EnOcean GmbH v Far Eastern Manufacturing Ltd
| Jurisdiction | England & Wales |
| Judge | Nicholas Caddick |
| Judgment Date | 24 October 2023 |
| Neutral Citation | [2023] EWHC 2615 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No. IP-2022-000070 |
[2023] EWHC 2615 (IPEC)
Nicholas Caddick K.C.
(sitting as a Deputy High Court Judge)
Claim No. IP-2022-000070
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Michael Conway (instructed by EIP) for the Claimant
Jonathan Hill (instructed by Agile IP) for the Defendants
Hearing dates: 21 st and 22 nd September 2023
Nicholas Caddick K.C. (sitting as a Deputy High Court Judge):
Introduction
In this action the Claimant, EnOcean GmbH, asserts that Claims 1 and 3 of its patent, EP (UK) 1 611 663 B3, entitled “electromagnetic energy converter” (“the Patent”), have been infringed by a product known as the Quinetic Wireless Switch which the Defendants, Far Eastern Manufacturing Limited and TLC (Southern) Limited, are importing into and marketing in the UK.
The Patent, which was filed on 18 March 2004, relates to the powering of devices such as radio switches and radio sensors using an electromagnetic energy converter rather than, for example, battery or solar power.
The Defendants do not dispute that the Quinetic Wireless Switch falls within Claims 1 and 3 of the Patent. However, they assert that the Patent is invalid because its claims lack novelty and/or are obvious in light of two pieces of prior art, namely:
a. UK Patent No. GB 879,938 (“Harding”); and
b. European Patent Application No. EP 0 836 166 A1 (“Goiran”).
In its Defence to Counterclaim, the Claimant asserted that the Claims 1 and 3 of the Patent were both independently valid. It did not assert that the Patent was valid on the basis of any of the other claims. By trial, however, the Claimant had accepted that Claim 1 was not valid over Goiran so that the issues (as expressed in its opening skeleton) were as to the validity of claims 1 and 3 over Harding and the validity of claim 3 over Goiran.
The witnesses
The only evidence was that of the parties' expert witnesses.
The Claimant's expert witness was Professor Paul Mitcheson, Professor of Electrical Energy Conversion at Imperial College London. He has specialised in energy harvesting devices since his PhD in 2001–2005 and has authored a large number of scientific papers and several books on energy harvesting and wireless energy supply. He has also co-founded several companies and is an inventor on seventeen patent families and applications. His experience is, therefore, highly relevant to the issues before me. In closing Mr Hill (for the Defendants) suggested that Professor Mitcheson had shown a certain argumentativeness and a tendency to defend his client's position. I do not accept that criticism. I have no doubt that Professor Mitcheson was trying to assist the court and I found his evidence to be helpful.
The Defendants' expert was Professor Christopher Chatwin who is a Chartered Engineer and a Professor of Engineering at the University of Sussex. His research has involved designing technologies in a wide range of areas, from biomedical engineering to space and satellite systems. Mr Conway (for the Claimant) argued that Professor Chatwin was less able to assist me because, in his report, he had defined the skilled person in broader terms than those which were ultimately agreed at trial and because the breadth of his experience and his willingness to work in new areas made it difficult for him to step into the shoes of the skilled person for the purposes of the Patent. It is certainly true that in his oral evidence, Professor Chatwin rowed back from some assertions that he had made in his reports. It is also the case that his style was (as Mr Hill put it) more rough and ready and given with less of a view to the niceties of patent law than was the case with Professor Mitcheson. Nevertheless, I found his evidence helpful and, again, I have no doubt that he was doing his best to assist the court, as the instances of rowing back showed. A particular criticism levelled by Mr Conway against Professor Chatwin was that his assessment of the prior art was based on a comparison with the Patent and was, therefore, tainted by hindsight. However, as Mr Hill pointed out, to the extent that Professor Chatwin was being asked to address the issue of anticipation (novelty), some sort of comparison was inevitable.
