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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Bose Corporation v Freebit AS [2018] EWHC 889 (Pat) (24 April 2018) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2018/889.html Cite as: [2018] EWHC 889 (Pat) |
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Neutral Citation Number: [2018]
EWHC
889
(
Pat)
Case No: HP-2017-000033
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
PATENTS
COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Date: 24/04/2018
Before :
MR ROGER WYAND QC
SITTING AS A DEPUTY HIGH COURT JUDGE
- - - - - - - - - - - - - - - - - - - - -
Between :
|
(1) BOSE CORPORATION (2) BOSE LIMITED |
Claimant |
|
- and - |
|
|
FREEBIT AS |
Defendant |
- - - - - - - - - - - - - - - - - - - - -
- - - - - - - - - - - - - - - - - - - - -
MR DANIEL ALEXANDER QC AND MR HENRY WARD (instructed by Simmons & Simmons LLP) for the Claimants/Part 20 Defendants
MR HUGO CUDDIGAN QC and MR CHRIS AIKENS (instructed by Innovate Legal) for the Defendant/Part 20 Claimant
Hearing dates: 26, 27 and 28 February, 1,2 and 6
March 2018
- - - - - - - - - - - - - - - - - - - - -
Judgment Approved
Roger Wyand QC, Deputy High Court Judge:
1.
This is a patent
infringement action. As sometimes happens, it was
started as an action for a declaration of non-infringement of two
patents
of
which the Defendant is the proprietor and a declaration that the
patents
are
invalid. The Defendant counterclaimed for infringement. It was agreed by the
parties that it would be treated as a conventional
patent
infringement action
with a counterclaim for invalidity.
2.
The Defendant has consented to the revocation of one of the patents.
There is an application for a conditional amendment to the other
patent.
The
invalidity case is based on a prior publication by the Defendant by the supply
and/or sale of a product, the Freebit H1, which is said to be an anticipation,
and anticipation by and obviousness over a US
patent
application, US
2002/0096391, Smith. If the primary prior publication case is made out, it is
accepted that the
Patent
is invalid and the conditional amendment will not cure
the invalidity. There are also objections of added matter in the claims as
granted and lack of clarity and added matter in the proposed amended claims.
Subject Matter
3.
This action concerns European Patent
2177045 (“the
Patent”).
The title
of the
Patent
is “Improved Earpiece”. The earpiece of the
Patent
is an
‘in-ear’ as opposed to an ‘over the ear’ device, particularly suitable for use
with mobile devices such as mobile telephones or portable music players and the
like, although the
Patent
covers use for more specialist equipment such as
hearing aids. It is intended to provide an earpiece that is more comfortable
and more stable than prior art devices. There are 5 claims but claims 2 to 5
are dependent claims and no independent validity is claimed in respect of any
of them. The only relevant claim for validity is claim 1.
The Human Ear
5.
The following parts are important for understanding the claims of the
Patent:
i) The curved ridge around the outer edge of the top half, called the anti-helix;
ii) The raised ridge of cartilage running outwards from the head, called the crus-helias;
iii)
The hollow bowl shaped region called the concha (referred to in
the Patent
as the ‘ear mussel’). It is divided into the cymba-concha
and the cavum-concha by the crus-helias;
iv) The tragus and anti-tragus with the inter-tragal notch between them; and
v)
The ear canal, shown on the diagram as a dark patch,
which is
partially hidden by the tragus.
The Patent
6.
The priority date of the Patent
is 1st June 2007. The
Patent
is a commendably brief document, the specification occupying just over three
columns of description and another column of 5 claims. The first column headed
“Background Information” of just over one column refers to prior art earpieces
and their problems. These problems can be summarised as:
i) The use of a bow for the earpiece and attached microphone, which is not good for use with mobile devices;
ii) The use of an ear plug in the ear canal which suffers from the variability of the size of people’s ear canals making it difficult to mass produce ear plugs to fit a range of people. They also tend to feel uncomfortable and block ear wax in the ear canal;
iii) Devices which are retained in the ear by applying outward forces to the inner parts of the ear cavity cause discomfort.
