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.