The Skilled Person
A patent is directed at the skilled person and issues of construction and obviousness are addressed through the eyes of the skilled person. The skilled person is a notional person (or, in some cases, a team of notional persons) with a practical interest in the subject matter of the invention and with practical knowledge and experience of the kind of area in which the invention is to be used. Whilst the skilled person is a notional person, the skills attributed to such person must be those that real life people skilled in the relevant art would in fact have had as at the priority date which, here, is 7 April 2003.
In this case, as Professor Mitcheson explained, the Patent is directed to providing an improved method of powering small, low power remote control switches (such as, for example, switches remotely to lock/unlock the doors of a car). On this basis, Professor Mitcheson argued that the skilled person would be an electronic engineer with some experience in the design of similar low power electronic devices with, probably, a master's degree in electrical/electronic engineering and a few years' experience designing small electronic devices within industry. The skilled person would be familiar with concepts of circuit design and electromagnetics, but would be unlikely to have direct experience of designing an energy harvesting device.
Although, in his report, Professor Chatwin had defined the skilled person in broader terms (“a designer of electronic devices”), at trial, he and the Defendants were happy to adopt Professor Mitcheson's narrower definition. There were, however, differences between the parties (to which I will return) with regard to the skilled person's mindset regarding the prior art and level of interest in it.
The common general knowledge
The common general knowledge comprises matters that are generally known and generally regarded as a good basis for further action by the bulk of those involved in the particular art as at the relevant date (7 April 2003). It includes information within the memory of the skilled person and also information that the skilled person knows exists and would, if needed, look up as a matter of course.
In the present case, the parties produced a Statement setting out certain matters that were agreed to be common general knowledge. They also identified a number of areas of dispute. For present purposes, I will summarise those matters of common general knowledge which seem to me to be important to the technology described in the Patent. I will deal with some further aspects of the common general knowledge when I consider issues of construction relating to the Patent and the prior art. The relevance of some of the areas of dispute was unclear and I will make no findings in relation to these.
Matters agreed to be common general knowledge
It was common ground that the skilled person would have been aware that there was a wide range of small electronic devices requiring some sort of power source. It was also agreed that batteries were the “go-to” power source for many of these devices. This was because battery technology was improving and, by 7 April 2003, batteries were reliable, relatively cheap and available in various standardised sizes and voltages.
Nevertheless, the skilled person would also have been aware of (even if he or she did not have had any direct experience of dealing with) certain alternative power sources using what were referred to as “energy harvesting” techniques. These alternatives sources included:
a. The Seiko kinetic watch mechanism – a mechanism whereby a rotating electromagnetic generator is powered by movements of the watch wearer's arm;
b. Solar powered calculators;
c. Crystal radio – where a radio's headphones are powered by the radio signal alone;
d. Piezo spark igniters – where a spark (used for lighting a gas oven, or a cooker hob, or a cigarette) is created from the voltage generated where mechanical energy (the push of a button by a user) operates to strain or deform a piezoelectric element;
e. Bicycle dynamos – where a rotating electromagnetic generator powered by the rotation of a bicycle wheel is used to provide power for bicycle lights; and
f. Wind-up radio – where power is generated by a spring “charged” by the turning of a crank by the user.
The skilled person would also have been familiar with the basic principles of magnetic attraction and/or repulsion between magnetic elements, and with the basic principles by which mechanical energy can be converted into an electrical current, and with the principles of electromagnetic induction. In this regard, the following would have been common general knowledge:
a. A mechanical to electrical energy conversion transducer comprises two parts that move relative to each other (as in bicycle dynamos) or contain a part that deforms (as in the piezo spark lighters).
b. An example of the first of these types of transducer is where a coil of wire is exposed to a change in magnetic flux, thereby inducing an electrical current. In accordance with Faraday's law, the voltage induced depends on the number of turns in the coil and the rate of change of magnetic flux;
c. A change in magnetic flux can be induced by moving a permanent magnet relative to a coil of wire. Alternatively, it can be induced by changing the reluctance of a magnetic circuit (by, for example, moving a piece so as to open or close an air gap in a magnetic...
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