9. Claim 1 as broken down into integers by the Claimants’ expert is as follows:
(i) Ear unit for stable fittings in an ear,
(ii) wherein said ear unit (10) is shaped as a decremental curve,
(iii) in that said decremental curve (9) of the outer part of the ear unit (10) corresponds to antihelix (13) of the ear
(iv) with a surface shaped in such a way that the curve falls along the inner part of the antihelix (13)
(v) and is partly positioned under antitragus (3),
(vi) and that the distance between the ends (5, 8) of the decremental curve is approximately equal to the distance between a first cavity formed under the tragus (4) of the ear and second cavity covered by the lower node (15) of the antihelix of the ear,
(vii) the upper part of the curve projecting in underneath a flap (2) covering the lower part of the second cavity,
characterized in that
(viii) said ear unit has a curvature providing an improved attachment in that
(ix) said curvature follows the inner surface of the ear mussel (22) to provide a contact surface,
thereby enabling the ear unit to fit closely against the ear mussel when the ear unit (10) is positioned into the ear.
12.
The Patent
explains that although the outer part of the ear differs from
person to person these differences are not so great as with the ear canal, so
that only 2 or 3 different sizes will be necessary to cater for the
differences. It also states that investigations show that a contiguous line
in the form of a decremental curve will fit in to the ear of nearly everyone.
13.
The pre-characterising part of the claim is the subject of an earlier
patent
by the same inventor and this design is referred to as Berg 1, being the
name of the inventor. The post-characterising part of the claim specifies a
second curve which is said to be formed in such a way that it follows along
the inner surface of ear mussel when the ear unit is positioned into the ear.
This contact surface provides further stability since a larger area is placed
against the ear mussel, and thereby increased comfort.
The Proposed Conditional Amendment
16.
Freebit proposes an amendment to claim 1 of the Patent
in the event that
claim 1 is held to be obvious or anticipated by Smith. It is accepted by
Freebit that the amendment would not assist if claim 1 is held invalid by prior
publication of the Freebit H1 device.
The Witnesses of Fact
19.
Freebit called two fact witnesses who were cross-examined in respect of
the alleged prior publication, Mr Vidar Sandanger and Mr Richard Steenfeldt
Berg. Mr Sandanger is the Chief Executive Officer of Freebit and Mr Berg is
the inventor of the Patent.
Both witnesses are Norwegian. They both speak
English well and gave their evidence in English. They had a little difficulty
with the precise meaning of some English words but I do not believe this
affected their evidence adversely.
23. It is open to the Court to draw adverse inferences from the silence or absence of a witness who might be expected to have material evidence to give on an issue in an action (see the principles set out in Wisniewski v Central Manchester Health Authority [1998] PIQR 324 at 340 pre Brooke LJ). In this case I do draw an adverse inference from the absence of these potential witnesses.
24.
When, as here, there is an allegation of prior publication by the
patentee,
it is particularly important that the
patentee
puts the best evidence
before the Court. It is not enough for the
patentee
to sit back and say the
onus is on the party alleging prior publication. The
patentee
is the party
with the best access to the facts and it is incumbent on them to establish
those facts either by documents or witness evidence or both once a case to
answer has been raised.
“I have been asked to clarify briefly my involvement in this
case for Freebit. I was first contacted by Mr Sandanger about this case in
September 2017, when I was told by Mr Sandanger about a case involving Bose and
Freebit was taking place in the UK. Mr Sandanger told me that I might be asked
to help at some stage. I was not contacted again to help with the case until
mid-January 2018
when Mr Sandanger put me in touch with Freebit’s solicitors,
Innovate Legal, with a view to me giving written evidence.”
26.
In cross-examination it emerged that Mr Berg had been approached by Mr
Asle Berger in September 2017. He had about six meetings with Mr Berger about
this case. Although he could not recall exactly what they had talked about, he
did recall that he had been asked by Mr Berger what he could remember about things
back in 2006. He was hired as a consultant in about October 2017 and at that
time there was no talk of him being a witness. At the last meeting, in January
2018
there was talk about him being a witness and they stopped considering him
as a “helping consultant for research”.
The Experts
The Skilled Person
32.
Both of the experts are audiologists although neither of them were
involved in the field of consumer electronics before the priority date of the
patent.
There is nothing inventive in involving an audiologist in the design
of an earpiece for consumer electronics but I do not think that it makes any
difference in this case. I believe that the
Patent
is directed to the person
in the consumer electronics field who would, if necessary, consult an
audiologist.
