DE007
40.The abbreviated number given to this Utility Model was more glamorous than its content. DE007 begins: “The invention relates to a transportable signboard for barriers, warning signs, or traffic signs, henceforth simply ‘signboard’, in particular for use at work sites on roads and expressways, and to a mobile signboard device having such a signboard.” 41.The prior art is discussed, in particular traffic signs permanently fastened on to vehicles or trailers. DE007 points out that maintaining the vehicles can be expensive. The idea of the invention is to put signboards on to a skid-mounted undercarriage. The signboard is easily loaded and unloaded from a vehicle so that fewer vehicles are needed to transport many different types of signboard. Figure 1 illustrates the idea:
42.Although the advantage would be maximised by offloading the signboard for use at a site, thereby allowing the vehicle to be used to transport other signboards, DE007 is clear that the signboard can be used while on the vehicle in motion behind a mobile work site: “Moreover, it is possible for the signboards on the transport vehicle to be driven behind a mobile work site.” 43.The transport vehicle can be either a motor vehicle or a trailer. The upper diagram of Figure 1 shows a display panel, explained in the specification this way: “On the top panel part 1, there are two flashing warning lights 11 as well as several flashing lights 12, which can be interconnected to represent a leftward or rightward pointing arrow or a diagonal cross.” 44.Mr Keay made the following points. First, the main thrust of DE007 was a means to transport the signboard easily from place to place and that in use it would be stationary. It therefore fell outside his definition of ‘mobile warning device’. 45.Secondly, he pointed to the experts’ misgivings about the usefulness of an embodiment of DE007. Dr Meseberg thought that the idea of using it on a moving vehicle was faintly ridiculous. Mr Knight accepted that it could move around on its skids while the vehicle was in motion, which would be very dangerous if it happened. But he did not accept that it would be unsafe to use the device. It would be the driver’s responsibility to ensure that the device was secured, although he could not rule out that there would still be a risk. Mr Knight doubted that such a device would have been approved for use in the UK if used in motion. 46.Thirdly, DE007 did not show a constant red cross. 47.Fourthly, Mr Knight said that the only things in DE007 that would interest a skilled person in January 2004 were the chevrons on the signboard and the skids. 48.In short, the differences between DE007 and claim 1 of the Patent were that (a) it was not a mobile warning device and (b) it did not display a constant red cross. It would not have been obvious to modify DE007 to incorporate those two features because DE007 would have been dismissed as a starting point for modification because it was unsafe to users and unlikely to satisfy the UK regulations. 49.Mr Keay’s difference (a) falls away because I do not accept the limited definition of ‘mobile warning device’ on which it depends and even if I had, DE007 discloses, by way of an option, use of the signboard on a vehicle in motion. 50.Mr Knight’s answer regarding what in DE007 might have interested the skilled person does not establish what was obvious over DE007. 51.The only relevant question is whether it would have been obvious to modify DE007 so that it could display a constant red cross as well as and by way of alternative to, flashing yellow arrows. 52.If it was technically obvious to adapt DE007 to make a device that falls within claim 1 of the Patent, that does not cease to be the case because the adapted product would be unsafe in use or would not meet regulatory approval. Also, while Mr Knight accepted the possibility of a risk if DE007 were used while in motion, he expected that the driver would fix it securely. Furthermore this risk, such as it was, depended on DE007 being used in motion. As I have said, claim 1 is not limited to devices which are used only in motion. 53.Mr Knight’s evidence was that it would be obvious to adapt DE007 to have it show a constant red cross as well as flashing yellow arrows. His reason was simple: DE007 displayed a cross in a manner which was not conventional in the UK. The obvious adaptation to go for would be one which displayed the cross in a manner familiar to UK road users from signs on overhead gantries and from other stationary signs: a constant red cross. 54.Dr Meseberg’s principal points in his report were that the skilled person would not think it worthwhile starting with DE007 and that it would not have gained regulatory approval. He also said that DE007 did not disclose use of the device on a vehicle. This last point was clearly incorrect. DE007 expressly disclosed this as an option. In crossexamination he continued to be dismissive of DE007. For the reasons discussed, I do not believe that the skilled person’s reservations about safety risks or regulatory problems, to the extent they existed, were relevant to the question whether it was technically obvious to adapt DE007 to create something that would fall within claim 1 of the Patent. 55.I accept Mr Knight’s evidence that the UK-based skilled person would think it obvious to modify DE007 to display a constant red cross or alternatively flashing yellow arrows because those were conventional signals in this country. 