Cunningham v Nokia Corporation

The hearing of this appeal has been fixed for some considerable period of time, largely to accommodate the personal difficulties of Mr Cunningham. He is disabled and for that reason Warren J directed that the hearing of the appeal should take place in Manchester which is the nearest High Court centre to where Mr Cunningham lives.

A few weeks ago I gave some procedural directions dealing with a variety of minor matters such as the service of witness statements and the provision of translations. Mr Cunningham indicated subsequently in an email to my clerk that he was dissatisfied with a number of the directions which I had made and wished to take the opportunity of seeking to appeal those directions in the Court of Appeal. So far as I am aware, no application for permission was made to the Court of Appeal and both my directions and the hearing date have remained unchanged.

Notwithstanding this, Mr Cunningham did not appear in court on 9 May and all attempts to contact him by telephone and by email have been unsuccessful. Given his absence and his failure to pursue the appeal at the hearing it was open to Nokia Corporation as Respondents simply to invite me to dismiss the appeal without going into the merits of the application. But despite his obvious discourtesy to the Court and the inconvenience to other court users caused by Mr Cunningham’s failure to attend, I have decided that the proper course is for me to give a judgment on the merits of the appeal which can be sent to Mr Cunningham and Nokia so that they can understand my reasons for affirming what I consider to be a correct determination by the Hearing Officer.

Mr Cunningham is the proprietor of GB Patent 2400958B (“the Patent”). This relates to a security system for a house, business or car comprising at least one camera linked to a mobile phone. When activated the camera or cameras send a picture to the mobile phone which then alerts its user to the fact that someone has activated the system. The application was filed on 23 April 2003 with no claim to priority and the patent was granted on 7 December 2005.

The patent application consists of three pages; a hand drawn diagram of the system in operation at a house and being activated either by the ringing of the doorbell or the operation of a passive infrared (PIR) motion detector; a single page of description; and the six claims in the granted specification. The application was drafted by Mr Cunningham without professional assistance from a patent attorney.

The specification reads as follows:

“1)

A DEVICE CONSISTING OF A SMALL CAMERA LINKED TO A MOBILE, BUILT INTO A BACK OR FRONT DOOR OF A HOUSE ETC.

2)

A TYPE OF 3G DOORBELL/ALARM SYSTEM/SECURITY SYSTEM

3)

IT CAN ALSO BE ACTIVATED IF SOMEONE COMES WITHIN FEET OF YOUR HOUSE/BUSINESS/CAR. (PIR) OR BY DOORBELL ITSELF

4)

A PERSON RINGS YOUR DOORBELL THIS ACTIVATES A CAMERA & 3G MOBILE SYSTEM WHICH ALERTS YOUR 3G PHONE. YOU CAN THEN TALK TO A PERSON AT YOUR FRONT DOOR WHEN YOU ARE AT WORK.

5)

YOU ARE EFFECTIVELY IN WHEN OUT AT ALL TIMES CONTACTABLE EVEN BY PEOPLE WHO DO NOT KNOW YOUR NUMBER (MOBILE)

6)

THE SECURITY IMPLICATIONS ARE THAT YOU GIVE THE IMPRESSION TO A POTENTIAL INTRUDER THAT SOMEONE IS AT HOME

7)

BUILT IN CAMERA & MOBILE (TO TALK TO PERSON)

8)

AT WORK YOU ARE NOTIFIED OF PERSON AT YOUR DOOR & ACT ACCORDINGLY BACK OF HOUSE CAMERA ALERTS YOUR MOBILE 3G OF PERSON CLOSE TO HOUSE/SECURITY.

9)

IT ACTS AS BOTH SECURITY DEVICE & ACCESSIBLE DEVICE TO PERSONS WISHING TO BE CONTACTED AT ALL TIMES

10)

DEVICE COULD BE CALLED A 3G DOORBELL & WOULD BE CALLED BY THIS NAME”

The claims are in these terms:

“1.

A security system comprising a camera/cameras built into or above the door of a house or other property, the camera/cameras being linked (wireless/mains) and capable of sending picture information to a mobile phone and being activated both by a person pressing a doorbell and a PIR detector

2.

A security system as claimed in claim 1 above which the mobile phone can be a 3G mobile phone”

3.

A security system as claimed in either claims 1 or 2 in which the camera can also be linked (wireless/mains) to a mobile phone that can use PIR or other motion detector that can be set to activate within various parameters even inches

4.

A security system as in claims 1 to 3 in which cameras can be provided at both front and back doors of a house or set above the doors and or within the grounds of a property

5.

