Ensygnia IP Ltd v Shell Oil Products Ltd
| Jurisdiction | England & Wales |
| Judge | Miss Charlotte May |
| Judgment Date | 26 June 2023 |
| Neutral Citation | [2023] EWHC 1495 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2020-000036 |
[2023] EWHC 1495 (Pat)
Miss Charlotte May KC
(Sitting as a Deputy High Court Judge)
Case No: HP-2020-000036
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Mr Martin Howe KC and Dr Geoffrey Pritchard (instructed by Dehns LLP) for the Claimant
Ms Lindsay Lane KC and Ms Beth Collett (instructed by Norton Rose Fulbright LLP) for the Defendants
Hearing dates: 30 January – 1 February 2023, 7 February 2023
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This judgment was handed down by the judge remotely by circulation to the parties' representatives by e-mail and release to The National Archives. The date and time for hand-down is deemed to be 10.30am on 26 June 2023.
Miss Charlotte May KC (sitting as a Deputy High Court Judge):
INTRODUCTION
By this action, the Claimant sues the Defendants for infringement of European Patent (UK) EP 2 489 332 C2 ( the Patent). The Defendants deny infringement and counterclaim for revocation on the basis that the Patent is anticipated and obvious over two pieces of prior art: US 7 379 912 B1 ( Kiliccote) and EP 2 073 160 A1 ( Schmidt), and that it is invalid for added matter, extension of protection and uncertainty insufficiency. The infringement allegation relates to claims 1 and 7; the validity attacks relate to claims 1, 2, 7 and 8 (although not all the attacks relate to all the claims).
In simplified terms, the Patent concerns a method (claims 1, 2) and a system (claims 7, 8) for identifying a user so that it can obtain access to a registered service. It involves the use of graphical encoded information or graphical object (for example in the form of a barcode or QR code) that is displayed on a display of a computing apparatus and scanned by the user's mobile device (such as a mobile phone). The information is either decoded by the mobile device (claims 1, 7) or by a server (claims 2, 8). Either way, the server establishes the identity of the user to determine if the user is registered, and if so, authorises the user to access the service.
The alleged infringement is a mobile payment system comprising a mobile phone app which can be used by registered customers at Shell petrol stations to purchase fuel. There are three iterations of the system that are relevant to infringement. The system comprises a number of sequential steps which I describe in more detail below. At this stage, it suffices to note that one of the steps requires the user to scan a QR code that is displayed on a piece of paper or card that has been attached on or near to the petrol pump.
The Patent was filed on 25 November 2010 ( the Filing Date) and there is no earlier claim to priority. The Patent was amended post-grant under s.27 of the Patents Act 1977, and so it is the C specification that is relevant. There were amendments to both the description and the claims.
The amendments to the description include various statements that some of the embodiments and figures are “outside the scope of the claims”. There is a dispute between the parties as to what impact those statements have on the construction of the Patent and whether, as a matter of law, the Patent should be construed without regard to those embodiments.
The amendments to the claims include introduction of the expression “obtaining a graphical encoded information item which is displayed on a display of a computing apparatus, wherein the computing apparatus comprises the display and an electronic apparatus, and wherein the display is a sign.” (with the underlined text added by amendment). The construction of this integer is at the heart of the case.
The Claimant contends that this integer relates to a “static” sign – that is, one which is not electronic and does not change between transactions. The Defendants contend that the integer relates to an electronic display on a computer screen or to a subset of a display akin to signage.
If the Defendants' construction of this integer is correct, the Claimant accepts that there is no infringement and that claims 1 and 7 of the Patent are anticipated by Schmidt. On the Defendants' construction, the issues of added matter, extension of protection and uncertainty insufficiency do not arise.
If the Claimant's construction of this integer is correct, the Defendants contend that the Patent is still anticipated and obvious over the prior art. In addition, they argue that it is invalid for added matter and extension of protection on the basis that, prior to amendment, the teaching and the claims were limited to a display on a computing apparatus and did not extend to a static sign. This depends on the proper construction of the application as filed and the B specification, to which I return below. Finally, the Defendants say that the Claimant's construction renders the scope of the Patent uncertain, with the result that it is invalid for insufficiency.
