R2 Semiconductor, Inc v Intel Corporation (UK) Limited & Anor
[2024] EWHC 1974 (Pat)
EnOcean GmbH v Far Eastern Manufacturing Limited & Anor
24 October 2023
[2023] EWHC 2615 (IPEC)
High Court
Someone had already invented a similar thing (Harding) a long time ago, so the new invention isn't really new. Even though it's different from another old invention (Goiran), it's still too similar to the first one to be protected by a patent.
Key Facts
- •EnOcean GmbH (Claimant) alleged infringement of Claims 1 and 3 of its patent EP (UK) 1 611 663 B3 ('the Patent') by Far Eastern Manufacturing Limited and TLC (Southern) Limited (Defendants) through their Quinetic Wireless Switch.
- •The Patent relates to powering devices using an electromagnetic energy converter.
- •Defendants argued the Patent was invalid due to lack of novelty and/or obviousness based on prior art: UK Patent No. GB 879,938 ('Harding') and European Patent Application No. EP 0 836 166 A1 ('Goiran').
- •Claimant accepted Claim 1 was invalid over Goiran, leaving validity of Claims 1 and 3 over Harding, and Claim 3 over Goiran as the key issues.
- •Expert evidence from Professor Mitcheson (Claimant) and Professor Chatwin (Defendants) was presented.
Legal Principles
Purposive claim interpretation considering the inventor's purpose from the description and drawings.
Add2 Research v Dspace [2021] EWHC 1630, Saab Seaeye Limited v Atlas Elektronik [2017] EWCA Civ 2175, Virgin Atlantic v Premium Aircraft [2010] RPC 8
A patent lacks novelty if prior art clearly and unambiguously discloses all claim features.
Edwards v Boston Scientific [2017] EWHC 405 (Pat)
Obviousness assessed using the Windsurfing/Pozzoli four-step approach.
Actavis v ICOS [2019] UKSC 15, Pozzoli SPA v BDMO SA [2007] EWCA Civ 588
The skilled person reads prior art with interest but without pre-conceptions or expectation of relevance.
Inhale v Quadrant [2002] RPC 21, E Mishan & Sons v Hozelock [2020] EWCA Civ 871
Outcomes
Patent invalid.
Claims 1 and 3 found obvious over Harding. The step from Harding to the inventive concept of Claim 1 (using the generator for an autonomous-power switch) was obvious and required no inventiveness. Claim 3 was not found to lack novelty or be obvious over Goiran.
Claim 1 invalid.
Claim 1 was found to be obvious over Harding because the step from Harding to using its generator to power an autonomous power switch would have been obvious to a skilled person. This was despite arguments about the age of Harding and the differing applications.
Claim 3 valid.
Claim 3 was found not to lack novelty over Goiran because Goiran did not disclose a 'spring element' as construed by the court. The step from Goiran to Claim 3 was not obvious as it would require departing from Goiran's teaching and introducing significant complexity, which the court considered inventive.