The Common General Knowledge
The Law of Construction
35.
The approach of this court to the construction of patent
claims is now
well-established. For present purposes, it is sufficient to refer to the
following summary provided by Jacob LJ in Virgin Atlantic Airways Ltd v
Premium Aircraft Interiors Group [2009] EWCA Civ 1062; [2010] RPC 8, in
the main interpreting the judgment of Lord Hoffmann in Kirin-Amgen v
Transkaryotic Therapies (No.2) [2005] 1 All ER 667[1]:
“(i) The
first overarching principle is that contained in article 69 of the European
Patent
Convention.
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively—the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone—the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When
ascertaining the inventor's purpose, it must be remembered that he may
have several purposes depending on the level of generality of his invention.
Typically, for instance, an inventor may have one, generally more than one,
specific embodiment as well as a generalised concept. But there is no
presumption that the patentee
necessarily intended the widest possible meaning
consistent with his purpose be given to the words that he used: purpose and
meaning are different.
(vi) Thus
purpose is not the be-all and end-all. One is still at the end of the day
concerned with the meaning of the language used. Hence the other extreme of the
Protocol—a mere guideline—is also ruled out by article 69 itself. It is the
terms of the claims which delineate the patentee's
territory.
(vii) It
follows that if the patentee
has included what is obviously a deliberate
limitation in his claims, it must have a meaning. One cannot disregard
obviously intentional elements.
(viii) It
also follows that where a patentee
has used a word or phrase which,
acontextually, might have a particular meaning (narrow or wide) it does not
necessarily have that meaning in context.
(ix) It further follows that there is no general ‘doctrine of equivalents’.
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement none the less falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.”
36.
I shall adopt these principles in construing the Patent.
Issues of Construction
38.
Freebit submits that the requirements of the claim are satisfied by a
product which adopts the required curvature when placed within the ear.
Freebit says that a resilient ear unit which provided for the curvature and
associated contact surface by its flexibility and resilience achieves the
benefit of the invention for the reasons set out in the patent
and so it is
inherently unlikely that such a limited construction was objectively intended.
39.
I cannot accept this. There is no suggestion in the Patent
that the
‘shaping’ can be done by the ear itself. The shaping is required in order for
the ear piece to be able to fit into the ear. The concept of pushing something
into the ear for it to take a shape complementary to the space in the ear is
totally different to the disclosure of a shape which enables the unit to fit
closely to the ear mussel. It is the shape that is important in the
Patent
and
not the material from which it is to be made. The shape of the curve enables
the ear unit to fit closely against the ear. The ear unit must have that shape
before it is inserted into the ear.
40.
One of the aims of the Patent
is to improve over the prior art which
involved the ear unit pressing against the ear causing discomfort. That
teaches against using an ear unit of flexible material that is not shaped appropriately
but adopts the shape by being compressed into shape by the ear when it is
inserted.
42.
Both experts agree that decremental is not a term of art. In the
context of the specification and particularly Fig. 1 of the Patent,
I do not
think that this is intended to be a very precise term but rather is intended to
indicate a curve that generally follows the form of the antihelix in having a
decreasing radius along the curve. It is not intended to indicate a regular
decrease but rather to be a reasonable fit to an average human antihelix. On
the other hand, I believe that the curve must be continuous and cannot have
gaps in it. It must be shaped to fall along the inner part of the antihelix
and does not do so if it only touches the inner part of the antihelix at
various points on the antihelix.
44.
Bose argues that the purpose of this feature is to keep the earpiece in
place thereby enabling the hearing element to be kept somewhat away from the
ear canal. However, this feature is not part of the claim. The purpose of
this curvature is clear from [0021] of the Patent
which states: “This
contact surface provides further stability since a larger area is placed
against the ear mussel, and thereby increased comfort”.
47.
Bose say that an incision means something that is ‘cut in’ to the
device, referring not only to the shape but also to how the shape was created.
In the context of the specification and the drawings I do not think that the
skilled person would think that this was what the patentee
had intended. In
the context I believe that this should be taken to indicate a shape in the
nature of an incision rather than a shape having been produced by cutting. It
is clear how the ‘incision’ is intended to co-operate with the intertragic
notch and the meaning is clear.
The Alleged Prior Publication
50.
