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

The information made available by the MIT Disclosure was that which would have been seen by the skilled team on a hypothetical visit to watch the students’ game in action. There was no confidential, contractual or other restriction placed on anyone who was passing by. The nature of that information was inferred from a report written by one of the students, Bradley Gross, and from what can be seen in a video made by Mr Gross.

Battlekart’s pleaded case was that the MIT Disclosure did not disclose (i) two infrared LEDs as emitters, (ii) the use of a microcontroller, (iii) the presence of a server as opposed to an FGPA used by the MIT students (and (iv) the presence of a kart, which amounted to the issue of whether the skilled team would have found it obvious to scale up the MIT game to a system as claimed.

In closing, Battlekart directed its argument to scaling up. The MIT game used small toy karts. Battlekart’s counsel described them as being the same size as ‘Matchbox’ toy cars – so not ‘karts’ as that term would have been understood to be used in claim 11.

Scaling up was not strictly the issue. A skilled team considering how to improve the experience of regular karting would have had in mind improvements to full-sized karting. The point was whether the team would have thought it practical to introduce the Mario Kart features of the MIT game into conventional karting.

Mr Viant identified several reasons why he thought that such a project would have been seen as impractical, listing difficulties that would have to be resolved and emphasising in particular that karting with human drivers involves safety concerns not in issue with toy karts. He was strongly of the view that the skilled team’s CGK would be insufficient to resolve these difficulties.

There are two problems with this evidence. First, Mr Viant was assuming that the skilled team would not have known about BlackTrax. Secondly, although he said that the CGK would have been insufficient he did not identify the gaps in the CGK of the skilled team which would have been filled in by the Patent, unless he was thinking of Figures 5 and 7, discussed above.

Mr Densham of course had BlackTrax very much in mind. His evidence was that the skilled team would have introduced the features of the MIT game using BlackTrax or a similar tool and that this would have led to a system as claimed in the Patent. He agreed that there would have been safety concerns and that some testing would have been done but he regarded this as routine. He thought that the skilled team would have been confident of success.

Mr Densham’s evidence did not give much detail about the steps required to introduce the Mario Kart features of the MIT game into conventional karting. But as between his and Mr Viant’s evidence, Mr Densham was the more reliable source regarding the views and expectations of a skilled team that had watched the MIT game in action and wanted to improve conventional karting. In addition, his evidence was consistent with Mr Millecam’s evidence that the Chaos Kart project started with a prototype of a size something like the MIT game and that it had been scaled up using BlackTrax.

I find that claim 11 lacks inventive step over the MIT Disclosure.