Adolf Nissen Elektrobau GmbH & Company KG v Horizont Group GmbH
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 18 December 2019 |
| Neutral Citation | [2019] EWHC 3522 (IPEC) |
| Docket Number | Case No: IP-2018-000103 |
| Date | 18 December 2019 |
| Court | Intellectual Property Enterprise Court |
[2019] EWHC 3522 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2018-000103
Chris Aikens (instructed by A.A. Thornton & Co) for the Claimant
Maxwell Keay (instructed by M.J.P. Deans) for the Defendant
Hearing dates: 5–6 November 2019
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
HIS HONOUR JUDGE Hacon
Introduction
The parties to this action are both in the business of electric road traffic signs. They are competitors based in Germany. The defendant (‘Horizont’) owns UK Patent No. 2,410,366 (‘the Patent’) which claims an invention entitled ‘Mobile warning device for road traffic’. The claimant (‘Nissen’) seeks to revoke the Patent.
Chris Aikens appeared for Nissen, Maxwell Keay for Horizont.
The skilled person
In its Particulars of Claim Nissen contended that the skilled person is a designer and manufacturer of mobile warning devices for road traffic. The Defence pleaded that the skilled person is a designer, manufacturer or user of such devices. Both skeleton arguments stated that the parties were agreed on the identity of the skilled person, so they apparently felt that there was no difference between them that mattered.
The invention claimed in the Patent would be of practical interest to a designer of mobile warning devices for road traffic. Such an individual would work for, or at least with, a manufacturer of those devices and will broadly know how they are made. He or she will also of necessity know how the devices are used since they must be designed to serve the market. The design and use of the devices is highly regulated and it was agreed that the skilled person would be familiar with the relevant regulations.
This is a UK patent. It follows that the skilled person will be based in the UK and it is the UK regulations and use of traffic signage in the UK which form part of the skilled person's common general knowledge. I state that obvious point (it was not in dispute) because it came to have some relevance.
The Patent
The application for the Patent was filed on 20 January 2004. There is no claim to a priority date.
The specification begins by describing a mobile warning device for road traffic that was known in the art. It is a board to be mounted on vehicles, the board having spotlights arranged in a flat pattern to produce images. The images include directional arrows to tell road users to change lane and warning crosses to indicate that the lane is closed. The specification continues:
“In line with traffic regulations, all these patterns are generated in one single colour and as flashing lights. The main colour used is yellow.”
The skilled person would notice an oddity about this. Crosses to signal a lane closure, used in fixed traffic warning devices such as those on overhead gantries, are red in the UK, not yellow. The UK regulations require that the crosses are in constant (i.e. not flashing) light and that they are red.
I was told that flashing arrows and crosses in yellow are consistent with the German regulations. It seems likely that the specification is derived from a draft created in Germany, although the Patent has no German or any other priority application. I was also told that there is no equivalent patent in force in Germany, but that makes no difference to this dispute.
The specification says more about the spotlights used in the prior art devices:
“The individual spotlights that are configured as flashing lights can be halogen lights or LED lights. There are two different designs. The individual LEDs can be furnished with yellow lenses, but they can also emit a yellow light and have transparent, clear lenses.”
There follows the consistory section, essentially setting out claim 1. The claim having been set out, the characterizing portion is summarised in the specification this way:
“The warning cross is shown in an additional colour to the flashing directional arrows, and shines constantly.”
The specification explains the advantage of this arrangement:
“A mobile warning device will cause an increased level of attention when implemented in this way, because it has an unusual – and thus unexpected – form and colour. This is due to the fact that the (preferably red) warning crosses in constant light have not been mounted on vehicles. If a warning cross shining in an unfamiliar colour now appears on a construction vehicle, trailer or a similar vehicle, it will warn the road user of a particularly dangerous situation, namely of the closing off of a lane or carriageway, in a very emphatic way.”
Preferred embodiments are then explained, including:
“… an additional spotlight attached next to each end point of the cross and these four additional spotlights emit a flashing red light by pairs upon activation of the red warning cross.”
There follows a passage which appears to acknowledge UK practice:
“The red diagonal cross in connection with the fourfold intermittent flashing system is already familiar to the road users from sign gantries. Usually, it indicates the closing of a lane. When using these signals for mobile warning devices, at first an unfamiliar effect is created that particularly increases the attention level of the road users. At the same time, they receive information which they are familiar with, because the diagonal red cross with the additional flashing lights is a system that is already know from stationary arrangements.”
The claims
Horizont asserted the independent validity of four claims. Although two of them, 4 and 5, include the features of claims 2 (the warning cross is red) and 3 (the position of the cross), nothing turned on those features. I need set out only claims 1, 4, 5 and 6.
1. A mobile warning device for road traffic with a board to be mounted on a vehicle on which strobe lights and warning lights are arranged in a flat pattern and which can be switched on in groups so that they selectively form an illuminated pattern in the form of flashing directional arrows or, alternatively, warning crosses or similar patterns, characterized in that an illuminated warning cross can be optically produced in constant light that differs in colour from the flashing directional arrows.
4. A mobile warning device according to Claim 3, characterized in that an additional spotlight is placed next to each end point of the cross, whereby those four additional spotlights, upon activation of the warning cross that shines in red, emit in pairs a red flashing light, achieved by activating both lamps to the left of the warning cross and both lamps to the right of the warning cross in sequence.
5. A mobile warning device according to Claim 4, characterized in that the additional spotlights allocated to the upper end points of the cross are individually attached to the upper edge of the board, outside the board surface.
6. A mobile warning device according to any one of preceding Claims, characterized in that the warning lights include lights for the emission of both constant light and flashing light configured as LED spotlights with separate LED arrays for permanent light and flashing light respectively.
Construction
A mobile warning device
There was disagreement about the central term ‘a mobile warning device’. Mr Keay submitted that it was a term of art, meaning a vehicle mounted sign which is used on a vehicle in motion behind a mobile work site. His point was that the vehicle must be in motion during use of the device and therefore claim 1 excludes a device which is merely mobile in the sense that it can be moved from place to place or in the sense that it can be used while on a stationary vehicle.
Mr Keay said that this definition emerges from the Patent specification and was confirmed by expert evidence. He relied in particular on Figure 3 of the Patent and submitted that it would be immediately clear to a skilled person looking at it that this is a vehicle mounted sign which is used on a live carriageway behind a mobile work site. This is Figure 3:
The description of Figure 3 in the specification states only that it shows the arrangement of lights of an embodiment of the invention. I do not find any support for Mr Keay's definition in Figure 3 or elsewhere in the Patent.
Dr Meseberg addressed his understanding of the term ‘mobile warning device’ in his report (where he used the abbreviation MWD):
“[39] [The skilled person] would know that a MWD is necessarily mobile. It will be mounted on a trailer for a work vehicle itself so that it can serve its warning purpose while actually being driven slowly along a live lane of carriageway …”
He was not cross-examined on this statement. Mr Knight was cross-examined on the subject and said that ‘mobile warning device’ was neither a term of art nor even a term which was ever used by those in this field. ‘Advance warning sign’ or ‘chapter 8’ are terms used. (There is a regulatory explanation for ‘chapter 8’ which doesn't matter.) Mr Knight agreed that in the context of traffic management a mobile sign is one that is used when mounted on a vehicle, but not that the vehicle must be in motion when the sign is used.
Even though Dr Meseberg was not challenged on his understanding of the term ‘mobile warning sign’, I cannot rely on that evidence because he is not familiar with practice in the UK and the terms used in this country. He gave no reason for the assertion in his paragraph 39 quoted above. I think it was just...
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