A security system as in any one of claims 1 to 3 where the system can be first set to be activated by a front doorbell or PIR detection or both

6.

A security system for a vehicle comprising a PIR dectector and cameras, the cameras being activated by the PIR when a person is very close to the outside of the vehicle either to disable the power supply or vandalise and being capable of sending picture information to a mobile telephone”

Claims 1 and 6 are therefore independent and claims 2 – 5 are dependant on claim 1.

Section 74A of the Patents Act 1977 (“the Act”) allows the proprietor of a patent or any other person to seek from the Comptroller an opinion as to whether a particular act constitutes or (if done) would constitute an infringement of the patent or as to whether or to what extent the patent is valid. This procedure (introduced by amendment with effect from 1 January 2005) was intended (as the consultation paper put it) to provide a low cost service to help resolve patent disputes. It allows the parties to obtain an assessment by the Office of key infringement and validity issues and so avoid the need for full blown patent proceedings. But consistent with this, it is only an opinion designed to provide an informed view of the matters in dispute based on the material provided. Section 74(A)(4) makes it expressly clear that the opinion is not binding for any purposes and that any party who is not content to settle the dispute on the basis of the opinion is of course free to obtain finality by litigation.

In this case Mr Cunningham sought an opinion as to whether the Patent was infringed by a Nokia product called the PT-6 remote camera. Nokia responded by seeking its own opinion as to whether, if its PT-6 did infringe, the Patent was valid. The attack on validity was based (in part) on the fact that Nokia had been selling a near identical product (the PT-2) since before the date of the Patent, so that if either the PT-2 or the PT-6 fell within the claims the Patent would be invalid for anticipation. In relation to claim 6 Nokia also relied on prior art which included a patent application (WO 03/075242A1) (“the Application”), extracts from a user guide for the PT-6 and public disclosures relating to the PT-2.

The examiner concluded in his opinion that the PT-6 did not infringe any of the claims in the Patent and that although claims 1-5 were valid, claim 6 was invalid in the light of the Application.

Mr Cunningham then sought a review of the opinion by the Office. This is permitted under rules made in exercise of the power contained in s.74B of the Act. The relevant rules are rules 77A-K of the Patent Rules 1995 which came into force in October 2005. Under these rules only the proprietor of the patent (or an exclusive licensee) may apply to the Comptroller for a review of the opinion. The remedy for a third party is to commence proceedings. But even in the case of the patent holder the grounds of challenge are limited. The rules provide that the application for a review may be made only on the grounds that:

“….

(a)

that the opinion wrongly concluded that the patent was invalid, or was invalid to a limited extent; or

(b)

that, by reason of its interpretation of the specification of the patent, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent.”

The Hearing Officer (Mr Philip Thorpe) in a careful and detailed decision concluded that there was nothing to show that the examiner was wrong to conclude that claim 6 of the Patent was invalid or that by his interpretation of the specification he had wrongly concluded or that there had been no infringement by the PT-6. Mr Cunningham now appeals from that decision.

Before I come to the grounds of appeal I need to mention shortly the basis on which this appeal falls to be conducted. Under Rule 77K a right of appeal lies only against a decision which confirms the earlier opinion. Doubts have been expressed judicially in the past as to whether a further appeal to the High Court can serve any useful or proper purpose given the non-binding nature of the opinion under review. But in Re DLP Ltd [2007] EWHC 2669 Kitchin J confirmed the existence of an exercisable right of appeal whilst stressing that the nature of such an appeal is that of a review rather than a re-hearing. At paragraph 22 of his judgment he said this:

“In the case of an appeal under rule 77K, the decision the subject of the appeal is itself a review of the opinion of the examiner. More specifically, it is a decision by the Hearing Officer as to whether or not the opinion of the examiner was wrong. I believe that a Hearing Officer, on review, and this court, on appeal, should be sensitive to the nature of this starting point. It was only an expression of an opinion, and one almost certainly reached on incomplete information. Upon considering any particular request, two different examiners may quite reasonably have different opinions. So also, there well may be opinions with which a Hearing Officer or a court would not agree but which cannot be characterised as wrong. Such opinions merely represent different views within a range within which reasonable people can differ. For these reasons I believe a Hearing Officer should only decide an opinion was wrong if the examiner has made an error of principle or reached a conclusion that is clearly wrong. Likewise, on appeal, this court should only reverse a decision of a Hearing Officer if he failed to recognise such an error or wrong conclusion in the opinion and so declined to set it aside. Of course this court must give a reasoned decision in relation to the grounds of appeal but I think it is undesirable to go further. It is not the function of this court (nor is it that of the Hearing Officer) to express an opinion on the question the subject of the original request.”

