IP-2024-000061 - [2025] EWHC 1936 (IPEC)

In law, the information disclosed at the Battlekart Disclosure was that which a member of the public attending the event in Mons could have seen. No issue arose as to whether it should be assumed that any sort of technology would have been used by such a person during their observations. The issue was what would have been seen by the naked eye. The defendants relied on 5 videos shot on various dates to evidence what an attendee would have seen. It was accepted by Battlekart that the five videos provided such evidence.

Battlekart pleaded that the following integers of claim 11 were neither disclosed nor made obvious by the Battlekart Disclosure. The integers are set out in full above and are here summarised:

Battlekart argued that the Battlekart Disclosure would not have enabled the skilled team to build a system as claimed.

The skilled team included a systems engineer with practical experience in location tracking systems and a software engineer with knowledge of location tracking algorithms. The question on enablement was whether there is any information provided in the Patent which is lacking in the CGK and if so, whether that lack of information would have meant that the skilled team could not have created a system covered by claim 11.

In his first expert report Mr Viant largely endorsed Battlekart’s pleaded case but, presumably in respect of integer 1(F), he said that the Battlekart Disclosure does not disclose ‘a distributed-rending projection system’, words that do not appear anywhere in claim 11. He did not say that there was no disclosure of a server that coordinates image projection and the location of the kart. Battlekart’s pleading did not dispute that a projection system within the meaning of integer 1(E) was disclosed in Mons.

With regard to information said to be in the Patent but not the CGK, my attention was drawn to what Mr Viant had said in re-examination. He referred to Figure 5:

Figure 5 shows the components of the projection system. Mr Viant explained what it tells the reader:

Mr Viant expanded on this:

I understand blending to be the combining of multiple projected images into a coherent single image. No point was raised about what seems to have been a self-evident need for blending if the skilled team is using more than one projector. Mr Viant’s evidence came down to saying that the known idea of blending was represented in Figure 5 but the reader of the Patent would have had to conduct what may have been difficult experiments to find the right algorithm to achieve satisfactory blending in practice.

The Patent does not tell the reader what the right algorithm is, guide the reader thorough the difficult experiments or otherwise tell the reader how to get the right algorithm. Since the skilled team is a Catnic team and there is no pleading of insufficiency, I must conclude that the team would have been able to find a suitable algorithm by applying their CGK. There can have been no inventive step involved in doing so.

I note that it appears to have been Mr Viant’s view that the inventive step in the whole endeavour recorded in the Patent was to do with finding the right algorithm, although I cannot be sure from an answer in re-examination. But if that is right, the invention of claim 11 does not embody an inventive step.

Also and aside from anything else, claim 11 covers a system in which just one image is projected. Blending successfully is not part of the claimed invention.

As the re-examination continued Mr Viant was specifically asked about his term ‘distributed rendering’. He referred to Figure 7 which also shows the projection system:

Mr Viant said that distributed rendering was described in the passage of the Patent which explained Figure 7, although not referred to by that name. In its written closing submissions Battlekart placed reliance on this part of the re-examination in support of its contention that the Patent disclosed information which was not part of the CGK. This is the relevant passage:

If Mr Viant was saying anything there that he had not already said in his reports or in cross-examination, about which I am not at all clear, I unable to draw anything from that answer which seems relevant to the issue of inventive step.

Going back to the integers of claim 11, in closing the argument that integer 5(A) (the microcontroller) was neither disclosed nor obvious was not pursued by Battlekart.

That leaves (a) the tracking system, (b) at least two electromagnetic emitters on the kart one of which must be an IR emitter and (c) a sensor with a camera capable of detecting IR radiation as the matters which, according to Battlekart, together constituted the key information disclosed in the Patent but which was not part of the CGK.

The defendants’ case was that the skilled team would have decided to use a tracking system like BlackTrax. Mr Densham’s evidence was that the skilled team, seeking to make a better karting experience and influenced by the prior art, would have seen the need for a tracking system and would have used BlackTrax or alternatively one of the other two tracking systems he referred to in his evidence.

Mr Viant’s point was that the skilled team would have known nothing about BlackTrax or similar tools but I have found that Mr Viant was not correct in that regard. Mr Viant was in no position to say whether the skilled team would have tried any of them, if so which, or how they would have assisted in the project. He had never heard of them before reading Mr Densham’s evidence because live experiences with moving items, i.e. the sort of entertainments and spectacles which require a tracking system, are not his field.

Mr Densham said that any or all of the tracking systems would have been tried. I have no reason to doubt Mr Densham’s evidence on this. I find that it would have been obvious to the skilled team to try any of the three tracking systems mentioned by Mr Densham with a reasonable expectation that it would significantly assist in creating a more engaging karting experience. For convenience I will assume that the skilled team would have gone forward using BlackTrax.

As Mr Densham explained, BlackTrax is a tracking system that uses IR transmitters on the object to be tracked. Optionally, any of one to three IR LEDs can be used. The emitted IR radiation is detected by a camera.

The one feature that the skilled team would have to adopt in order to perform the invention of claim 11 was to select the option of two or three IR LEDs for the kart when using BlackTrax.

Mr Viant said in his report that using one emitter would be the simplest approach and that it would not have been CGK to use two. In cross-examination he conceded that it would have part of the CGK that using one or two IR emitters were alternatives, each of which had pros and cons. He then said that whether it was obvious to use two depended on the ‘domain’ of use. Counsel pressed Mr Viant for some time, quite fairly, to explain what it was about the domain of the invention that would have made the use of two IR emitters not an obvious option within the CGK. I found Mr Viant’s answers both evasive and unpersuasive. If he was to make his point good, he needed to set out his reasoning properly. He did not.

Mr Densham pointed out that using either two or three IR emitters was an off-the-shelf option with BlackTrax and added that using two or three offered the twin advantages of redundancy and improved detection of orientation. He maintained this in cross-examination.

Mr Densham was the more convincing on this topic and I accept his evidence.

In my judgment a skilled team which had attended the Battlekart Disclosure would have thought it obvious at the priority date to use BlackTrax as a tool to create an improved karting experience something like the one presented by Battlekart. Choosing to have two or three IR LEDs on the karts would have been a readily available and obvious option. Claim 11 lacks inventive step over the Battlekart Disclosure.