Freebit say that there were three models of the H1, Type A, Type B and
Type C. On the 24th November 2017, in response to a Request for
Further Information, Freebit stated: The internal electronics may have
undergone revision, but the Defendant believes that there was only a single
shape of the H1 Product. The Statement of Truth on this response was signed
by Mr Sandanger. This response was subsequently amended on the first day of
the trial to read: There were three types of the H1 Product, namely types A,
B and C. To the best of the Defendant’s recollection, the design of the shape
of types A and B was the same, the only difference between them being the
internal electronics. Types A and B had an ear interface made in accordance
with Berg. The design of the shape of type C was different to both type A and
type B. Type C was made in accordance with the claims of the Patents.
The Chronology
53. A short summary of the most relevant dates is as follows:
Date |
Event |
1/11/2000 |
Filing date for priority document
for the Berg 1 |
2003 |
Mr Berg sells Freebit project to Metafax |
2005 |
Metafax decides to go ahead with project, Pedersen engaged to digitalise Berg’s design |
12/2005 |
Pedersen sends CAD drawings to Keumbee and Berg visits Keumbee in South Korea |
13/03/2006 |
Board Minutes – website for Freebit will be prepared in co-operation with Asono |
May/June 2006 |
Preparation of user guide started. Berg asks Keumbee to reduce height of C-curve at mid-point. Berg not happy with result and not incorporated into product |
17/08/2006 |
Board Minutes – 200 pieces to be delivered 30/09, 3000 on 4/10 and 2000 on 11/10 2006 |
12/2006 |
Berg instructs Pedersen to produce CAD drawings incorporating the second curve |
8/12/2006 |
Board Minutes – plan is that 1000 type A Freebits will arrive for Christmas and 1000 new improved type B will arrive in the New Year |
18/12/2006 |
First recorded shipment into Metafax warehouse at Oslo airport. Earliest cached web page on Wayback Machine offering H1 for sale. |
01/2007 |
Sandanger joins Metafax as CEO. New product with second curve shown to Sandanger who is enthusiastic. Keumbee told to halt production of H1 to replace with new product. |
02/2007 |
Decision to file for |
7/02/2007 |
Record of third shipment to Metafax warehouse |
12/02/2007 |
First sale of H1 unit by Power |
15/02/2007 |
Board Minutes – errors in type B. Invites plan for development of next Freebit product. |
16/02/2007 |
Article about Freebit H1 published. Said likely to be type A or B |
End Feb or beginning Mar 2007 |
Berg says only batch of type B arrived and most shipped back |
19/04/2007 |
Board Minutes – type B for repair to new type C, delivery expected approx. 20/05 |
05/2007 |
Metafax instruct ![]() |
16/05/2007 |
Board Minutes – return of type C after repair expected next week. |
1/06/2007 |
Priority date of ![]() |
7/06/2007 |
Records show shipment to Metafax warehouse. |
57.
During cross-examination the picture below was put to Mr Berg. It was a
picture produced in evidence that he had put before the US Patent
and Trademark
Office in proceedings there and it was said to show how the first Berg
patent
worked. It shows the decremental curve and shade B is said to be the contact
area in the concha.
58. It was put to Mr Berg that this showed a curve in the Z axis.:
“And there is curvature in the Z direction?
9 A. Yes, ever so slightly, I would add in.
10 Q. It is true, is it not, that every Freebit that has ever been
11 produced had some Z axis contouring to make it fit better
12 against the concha?
13 A. Not per se with that main objective. The main objective to
14 have this slight waning, as I would call it, still looking at
15 this picture, is to hit the antihelix better according to
16 where we want to have position at the bottom of the same total
17 overall structure. The very contact surface around the middle
18 section of the flow of the C structure is not that important,
19 for the main reason that the material needed on the outside of
20 the tragus notch to keep it out of the ear canal also keeps it
21 away from the lower part of the bottom of the concha.
22 Q. Right, but leave aside the purpose of it, the answer to my
23 question is correct, is it not, that it is right that every
24 Freebit produced had some Z axis contouring to make it fit
25 against the concha?
BERG - ALEXANDER
A. Yes, to make a fit. That to me, my Lord, is a purpose phrase.
3 That is not what it is all about.”
59.
There is a further relevant piece of evidence which is the Asono website
which was published in 2006. Images were obtained from the Wayback Machine
which are high definition pictures of a Freebit ear unit and can be compared
with Fig. 5 and part of Fig. 2 of the Patent:“
64.