In considering Mr Cunningham’s grounds of appeal it is necessary to summarise the issues considered by the examiner in reaching his conclusions on validity and infringement that were adverse to Mr Cunningham. It is convenient to deal with the infringement claim first.

Under s.14 (5) of the Act the claims are the part of the specification which define the matter for which the applicant seeks protection. As the Hearing Officer correctly pointed out, these are therefore the focus for any assessment of a claim of infringement. The proper approach to the construction of claims is that set in the decision of the House of Lords in Kirin-Amgen v Hoechst Marion Roussel Ltd [2005] RPC9. It is clear from the provisions of s.125 (1) of the Act (which give effect to Art.69 (1) of the European Patent Convention) that the description and drawings in the specification are relevant to the interpretation of the claims. Historically, this has been interpreted in some cases as allowing recourse to the content of the specification outside the claims themselves only in cases where the claims on a literal reading were ambiguous. But in Kirin-Amgen Lord Hoffmann adopted a broader approach to construction modelled on the earlier decisions of the House of Lords in cases such as Mannai Investment Co. Ltd v Eagle Star Life Assurance Co. Ltd [1997] AC 749 and Investors Compensation Scheme v West Bromwich Building Society [1998] 1WLR 896. “The question”, Lord Hoffmann said (at para 34):

“is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.”

Although the specification including the claims was drafted by Mr Cunningham, I see no reason to depart from the approach set out in this passage. The Hearing Officer took the same view and I agree with him. Although not professionally drafted, this is a technical document which deals with an invention based on obvious and easily described physical components. The degree of abstraction involved is either very limited or non-existent. Unless there is material (which there is not) to suggest that Mr Cunningham was using the language deployed in some special sense then no departure from the conventional meaning of the words used is appropriate.

Claim 1 deals with the invention built into or above the door of a house or other property. The key words for the purpose of the claim of infringement are “being activated both by a person pressing a doorbell and a PIR detector.” Nokia submitted to the examiner that claim 1 describes a system which must (taken as a whole) be capable of being activated by a doorbell or a PIR although not necessarily at the same time. They contended that the PT-6 did not infringe this claim in the patent because it was not capable of being activated by a doorbell. Mr Cunningham’s suggested construction of the claim was that the system must be capable of being activated by a doorbell or by a PIR but need not have both capabilities as part of the system. The examiner preferred Nokia’s construction.

The issue on claim 6 is whether the reference to “cameras” in the plural means that there must be more than one camera in the system. The PT-6 cannot be linked to other cameras and on this basis could not infringe. Again the examiner preferred Nokia’s suggested construction as against Mr Cunningham’s submission that the plural in claim 6 could be construed as including a system with only a single camera.

The Hearing Officer addressed two main issues of construction in relation to claim 1. The first was what is meant by the phrase “linked (wireless/mains)”. The second was whether each camera in the system must be capable of being activated by either a doorbell or a PIR detector.

On the first issue he rejected a submission by Mr Cunningham that the phrase “linked (wireless/mains)” was a reference to each camera in the system being powered either by battery means (wireless) or by cable (mains). The linkage being referred to was in his view one between the camera and the mobile phone. In this he differed from the examiner who thought that the link described was between the cameras themselves. But as explained in paragraph 94 of his decision this point does not affect the question of infringement which turns on whether claim 1 is restricted to a system which is capable of being activated by both a PIR detector and a bell.

On this issue he took the same view on construction as the examiner. In paragraphs 63-65 of his Decision he said this:

“63….The examiner was of the opinion that the system comprises at least one camera, wherein the at least one camera must be capable of being activated by either a PIR detector or doorbell. This does not mean that the camera, in use, is connected to both a PIR detector and a doorbell, but it must have the ‘capability’ of being activated by both. The construction given in paragraph 20 is also open to alternative interpretations since it is unclear whether it is the ‘system’ or the ‘camera’ that must be capable of being activated in the specified manner, however, having regard to the comments made in paragraph 17, I am satisfied that it is the activation of the camera that is being referred to.

64 In my opinion, this interpretation of “the camera/cameras… being activated both by a person pressing a doorbell and a PIR detector” would sit comfortably with a claim to just a single camera system. This would allow the single camera to be sited at the front of a property and linked to a doorbell, or alternatively sited at the rear of the property and linked to a PIR detector.

