Communisis Plc v The Tall Group of Companies Ltd
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 17 November 2020 |
| Neutral Citation | [2020] EWHC 3089 (IPEC) |
| Date | 17 November 2020 |
| Docket Number | Claim No: IP-2018-000029 |
| Court | Intellectual Property Enterprise Court |
[2020] EWHC 3089 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT (ChD)
Rolls Building
New Fetter Lane
London
HER HONOUR JUDGE Melissa Clarke
sitting as a Judge of the High Court
Claim No: IP-2018-000029
Dr Heather Lawrence (instructed by Appleyard Lees IP LLP) for the Claimant
Mr Henry Ward (instructed by Brabners LLP) for the Defendants
Hearing dates: 14 and 15 July 2020
A. INTRODUCTION
The Claimant and Defendants are competitor manufacturers of cheques, chequebooks and cheque fraud prevention systems. Each of them provides, inter alia, secure cheque solutions to major banks and financial institutions. The Defendants are part of The Tall Group of Companies. The 2 nd Defendant and 3 rd Defendant are wholly-owned subsidiaries of the 1 st Defendant.
The Claimant is the registered proprietor of UK Patent No. GB2512450B for “A method of generating a payment/credit instrument” (“ the Patent”). The priority date of the Patent is 1 February 2013. The Patent concerns the use of a printed code as a security feature on a cheque (or other credit slip) to prevent fraud by the fraudulent alteration of personal details and the addition of new, fraudulent details relating to a different account.
The Claimant alleges that the Defendants have infringed Claim 1 (a method claim) and Claim 6 (a product claim) of the Patent by doing, authorising, directing or procuring various acts in the UK in relation to the invention without the consent of the claimant.
The Claimant pleads examples of the acts complained of at paragraph 6 of the Particulars of Claim. It pleads infringement of the Patent on a natural interpretation of the Claims or alternatively by equivalence.
The Defendants admit the acts complained of and admit for the purposes of these proceedings only that they are jointly and severally liable for those acts. They deny infringement, alleging that the acts complained of do not fall within the scope of the Patent. They counterclaim for invalidity, alleging obviousness over three pieces of prior art (“ Prior Art”) in conjunction with the common general knowledge, and excluded subject matter in differences in the way the code the subject of the Claims is calculated or presented as between the Patent and the Prior Art.
Dr Heather Lawrence appeared for the Claimant and Mr Henry Ward appeared for the Defendants by remote trial in open court over Cloud Video Platform. I am grateful to them for their assistance.
B. THE PROCEEDINGS
At a case management conference, His Honour Judge Hacon directed each of the parties to file a supplemental statement of case on the alleged inventive concept of the Patent and directed the Defendants to make and serve on the Claimant a confidential Product/Process Description (“ Confidential PPD”) in lieu of disclosure. The Claimant did not require this to be formally proved by a witness at trial.
Neither party sought to rely on any witness of fact. Each rely on a single expert witness. The Claimant relies on the expert report of Mr Charles William Brewer dated 14 May 2020. The Defendants rely on the expert report of Professor Peter Landrock dated 5 May 2020, and a further report of Professor Landrock, in reply to that of Mr Brewer, dated 5 June 2020. Mr Brewer might fairly be described as a banking expert with some cryptography experience and Professor Landrock might fairly be described as a cryptography expert with some banking experience. Both experts attended the remote trial and were cross-examined.
Mr Charles Brewer
Mr Brewer is a Systems Analyst/Developer with experience of working in and for the banking industry. He is managing director of NaMax Limited which provides systems architecture, project management and expert witness services to the banking industry. He confirmed that is a management consultancy of which he is the only permanent management consultant, although he takes on other contractors on occasion.