On the balance of probabilities I find that all of this establishes that
there was a second curve as required in the post-characterising part of the
claim present in the type A and/or type B ear units and there was a prior
publication by the supply of these units before the priority date of the
Patent.
I am unable to determine whether the type C ear units were made
available in Norway prior to the priority date due to the paucity of
contemporary documents but the issue is irrelevant in the light of my finding
in respect of the type A and/or B units.
Smith Anticipation
65.
The Smith US Patent
Application is titled “Flexible Ear Insert and Audio
Communication Link” and is described in the specification as:
“This invention relates to a flexible ear insert that is adapted to be comfortably and inconspicuously worn in the ear of a user so as to be reliably retained therein when the user is running or experiencing sharp head turns. The flexible ear insert has particular application as a communication link by which to supply clear audio messages from a remote transmitter (e.g. a radio) directly to the ear canal of the wearer.”
67. Smith describes how the device sits in the ear:
“[0025] In the installed condition of FIG. 8, the arcuate
band 3 of ear insert 1 is received around the conchaebowl of
the ear to thereby prevent the insert from falling out of the
ear. Because of its flexible nature, the arcuate band 3 is
adapted to be compressed and reshaped within the central
open air space 7 so as to conform to the shape of the wearer's
ear. The cushion 8 formed at the top of ear insert 1 will be
received against a ridge at the top of the ear, sometimes
known as the helix. The tab 10 which protrudes from the
bottom of the insert 1 is positioned to fit within a small notch
that lies below the bowl of the ear.
[0026] With the ear insert 1 held snugly in place, the pad
11 at the mid-point of the bridge 5 through which sound
channel 14 is formed fits behind the targus of the ear,
whereby the canal tube 12 to which the acoustic tubing 20
is connected, will extend into the bowl of the ear to be
positioned directly above and in axial alignment with the ear
canal in order to advantageously provide loud and clear
audio signals from the audio receiver directly to the ear of
the wearer. What is more, the open air space 7 surrounded
by the band 3 and bridge 5 at the center of ear insert 1 will
be automatically positioned above and aligned with the bowl
of the ear to establish a sound passage between the wearer's
environment and his ear canal. Therefore, at the same time
that the wearer receives communications transmitted from a
remote source to the ear insert 1, he will also be able to hear
nearby sounds that are transmitted from his surroundings to
his ear canal via the air space 7, as well as the open area
between the protrusion 10 and pad 11 along bridge 5. Such
sounds may include gun shots, shouts for help, spoken
words, etc.”
i) The compressed nature of the device;
ii) The air space over the concha;
iii) The bowed profile of the device in plan view;
iv) The position of tab 10.
71. I have construed this to require the contact to be with the ‘floor’ of the concha bowl.
75.
Thus, although not all implementations of Smith will result in a device
that contacts the floor of the concha bowl along the length of its C-curve, it
teaches the use of a flexible material that will do so. Therefore, Smith
anticipates claim 1 of the Patent
if contrary to my finding above, the
Patent
covers the use of a flexible material that flexes to conform to the shape of
the concha bowl. Smith does not anticipate the claim as proposed to be amended
as it does not have the incision required by the amendment.
Obviousness over Smith
76. This is a case in which the Pozzoli analysis is appropriate:
(1) (a) Identify the notional “person skilled in the art”
(1) (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
78.
Leaving aside the issue of whether the shape is preformed or is produced
by the pressure of the ear, and on the assumption that I am wrong and Smith
does not anticipate the Patent
because it does not teach the second curve, the
presence of that curve is the difference between claim 1 of the
Patent
as it stands
and Smith.
81.
The evidence of Mr Frost was that circular earbuds with a stalk
extending downwards along the intertragic notch were commonly used in earphones
in the early 2000s and that they would have a groove which straddled the lower
part of the intertragic notch. He said that the use of such a space or
incision to co-operate with the intertragic notch was a well established and
very well known method of positioning devices within the ear at the priority
date of the Patent.
Dr Staab agreed with this if the device had a part going
down from the body of the device sitting in the concha but Smith did not. He
pointed out that if one just swivelled the connection between the device and
the tube in Smith so that the tube went down instead of up and over the ear, no
incision would be needed as the tube connector extends outwards at first and if
it were rotated to take the tube down it would clear the intertragic notch
without need for an incision.