65In relation to a claim to a system having more than one camera I can also see benefits in having a single design of camera that can be placed in various locations and connected to the most appropriate source of activation; which might be the doorbell at the front of the house or a PIR detector at the back. Whilst it is of course possible to envisage a system similar to that set out but having different designs of camera for the various locations each being activated only by one source, the simple fact is that that such a system is neither clearly disclosed nor more importantly claimed. I must therefore take the claim at face value and conclude that the examiner’s interpretation in this respect is correct.”

Mr Cunningham has repeated in his skeleton argument for this appeal many of the arguments raised before the Hearing Officer. In particular, he submits that it is not essential to his invention that in a two camera system with one camera at the front of the property and the other at the rear, both cameras should be capable of being linked to a doorbell which is only likely to be at the front of the property. Such a requirement would, he says in his skeleton, be pointless and any construction of claim 1 should take that into account.

Although there is some force in this point as the Hearing Officer himself recognised in the passage I have quoted, the difficulty is that the language of claim 1 excludes it. The use of the words “both” and “and” favours the interpretation adopted by both the examiner and the Hearing Officer. The question for me on this appeal is whether the examiner (and therefore the Hearing Officer) reached a conclusion on the construction of the claim which was based on the application of a wrong test or was plainly wrong. As to the first of these issues there is really no doubt that both correctly applied the Kirin-Amgen test. On the second issue it is impossible in my judgment to say that the decision they reached on construction was clearly wrong. It was the construction most fitted to the words actually used and the Hearing Officer did have regard to the alternative arguments when confirming the view of the examiner. My own view is that their decision on construction was right but on no view was it an impossible or obviously wrong one.

That takes me to the issues affecting claim 6. The question of construction is whether the word “cameras” can mean camera in the singular. The Hearing Officer (like the examiner) considered that it could not. This view was based both on the use of the plural and on the contrast between the wording of claim 6 and that of claim 1 in which the reference is to “camera/cameras”. The Hearing Officer dealt with these points in paragraphs 67 and 68 of his decision as follows:

“67 I turn now to claim 6. The first thing that strikes me is that in claim 1, Mr Cunningham specifically refers to “camera/cameras” and thus clearly contemplates a system having just one camera or a system with more than one camera. He had the opportunity use exactly the same wording in claim 6 but chose to restrict the claim to a system with “cameras”. The second thing that strikes me is that with one exception the claim makes linguistic and technical sense, and, significantly, there are two separate references to “cameras”. The only part of the claim that is in any way ambiguous in terms of how it might impact on the scope of the claim, is the part that seems to be referring to the intent of the person who is very close to the outside of the vehicle. Mr Cunningham’s argument that this part of the claim did not impose any restriction on the claim was accepted by the Opinion examiner. I believe that was correct and I too accept that this part imposes no limitation on the scope of the claim.

68 I can find no further ambiguity in this claim and I find its meaning no different when I look at the supporting description and drawings, which I might add, are noticeably silent on this aspect of the invention. I accept Mr Cunningham’s argument that claim 6 is attempting to define something new, namely a security system for a vehicle, but the components within the system and the words used to define those components are quite conventional. Therefore, whilst Lord Hofmann’s comments regarding references to things for which there are no known definitions, offer me assistance, I do not find that they lead me to an alternative interpretation of claim 6. It is clear to me that a skilled person who has read the single page description and noted the security system illustrated in the figures, would ultimately take the words of claim 6 at face value, with no alternative meanings being applied. In conclusion, I believe that the examiner correctly construed claim 6. ”

It seems to me that this is a strongly arguable and probably correct view of the construction of claim 6 and I can detect no fault in the Hearing Officer’s approach to this question.

Nokia contends that this construction of claim 6 effectively disposes of the allegation of infringement because its PT-6 product has no multi-camera capability. But the examiner was of the view that claim 6 was invalid and therefore no question of infringement could arise.

The issue of validity turns on whether claim 6 was anticipated by the Application. I should say that Nokia has intimated in its skeleton argument a wider challenge to validity should that become necessary including a renewed challenge to claims 1 – 5 and one of the points relating to claim 6 is taken as part of a Respondent’s notice on this appeal. But for the moment I intend to concentrate on the ground relied upon by the examiner and affirmed by the Hearing Officer. This is based on the Application.

It is important to stress at the outset that the Application is prior art for the purposes of novelty only because it was filed on 3 March 2003 but not published before the Application which was made on 23 April 2003. Mr Cunningham contended before the Hearing Officer that the Application was not citable under s. 2(3) of the Act, either because the matter contained in it as filed was not the same as published, or because it failed to provide an enabling disclosure.