The Defendants submit that Mr Brewer took an incorrect approach to many of the key elements of this claim. These include:
i) What was in the skilled person's common general knowledge. Mr Brewer stated in cross-examination that he believed the common general knowledge was what the skilled person needed to compare the Patent with the Confidential PPD. In fact, as is common ground, the common general knowledge is the entire stock of knowledge that the skilled addressee would have had at the priority date;
ii) Construction. There are two criticisms of Mr Brewer's approach:
(a) he disclosed in cross-examination that his evidence on the meaning of Claim 1 and the claim integers was his understanding of what the terms meant in the context of both the Patent and the Defendants' Confidential PPD. In fact, it is common ground that it is impermissible to construe the claims by reference to the alleged infringement; (b) Mr Brewer's report discloses that he addressed construction issues in a manner which sought to distinguish between the Prior Art and the claims of the Patent. It is, again, common ground that this is an impermissible approach (per Beloit Technologies v Valmet [1995] RPC 705).
iii) Who the skilled person is and what they do. I deal with in this in more detail in paragraphs 35–37 below.
I accept that he did deal with these matters incorrectly. The Defendants do not criticise Mr Brewer personally for these mistakes. Mr Ward for the Defendants described him in closing submissions as a good expert, trying fairly to help the court in the way he gave his oral evidence. I agree that he did give fair and independent oral evidence and, in my judgment, came to court to assist it to the best of his abilities, and did assist the court. In his oral evidence, Mr Brewer made a large number of concessions amending the opinions set out in his report and/or accepting propositions derived from Professor Landrock's evidence. For that reason, I give greater weight to his oral evidence than his written evidence. The Defendants contend that Mr Brewer, who is not a patent expert, should have been given much greater assistance by the Claimant's solicitors, who should have ensured that his written evidence was soundly based on the proper approach to issues of the skilled person, the common general knowledge, construction, etc. It would be wrong of me to criticise the Claimant's solicitors when they have not had the opportunity to respond to this criticism and I have no evidence about the instructions given or clarifications provided by them.
Professor Peter Landrock
Professor Landrock is a cryptographer and mathematician with expertise in cryptography and electronic security as an academic and professional cryptographer. He obtained his PhD in mathematics from the University of Chicago in 1974 and his academic career has included Professor of Mathematics at Aarhus University and visiting Professor at Princeton, Oxford and Leuven Universities. Since 1997 he has been a senior member of Wolfson College, Cambridge. In 1986 he founded a Danish limited company, Cryptomathic, and shifted focus from mathematics to cryptography. He has acted as a member of the Danish IT Security Council from 1999 to 2007, the Technical Advisory Board of Microsoft from 1997 to 2010 and the Technical Advisory Board of the Turing Gateway of Mathematics at Cambridge University from 2014 to date. He was nominated by the EPO as a finalist for a lifetime achievement award in European Inventor 2010 and was awarded the degree of Doctor of Science Honoris causa by the University of Bristol for his lifetime achievement in cryptographic technology.
Dr Lawrence submits that Professor Landrock is looking at the patent as a cryptographer, and an inventive and clever one at that, and his perspective has coloured his entire evidence and the reasons why he has arrived at the conclusions in the report. I do not consider that is fair criticism. I consider that he approached the key elements upon which he opined in the correct way, and gave neutral, professional, informed and clear evidence to the Court. She made other specific criticisms of his handling of Martens which I reject later in this judgment. I found him to be a good witness who provided significant assistance to the Court.
C. THE PATENT
The Patent is directed at payment/credit instruments, but the claims are limited to cheques and credit slips. For convenience, as the experts did, I will generally refer from now on only to cheques, but this will encompass credit slips except where the context requires otherwise.
The object of the invention is to address the “fraudulent alteration of personal details” (page 1 lines 6–9). on a payment instrument such as a cheque, so as to refer to a different account. The specification describes (page 1 lines 6–11) that:
“The personal details are first included on a cheque by a manufacturer using a laser printing technique. A fraudster may scrape away, remove or amend the personal details and add new fraudulent details relating to a different account. The altered cheque can then be presented as payment and the amount to which it relates is debited from a different account as fraudulently detailed on the cheque”.
The personal details referred to are the sort code, the account number and the individual serial number of the cheque (page 1 lines 13–14) that, taken together, uniquely identify each cheque (“ Personalisation Data”). These data can be distinguished from the data added by the drawer...
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