soon as one departs from documents specifically acknowledged in the specification, the skilled reader has no basis for assuming that the patentee was aware of the document in question. Still further, where the objection is one of obviousness rather than lack of novelty, a value judgment is involved on which widely differing views are possible. It is true that if the document is said to form part of the common general knowledge, it might be said to be more likely that the patentee is aware of it. But a patentee may have been isolated from the common general knowledge, or may, despite the later finding of obviousness, have genuinely believed that he had made an invention over it. As will be seen below, the argument of invalidity over Kerpez involved, amongst other things, resolving a dispute between experts as to the feasibility of identifying noise sources. I am not persuaded therefore that it would be right to give weight to this factor in the present case.” 23.Mr Gamsa drew from this a principle of law similar to that asserted by counsel at the start of the passage: the court should be slow to arrive at a construction that would render a patent anticipated or obvious over the common general knowledge of the skilled person. 24.I think that Floyd LJ’s view on the relevance of prior art to construction was more nuanced than Mr Gamsa suggested. Floyd LJ pointed out that once one departs from documents specifically acknowledged in the specification, it is difficult for the skilled person reading the document to make assumptions about what prior art the patentee had in mind when framing his claims. The court must construe the claims according to the canons of normal construction as explained in Actavis. This includes reading the claim and the description through the eyes of the skilled person and thus with the common general knowledge in mind. Yet even where the relevant prior art is common general knowledge said to anticipate the claim, it may be that the skilled person would conclude that the patentee was isolated from that part of the common general knowledge or just overlooked it. 25.It seems to me that there is no rule that a court must always be slow at finding that a claim lacks novelty over the common general knowledge. It will depend in part on the clarity of the meaning of the claim on a normal construction. Each case must be decided on its own facts. All the more so where the issue is inventive step, for the reason identified by Floyd LJ. Cable tap unit 26.Mr Gamsa argued that the cable signal emerging from the unit must be suitable for that purpose and that consequently the unit had to be environmentally sealed and RF shielded. (RF shielding blocks radio frequency electromagnetic radiation.) 27.The need for, and the nature and extent of sealing and shielding will depend on the location of the tap unit. Neither the specification nor Mr Bailey’s evidence indicated that claim 1 requires any specifics in that regard. 28.Mr Gamsa also argued that if the directional coupler and splitters are connected by coaxial cable, the unit they form ceases to be a cable tap unit within the meaning given to that term by claim 1. He referred to prior art, but it did not establish that the skilled person would regard ‘cable tap unit’ as a term of art at the priority date which excluded a unit with components connected by coaxial cable. 29.On the other hand, it was a part of Teleste’s argument on another issue of construction that the signal path of claim 1 is formed by the circuitry of the base unit. I have reached the view that if any significant proportion of the signal path is not within the base unit, for instance it is formed by coaxial cable joining components, the unit thus created would not be a cable tap unit within the meaning of that term in claim 1. A base unit with an input for a signal from a cable network 30.It was Technetix’ case that the signal input of the base unit may be separate and mounted on to the base unit. Mr Chacksfield submitted that the signal input must form part of the base unit. 31.Mr Chacksfield’s interpretation is the more natural reading of the words ‘a base unit with an input for a signal from a cable network’ in claim 1. Had there been a comma after ‘unit’ the natural meaning would have been different. 32.Mr Chacksfield pointed out that claim 1 requires ‘…at least one receptor means positioned in the base unit in a signal path between the input and a group of outputs …’. He said that there must be a signal path, formed by the circuitry of the base unit, between the input and outputs. I think that by itself this is neutral. It does not exclude the possibility of the circuitry being connected at one end to a signal input mounted on, but not part of, the base unit. However, the base unit must have the necessary circuitry. 33.The description at page 2 states that the signal outputs may be detachable from the base unit – the claim 5 embodiment. There is no indication that the input may be detachable and no example with an input separable from the base unit. I think the reader of the Patent would take this to be support for the natural reading of claim 1 referred to above. 34.In my view, the skilled person would construe claim 1 to require the input to form an integral part of the base unit. Group of signal outputs 35.Mr Gamsa characterised Mr Bailey’s evidence at paragraphs 13 to 18 of his second report as stating that the Patent requires the signal output to provide a signal at a suitable level. If it does not, it is not a signal output within the meaning of claim 1. 36.I do not read Mr Bailey’s evidence as being so prescriptive. In those paragraphs Mr Bailey was discussing the signal from Teleste’s product, stating that the signal was too high for a subscriber drop connection. 37.There is nothing in claim 1 or the Patent’s description supporting the alleged narrow definition of ‘signal output’, or by extension ‘group of signal outputs’. Whether the signal is too high or too low, it is still a signal transmitted from what the skilled person would take to be a signal output, albeit a signal unsuitable for a subscriber drop connection. In practice, a signal that is too high, which is all that Mr Bailey was considering, would be made suitable by connection to a splitter outside the tap unit, as he confirmed. Receptor means 38.At a hearing on 17 July 2018 it was agreed between the parties that ‘receptor means’ was to be interpreted in the manner described by Mr Bartlett at paragraphs 73 and 74 of his first report. This was formalised in the order of that date. In paragraphs 73 and 74 Mr Bartlett was describing the embodiment described in the Patent in which both the directional couplers and the signal outputs are individually replaceable, the claim 5 embodiment: “73. The document continues to describe a further aspect where the base unit is provided with detachable modules which carry at least one group of signal outputs. This continues the same idea in that the skilled person would understand that the design and circuitry of the base unit, instead of including the output circuitry, would have an additional receptor for inserting groups of signal outputs each linked (by the circuitry in the base unit) to one of the directional couplers. 