Case No. IP-2016-000202

The prior art 51.Two items of prior art were cited: (1)United States Patent No. 5,058,198 (‘Rocci’), and (2)United States Patent No. 6,292,371 (‘Toner’). 52.Claim 1 was alleged to lack both novelty and inventive step over each of them. The law 53.There was no dispute about the law. As to novelty, I must apply the principles set out by Lord Hoffmann in SmithKline Beecham plc’s Patent (Synthon) [2005] UKHL 59; [2006] RPC 10, at [19]-[33]. 54.Inventive step 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.