Intellectual Property Enterprise Court

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

Fecha: 25-Jul-2025

The skilled team in this case

The skilled team in this case

53.

The Patent discusses the prior art and provides a guide to the field of the problem in the present case:

‘Current karting systems comprise a track marked on the floor and karts which drive on this track.

Unfortunately, the track is materialised on the floor by stationary elements, which take a long time to install and a long time to remove, like paint or stickers. It is therefore not possible to quickly change track in a given place.

Furthermore, karts can collide with each other or with stationary objects.

Furthermore, the karting race is fun but repetitive, and karting in one single kart is barely any fun.

The invention therefore aims to propose a system for creating an environment which enables the implementation of a karting system which has none of these problems.’

54.

The reader of the Patent is there told that conventional karting is fun but has the stated disadvantages which the invention aims to solve. It implies that the starting point, the technical field of the problem, is the field of conventional karting. As appears later from the specification, the solution is said to lie in using techniques such as projector and locations systems and using software which controls them. All of these were known and exploited in the immersive entertainment industry, which could be seen as a technical field remote from conventional karting.

55.

Mr Viant, Battlekart’s expert, said:

‘35. The Patent could have been of interest to readers in related industries. However, there are significant differences between each of these industries and the Patent. In my opinion, the closest related industries to the field of the Patent would have been:

35.1.

The karting industry, i.e. companies specialising in making and operating karts and karting tracks. The Patent is a development from traditional karting systems. However, the Patent adds specialised technology from other fields which would have been wholly unfamiliar to the karting industry.

35.2.

The video game industry. The use of a server to implement a virtual world interactable by players is clearly similar to a computer game. At the Relevant Date, the video game industry was interested in AR gaming, and some consoles and peripherals such as the Xbox Kinect had motion tracking capability. However, the video game industry did not design systems at the same scale as the Patent, with players generally viewing games through a computer screen and interacting with them in small spaces whether through a controller or other means such as hand gestures.

36.

In summary, the Patent is too technologically sophisticated to be of interest to the karting industry, and too large-scale to be of interest to the video game industry.’

56.

It seems that in Mr Viant’s opinion the Patent would have been of practical interest to no one, which is not altogether helpful. Such an opinion may have had its origin in the idea of setting up an argument that this is a Schlumberger type case, as pursued in submissions. Mr Viant continued:

‘38. A skilled team would be required to carry out the teaching of the Patent. The skilled team must however be realistic. As I will explain below, MR karting systems similar to the BK system did not exist at the Relevant Date, and hence there was no industry which specialised in designing such systems. … the skilled team would have to be comprised of generalists with knowledge across their field of technology and some practical experience, rather than specialists with detailed expertise in narrow areas. The members of the skilled team would likely come from the karting or gaming industry, as described above.’

57.

Despite what Mr Viant had said earlier, apparently he was instructed that in law the skilled team had the collective CGK to implement the invention using the information contained in the Patent: a Catnic team. There was no single field from which a skilled person could be drawn so there would have been a team drawn from different fields.

58.

Mr Viant went on to say that the team would be led by a systems engineer. Additional necessary expertise would be provided by a software developer having practical experience of the gaming industry and also a hardware engineer who would design or modify karts to make them suitable for use in an XR karting system. He added:

‘[The team’s] work sits between the hardware engineer and software developer, requiring the systems engineer to have a good overview of the entire project and all the subsystems within it.’

59.

Since Battlekart apparently had a plan to press for a Schlumberger approach to the present case, as counsel’s submissions implied, it would have required evidence from an individual drawn from their chosen field, the field of the problem, i.e. conventional karting. Mr Viant was not the man for that job.

60.

Mr Densham for the defendants said:

‘27. Shoosmiths has explained to me that the skilled addressee (sometimes referred to as the person skilled in the art or skilled person), is the individual or team who is likely to have a practical interest in the subject matter of the relevant patent as at the priority date and has practical knowledge and experience of the kind of work in which the invention is intended to be used. Shoosmiths has explained that he/she/they are deemed to have specific attributes. In particular, they are deemed to have the common general knowledge of those working in the field to which the patent relates but have no inventive capacity.

28.

Given the problem posed by the patent, as at the priority date the skilled addressee is likely to be a team in the amusement park or immersive entertainment industry. …’

61.

Mr Densham’s paragraph 27 is consistent with a Catnic approach to finding the relevant skilled team. His paragraph 28 seems to go instead for a field of problem team which he identifies as the field of the amusement or immersive entertainments industry, giving no reason why this is the correct field although it is close to his own field of experience. He did not say that he had been advised by lawyers that it was legitimate to approach inventive step from the perspective of a skilled person in the field of the solution. Nor did he express the view that having read the prior art, he believed that this would have been the amusement or immersive entertainments industry and that he did not believe that a skilled person would have thought it worthwhile to consult anyone else.

62.

In submissions counsel for both Battlekart and the defendants cited Illumina as setting out the correct approach to identifying the skilled term for inventive step – a field of problem team.In fact, Battlekart emphasised the danger of going outside the perspective of the field of problem team when considering inventive step.

63.

In his second report Mr Densham, possibly reflecting a tactical shift by the defendants, agreed with Mr Viant’s final characterisation of the skilled team. It is on any view a Catnic team.

64.

Not only that, at least by the time of his second report Mr Densham raised no difficulty with the further details suggested by Mr Viant. They were:

(1)

The systems engineer would have ‘practical experience in location tracking systems, projection systems, and embedded and integrated systems’.

(2)

The software engineer would have ‘knowledge of computer graphics, computer simulation, distributed architectures (i.e. software running across multiple connected hardware devices) and location tracking algorithms, and likely with practical experience of the gaming industry’.

(3)

The hardware engineer would have the ability to ‘design or modify karts to make them suitable for use in an XR karting system’ and experience of ‘other hardware components, so that they can assist the systems engineer to bring together the different components of the hardware and software to form a functional commercial product’.

65.

I must go with the evidence. The skilled team is a Catnic team with the characteristics set out in the preceding paragraph.