83. The proposed amended claim is obvious over Smith.
Added Matter – The Law
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent
as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
“With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application.”
86.
It has been
often stated the legal security of third parties would be affected if this were
not the rule because the applicant or patentee
could gain an unwarranted
advantage in two ways if subject-matter could be added: first, he could
circumvent the “first-to-file” rule, namely that the first person to apply to
patent
an invention is entitled to the resulting
patent;
and secondly, he could
gain a different monopoly to that which the originally filed subject-matter
justified (see e.g in Vector Corporation v Glatt Air Techniques Inc
[2007] EWCA Civ 805). See also Liversidge v Owen Mumford Ltd & Anor
[2012] EWPCC 33 on the importance of being able to ignore applications which do
not appear to have relevance because the skilled person is not doing anything
which would require the particular feature as described in the application as
filed to be included.
87.
One further
point has been emphasised inter alia by Kitchin J in European Central Bank v
Document Security Systems [2007] EWHC
600 (
Pat),
namely the importance of avoiding
hindsight. As he said, “Care must be taken to consider the disclosure of the
application through the eyes of a skilled person who has not seen the amended
specification and consequently does not know what he is looking for”.
88.
A particular,
and sometimes subtle, form of added matter is “intermediate generalisation”.
Pumfrey J described this in Palmaz's European Patents
[1999] RPC 47, 71 as follows:
“If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called 'intermediate generalisation.”
Added Matter – The Facts
92.
The Patent
is subject to Opposition proceedings in the European
Patent
Office and a hearing before the Technical Board of Appeal is imminent. I have
seen the Preliminary Opinion prepared for this hearing. It deals with this
objection in paragraphs 16.4 to 16.6. Whilst this opinion is without prejudice
to the board’s final opinion and, of course, it is given before there has been
an oral hearing before the board, I find this opinion cogent. It points out
that in the passage relied on by Freebit at page 3 of the priority document,
while some features are expressly referred to as being “optional”, the
retraction of the hearing element is not so described. It notes that claim 1
as granted embraces the possibility that the curvature which follows the
surface of the ear mussel relates to the part of the unit comprising the
hearing element. However, this possibility is excluded by the description
immediately above the passage relied on, which describes the hearing element as
being retracted slightly relative to the curve. This feature has been omitted
from claim 1 and appears to have an intrinsic functional and structural
relationship with the feature that the curvature follows along the inner
surface of the ear mussel. On this basis the board doubts that this is
directly and unambiguously based on the application documents as filed.
Infringement
99.
I have construed claim 1 of the Patent
to require the ear unit to be
shaped in the necessary way before insertion into the ear. The Bose units are
not pre-shaped with the second curvature but are planar in the Y-Z plane.
Therefore there is no infringement. If I am wrong on that construction then I
find that the Bose units would infringe the
Patent,
if valid.
100.
The Bose units do adopt the shape required by the Patent
when they have
been inserted in the ear. They are pre-shaped to a degree which allows them to
form a decremental curve shape and their flexibility or softness enables them
to form the second curve increasing their contact with the surface of the concha
bowl. They do not have an incision as required by the proposed amendment – or
if they do, that is an obvious feature.
Summary
1.
The Patent
is invalid as it was anticipated by the supply of the Freebit
H1 type A/B units in Norway.
2. The claims as granted added matter.
3.
The Patent
does not cover an ear unit which is not shaped with the
required curves until it is inserted in the ear when its resilience and
flexibility allows it to adopt the shape of the ear. If it did cover such an
ear unit it would be anticipated by Smith
4. The proposed amendment would be allowable and would avoid anticipation by Smith but would be obvious over Smith. It would not avoid anticipation by the Freebit H1 ear units.
5. The Bose ear units do not infringe.
[1]
That the court should continue to construe patent
claims
purposefully notwithstanding the new approach to determining the scope of
protection of a
patent
set out by the Supreme Court in Actavis v Lilly [2017] UKSC 48 was confirmed by Arnold J in Mylan v Yeda [2017]
EWHC
2629 (
Pat)
at [134] - [139]. Henry Carr J agreed in Illumina v Premaitha [2017]
EWHC
2930 (
Pat) at [200] to [202].