The Defendants also argue that, even if the Claimant's construction of this integer is correct, there is still no infringement because the claims require one message and one server, whereas the Shell system deploys two messages, and in the case of the second and third iteration, two servers.
CONDUCT OF THE TRIAL
The Claimant was represented by Mr Martin Howe KC leading Dr Geoffrey Pritchard and the Defendants were represented by Ms Lindsay Lane KC leading Ms Beth Collett. The trial was conducted live and there were no Covid issues. I had the benefit of written opening and closing skeleton arguments, as well as an oral opening and closing from both parties. I am grateful to counsel and their instructing solicitors for the work put into preparing their cases.
THE ISSUES
The issues are:
i) The identity of the skilled person.
ii) The scope of the common general knowledge (“CGK”). Whilst formally there were two areas of disagreement, neither party relied on any of them to support its case on validity.
iii) Construction.
iv) Anticipation over both Schmidt and Kiliccote, although the attack over Kiliccote on either construction is limited to claims 1 and 7 because the Defendants accept that Kiliccote does not anticipate claims 2 and 8; and the attack over Schmidt on the Defendants' construction is limited to claims 2 and 8 because the Claimant accepts that claims 1 and 7 are anticipated on that construction.
v) Obviousness over both Schmidt and Kiliccote. In respect of Schmidt these attacks relate to claims 1 and 7 on the Claimant's construction, and claims 2 and 8 on both constructions. In respect of Kiliccote, these attacks relate to claims 1, 2, 7 and 8 on both constructions.
vi) Added matter, but only on the Claimant's construction.
vii) Extension of protection, but only on the Claimant's construction.
viii) Uncertainty insufficiency, but only on the Claimant's construction.
ix) Infringement, but only on the Claimant's construction and only in respect of claims 1 and 7.
THE WITNESSES
Each side called one expert. The Claimant's expert was Prof Keith Martin and the Defendants' expert was Dr Kevin Berisso. Neither side criticised the way in which the other side's expert gave oral evidence, and in my judgment they were right not to do so. I found both experts gave clear answers and did their best to assist the court on issues within their expertise. However, both sides criticised the way in which the other's expert had been instructed and/or prepared his evidence.
Prof Martin
Prof Martin is a Professor of Information Security at Royal Holloway, London. He has particular expertise in cryptography and its application to supporting cyber security in real world systems.
The Defendants made two criticisms of the way in which Prof Martin was instructed.
First, they criticised the fact that Prof Martin was given the original cited prior art before he was asked about the common general knowledge. This included two citations (referred to as Cobos and Trandal) which were dropped at some point before trial but which (I am told) were focused on cryptography. The Defendants pointed out that this approach was contrary to the established way in which an expert in a patent case should be instructed (at least where possible): the expert should generally discuss the CGK first, before being shown the prior art and then the patent in suit (see Fisher & Paykel Healthcare Ltd v Flexicare Medical Ltd & Anr [2020] EWHC 3282 (Pat) at [20]). They submitted that this misdirection caused Prof Martin to “start off on the wrong path”, with CGK that was focused on the prior art and not on the field of the invention of the Patent. In particular, his first report included significant detail about cryptography even though he accepted in cross-examination that that there was no direct cryptographic interest in the Patent, but did not address barcodes and their uses.
The Claimant did not accept this criticism, arguing that there had to be a way of focussing the CGK and that the alternative of devising “bespoke” CGK relating to a more specific field or area that had been suggested by the instructing solicitors would be equally problematic.
I reject this argument, which did not justify why the Claimant had departed from the normal approach of sequential unmasking. Moreover, as Meade J made clear in Fisher & Paykel at [22], it is normally possible to direct initial discussions with an expert about CGK in a practical or workable way by describing the area of interest in general terms. That approach is preferable to showing the expert the prior art first.
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