56.I have found that the skilled person would have known how to achieve this as part of his common general knowledge, using LEDs of two colours in the spotlights. Mr Aikens said it went further and that Horizont had admitted that it was part of the common general knowledge of the skilled person to use bi-coloured LEDs, i.e. single LEDs capable of emitting two alternative colours. That is not how I read the Amended Defence. However, claim 1 of the Patent in obvious over DE007. 57.The additional feature of claim 4 is that at the end of each arm there is an additional spotlight. Upon activation, the four extra spotlights flash in pairs. Mr Knight said that it would be obvious to add these spotlights because to do so would implement an arrangement used on gantries and as required by one of the UK regulations. The arrangement would have been familiar to UK road users. I accept that evidence. It was not in dispute that the skilled person would have found it technically easy to achieve this arrangement. Claim 4 is obvious. 58.Claim 5 requires that the two upper additional spotlights of claim 4 are individually attached to the upper edge of the board, outside the board surface. This was described as the ‘frog eyes’ configuration because of its appearance:
59.Mr Keay’s argument was that there was no evidence that the frog eyes idea had ever been implemented. This is what Dr Meseberg said, but it does not establish that it was not obvious to have frog eyes, only that no manufacturer seems to have wanted to make such a thing, possibly for marketing reasons. Mr Knight said in his report that if the board was not big enough to accommodate the extra spotlights at the top, the two obvious solutions were to increase the size of the board or mount the spotlights on protrusions, as shown in Figure 4. He was not challenged on this. I accept Mr Knight’s evidence. Claim 5 lacks inventive step. 60.Claim 6 requires that the warning lights are LED spotlights with separate LED arrays for permanent and flashing light. Given what I have found above, claim 6 lacks inventive step. Pederson 61.Pederson discloses an LED warning signal light comprising an array of light sources configured on a support. It provides various coloured light signals for use by an emergency vehicle, typically such as found on the roof of a police vehicle or ambulance. A device of that type would not fall within claim 1 of the Patent. However, in one embodiment the device can be separated from the vehicle and mounted on a support, remaining connected by cable to the vehicle or other power source:
62.It was not in dispute that such a device could be programmed to display a wide variety of signals, including a constant warning cross or alternatively flashing directional arrows. It was also common ground between the experts that the devices as shown in Pederson would not produce sufficiently visible signals to function as a device suitable for directing road traffic. The device would have to be scaled up and put on a vehicle. 63.Dr Meseberg’s evidence was that if the device was made large enough to provide signals sufficiently visible and distinct to be suitable for directing road traffic, its size would be impractical to be used when mounted on a vehicle. This was a matter which fell more within Dr Meseberg’s expertise than Mr Knight’s, as Mr Knight acknowledged. 64.I accept Dr Meseberg’s evidence. It would not have been obvious to modify Pederson to make an embodiment within claim 1 of the Patent. None of the claims of the Patent lack inventive step over Pederson. The Nissen Board 65.Nissen relied on the prior use of one of its own traffic warning devices. Horizont did not deny that the Nissen Board had been made available to the public before the Patent’s filing date. Nissen relied on a particular configuration, given the number 225/228, which had a yellow LED display. Mr Karwin gave evidence about it and his witness statement included this image of 225/228, which in use would be mounted on to the back of a trailer:
66.Mr Karwin said that unless the customer specified otherwise, the product was supplied with the full library of possible signs, which could include a cross or flashing yellow arrows. 67.Mr Keay argued that it was not within claim 1 of the Patent for two reasons. First, it was stationary in use. I have rejected the construction of claim 1 on which this argument depends. Secondly, because the Nissen Board had only yellow LEDs, it could not be programmed to display a red cross. 68.Mr Knight said in his report that the (UK based) skilled person would regard the Nissen Board as being of little use if it could display signs in yellow only. Therefore it would have been obvious to incorporate red LEDs to allow the optional display of a red cross. He was not challenged on this. In cross-examination Dr Meseberg accepted that there would have been no technical difficulty in modifying the Nissen Board to show a constant red cross or alternatively flashing yellow arrows. 69.I think the position on inventive step is much the same as in relation to DE007. The skilled person would have actively wanted a device which created signs familiar to UK road users, in particular a constant red cross. There was no technical barrier preventing the skilled person from being able to achieve that goal, along with flashing yellow arrows. Claim 1 lacks inventive step over the Nissen Board. 70.The arguments with regard to claims 4, 5 and 6 were the same as those advanced in respect of DE007 save, Mr Keay added, that claim 6 requires spotlights and the Nissen Board does not group its LEDs into spotlights. This, I assume, was taken from what Dr Meseberg had said in his report. But in cross-examination Dr Meseberg agreed that if the skilled person wanted to improve visibility, it could be easily done by using the LEDs in a spotlight arrangement. 71.All of the claims of the Patent lack inventive step over the Nissen Board.