Raytheon Company v Comptroller General of Patents, Designs and Trade Marks
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR JUSTICE KITCHIN,Mr Justice Kitchin |
| Judgment Date | 22 May 2007 |
| Neutral Citation | [2007] EWHC 1230 (Pat) |
| Docket Number | Case No: CH/2006/APP/19 |
| Court | Chancery Division (Patents Court) |
| Date | 22 May 2007 |
[2007] EWHC 1230 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Kitchin
Case No: CH/2006/APP/19
Giles Fernando (instructed by DLA Piper UK LLP) for the Appellant
Colin Birss (instructed by Treasury Solicitors) for the Respondent
Hearing dates: 26–27 April 2007
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.
Mr Justice Kitchin:
Introduction
This is an appeal from the decision of the Comptroller, acting through the Deputy Director, Mr Kennell, whereby he refused patent application no. 0218848.0 of the appellant (“Raytheon”). He did so on the ground it offended against s.1(2)(c) of the Patents Act 1977 because the invention consists of a program for a computer.
Raytheon submits that the Comptroller erred in reaching this decision. The Comptroller submits that the decision was correct but that the appeal can also be dismissed on the grounds that application offends against s.1(2)(c) because the invention consists of a scheme, rule or method for doing business and against s.1(2)(d) because the invention consists of the presentation of information. Raytheon says that these further grounds of objection are not open to the Comptroller on appeal because they were not maintained at the hearing before him. It also says they are, in any event, misconceived.
Two issues therefore arise on this appeal: first, whether it is open to the Comptroller to take objections which he did not maintain at the hearing; second, whether the claimed invention is excluded by the Act.
Section 1(2) implements Art 52(2) and 52(3) of the EPC and provides, so far as relevant:
“It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –
……..
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of the Act only to the extent that a patent or an application for a patent relates to that thing as such.”
The invention relates to a method of inventory management. The application explains that organisations are often faced with the need to relocate or reconfigure a facility and that where the facility includes an extensive array of fixtures, equipment, racks and systems the exercise of relocation or reconfiguration can involve considerable time, effort and expense. The prior art methods of inventory management mostly used manual inventory tracking. But even where the inventory information was stored in a database, previous methods relied upon a text only description of the items it contained. These earlier methods made it difficult accurately to track the movement of items to be relocated or reconfigured and often resulted in errors.
The invention addresses these deficiencies by providing a first database of information defining the layout of the facility and a second database of information defining all of the items themselves. Importantly, the databases contain both textual and pictorial information about the facility and all the items it contains which can be displayed on, for example, a web browser. The system provides an interactive graphical map of the facility and its layout from which the user can select a particular equipment rack and view a more detailed representation of it. The detailed representation is synthesised from individual digital images of the components of the rack which are stored in the databases. Consequently it is not necessary to store an image of each rack and all the items it contains. Instead, it is only necessary to store one image of each of the possible “building blocks”. This means that any combination of items of equipment on a rack can be displayed without requiring a new image of the rack to be loaded onto the databases. This reduces the load on the processor and memory usage.
Two sets of method and apparatus claims were in issue before the hearing officer, claims 1 and 25. I need only set out claim 1 as broken down into integers by Mr Birss, who appeared on behalf of the Comptroller:
Claim1:
i) A method for generating and displaying inventory data for a facility, comprising:
ii) creating a database of information defining the facility and layout of any fixtures, equipment, equipment racks, and systems in the facility, the facility and layout information including above and under floor connection capabilities;
iii) creating a database of information defining any of the fixtures, equipment, equipment racks, and systems in the facility;
iv) receiving individual digital images of the facility, fixtures, equipment racks and systems for storage in the created databases;
v) assigning identification information to the defined fixtures, equipment, equipment racks and systems to create an identification database;
vi) storing the created databases in one or more memory locations of a computer network;
vii) providing an overall and interactive graphical map, of the facility and layout of the fixtures, equipment, equipment racks, and systems in the facility utilising the information stored in the created databases; and
viii) in response to a user selection of one of the equipment racks shown in the graphical map, providing a synthesised visual representation of the selected equipment rack and associated equipment from the individual digital images of the equipment stored in the created database.
Claim 2 is to a method in essentially the same form save that the information defining the equipment includes the height and width of the equipment; the digital images must include digital photographs of the equipment and the display includes edited versions of the digital photographs providing an accurate representation of the pieces of equipment in height and width relative to each other.
It can be seen that claim 1 has at its heart the creation of a synthesised representation of the selected equipment whereas claim 2 requires the display of edited versions of the stored digital photographs.
On this appeal Mr Fernando, who appeared on behalf of Raytheon, focused on claim 1. He submitted that there are three aspects to the contribution made by the invention. First, it provides a method of stock control in which textual descriptions are replaced by visual representations. This is an advantage because items can be identified more easily by visual appearance than textual description so reducing labour costs and the risk of errors. Second, the representations are synthesised in real time from individual images of the components of the rack which are stored in digital form in the database, so reducing the usage of memory and the load on the processor. Third, the system is navigable by the user who starts with a high level interactive graphical representation and can “drill down” to the particular rack or component of interest by, for example, clicking a particular location on the screen.
I consider this analysis of the contribution made by the invention to be a fair one subject to the qualifications that the claim is not limited to synthesis in real time and that “drilling down” is defined by integer viii) and requires no more than the provision of a representation of a rack and the equipment it carries when that rack is selected by the user.
The decision of the Deputy Director
The case came on for hearing before the decision of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371; [2007] RPC 7. The hearing officer therefore approached the issues before him in accordance with the principles explained by the Court of Appeal in Fujitsu Ltd's Application [1997] RPC 608, the Board of Appeal of the European Patent Office in case T 208/84VICOM [1987] 2 EPOR 74 and the High Court in Halliburton Energy Services v Smith International [2005] EWHC 1623 and CFPH's Application [2005] EWHC 1589.
At the outset he directed himself that what was important was the substance of the invention rather than the precise form in which it was claimed, and whether this substance represented a patentable advance. So he said at paragraph [27]:
“I think the more fundamental concern which I must address is whether there is a patentable advance in the synthesising and editing features because of the reduced processing burden and increased flexibility arising from the ability to synthesise and display a particular item with an accurate representation of its width and height relative to other items. I do not for one moment doubt that this is a practical tool which will considerably ease the lot of those faced with the task of configuring industrial and business facilities, but that ultimately is not decisive of the matter.”
He explained at paragraph [29] that the invention was concerned with the provision of a computerised system and the claims set out the rules and procedures necessary to get the computer to operate in the desired manner:
“It is apparent from the specification of the patent application that the invention is concerned with replacing entirely the manual element in designing facilities from inventories of equipment by a computerised system. I accept that the claims are not drafted in terms of a program as such, but they set forth the rules...
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