74. Again, this is different from the prior art described in the Background to the Invention in that instead of having modular combined directional couplersplitters, in the second ‘aspect’ [of the invention] the directional couplers and splitter units are individually modular and the base unit has two kinds of receptors, one for directional couplers and one for splitter units. It is also different from the method of attaching components to the back board of the cabinet and wiring them together in that it provides a unit which can be plugged into the network and which contains circuitry and convenient receptors into which components can be inserted.” 39.In the context of claim 1, the receptor is connected to the circuitry of the base unit within which it is positioned. It receives a directional coupler and provides a means for plugging the directional coupler into the network and unplugging it from the network. Separation and insertion of the directional coupler 40.In one of the cited items of prior art the tap unit is in a sealed box. Technetix argued that where this is the case a directional coupler cannot be separable from or insertable into the base unit because the engineer must first open the box. To explain the argument, Mr Gamsa likened the directional coupler to a piston in a car engine. He said that a piston cannot be ‘insertable’ into a car when the bonnet must be removed and the engine dropped before the piston can be inserted. 41.I have no idea whether car mechanics talk to each other about insertable pistons. If they do, the obvious fact that there must be access to the right part of the engine before a piston can be inserted may or may not mean that absent such access, mechanics would reject the idea that the piston is ‘insertable’. It is not self-evident. 42.The more relevant point is that integer (7) is not concerned with whether it is physically possible to insert and remove the directional coupler from a receptor means in the base unit. The specification reads as if it is possible and evidence went forward, unsurprisingly, on that assumption. Integer (7) is about whether this can be done independently of the signal outputs, to which I turn next. Separation and insertion of the directional coupler is independent of the signal outputs 43. Integer (7) of claim 1 is important since it was added by Technetix in the proposed amendment to the granted patent expressly to overcome the acknowledged invalidity of the claim. It requires: “…the directional coupler means is separable from and insertable into the base unit independent of the group of signal outputs.” 44.The invention thus allows the directional coupler to be inserted into and removed from the base unit independently of the signal outputs. The advantage afforded by such independence is stated at page 2 of the Patent: “As the directional coupler is separable from and insertable into the base unit independent of the group of signal outputs, the signal levels of the outputs can be selected as required by an engineer according to need, and as the directional couplers are relatively small and inexpensive components, this ensures that the value and volume of items that an engineer needs to carry with him to provide the necessary variations in signal output required is substantially reduced.” 45.Two points of dispute arose. The first was whether the directional couplers in the tap unit must be separable from and insertable into the base unit independently of all the signal outputs or only some of them. 46.Integer (7) refers to the directional coupler and the group of signal outputs. This is a reference back the cable tap unit comprising various features, including integers (3) to (6) which require the presence of at least one group of signal outputs and a directional coupler means. It must therefore be possible to identify in the unit at least one directional coupler and also a group of signal outputs in a signal path running via that directional coupler (once inserted). That directional coupler must be separable from and insertable into the base unit independently of the identified group of signal outputs. It makes no difference whether or not the directional coupler is replaceable independently of other groups of signal outputs. I do not find the meaning of claim 1 ambiguous in this regard. That meaning is not modified or contradicted by anything in the description. 47.I note that whereas in his report Mr Bailey took the view that the skilled person would understand that the directional coupler must be replaceable independently of all signal outputs in order to gain the full advantage of the invention, in cross-examination he conceded that this view made no technical sense. 48.As the Patent specification states, there is an improved ability to service a tap unit if the directional coupler can be replaced independently of at least one group of signal outputs. No doubt the greater the degree of independence, the greater the improvement in serviceability, but that is by the way. 49.The second dispute was whether the claim on a normal construction excludes a tap unit in which the act of obtaining access to the directional coupler interrupts the signal from the directional coupler to the signal outputs. The example given, taken from one of the cited items of prior art, was a tap unit with signal splitters in the lid. When the lid is opened to replace a directional coupler, the signal via the signal splitters to the outputs is broken. 50.I see nothing in the claim or the description which would put such a tap unit outside claim 1 on its normal construction, assuming all other integers are present. The invention requires a signal path from an input to a group of outputs which will pass through splitters, but the skilled person will know that the path is necessarily interrupted by the removal of a directional coupler, during its replacement for instance. Mr Bailey confirmed this in cross-examination. So interruption of the signal path elsewhere at the same time, such as by opening the box lid and temporarily breaking the signal path to and/or from the splitters, would be seen by the skilled person to be irrelevant to compliance with claim 1.