One of the main arguments relied on in support of the first point was that there were material differences between the Application and a priority application which is a Finnish application in Swedish filed on 4 March 2002. This is said to be relevant and has led to arguments about who should provide a translation of the document. Nokia contends that the Application does not need to establish its priority date in order to be considered as prior art against the Patent and that the priority application is therefore irrelevant. In substance the Hearing Officer accepted this and so do I. As he explained in his decision s.2 (2) of the Act includes as citable material forming part of the state of the art, patent specifications made publicly available before the date of filing of a given patent application. In this case the Application was not published until after 23 April 2003. But Section 2 (3) also includes in the state of the art, matter contained in a patent application published on or after the priority date of the invention under consideration provided that two conditions are satisfied. The first is that the matter in question was contained in the patent application both as filed and as published. The second is that the priority date of the matter is earlier than that of the invention.

In this case the second of the conditions was satisfied simply on the basis of the respective filing dates and Nokia does not have to rely upon the Finnish priority application in order to satisfy the condition contained in s.2 (3)(b). In relation to the first condition about the similarity of the published matter, the Hearing Officer noted that the Application was published as filed and that Mr Cunningham had failed to establish any differences between the English application as filed and the same application as published. Both conditions in s.2 (3) were therefore satisfied. The requirement under s.2 (3)(a) is that the matter relied on should be published; not that it should lead to the grant of a patent.

This left Mr Cunningham’s second point about the absence from the published matter of an enabling disclosure. It was common ground before the Hearing Officer that this was a pre-requisite to a challenge to the novelty of the invention based on anticipating material. The first issue therefore for the Hearing Officer to address was whether the Application contained adequate enabling disclosure. The Hearing Officer addressed this question in paragraphs 85 – 86 of his Decision in these terms:

“85 Put simply, and considering for example a patent specification, a disclosure is enabling if it is sufficient to enable a skilled person to perform the invention set out in that specification. The difference between disclosure and enablement is more apparent in high technology inventions in for example the field of pharmaceuticals (as in the case referred to above). In the case of low-tech inventions, the simple disclosure of the invention in the patent is often enough to enable the skilled person to perform it. I should stress that in considering the question of enablement, it is the invention in the prior art that needs to be enabled by the disclosure in that prior art and not the invention in the patent against which the prior art may be cited.

86 In the case of WO’242, I have read the whole specification carefully and am satisfied that the disclosure in that application would enable a skilled person to perform the invention set out in that application. WO’242 does provide an enabling disclosure.”

Mr Cunningham has argued that the Hearing Officer was wrong to accept the application as prior art because it failed to achieve patentability due to being obvious or anticipated. But as mentioned earlier, s2 (3) does not require prior art to be patentable nor do I accept Mr Cunningham’s submission that its lack of patentability also disqualifies its contents from being treated as enabling disclosure if the test summarised by the Hearing Officer is otherwise satisfied. I can detect no error of principle in the Hearing Officer’s approach to this issue.

The final question for the Hearing Officer was whether the opinion was correct (or at least not obviously wrong) in finding that the Application disclosed the invention contained in claim 6. The Hearing Officer directed himself that the application had to disclose matter which, if performed, would necessarily result in infringement of that claim. To use the test derived from the decision of the Court of Appeal in Tire & Rubber Co. v Firestone Tire & Rubber Company Ltd [1972] RPC 457 the prior art had to plant a flag. The Hearing Officer addressed this issue in paragraphs 88 – 93 of the decision as follows:

“88 So does WO’242 plant a flag on the invention as defined by claim 6? This claim as properly construed requires the following: A security system for a vehicle comprising a PIR detector and cameras, the cameras being activated by the PIR when a person is very close to the outside of the vehicle and being capable of sending picture information to a mobile telephone

89 Mr Cunningham argues that WO’242 does not disclose certain aspects of the system claimed in this claim. In particular it gives no indication that any aspect of the system is wireless nor is the invention in WO’242 suitable for use outdoors. He bases this last assertion on the presence in WO’242 of what he refers to as a “temperature backup” and the absence of any form of outside weather shield. I would add that Mr Cunningham is using the term “wireless” I believe to mean that the device is not mains powered but rather battery powered.

90 I am not persuaded by any of these arguments for the simple reason that none of the features that Mr Cunningham argues is lacking in WO’242, is an essential feature of the invention set out in claim 6. Again Mr Cunningham has misunderstood that it is the invention as actually set out in claim 6 that is being considered. Claim 6 is entirely silent on how the system is powered – it is not therefore necessary for anticipation to show a particular mode of powering the system such as by battery. Equally the claim does not explicitly require the system to be waterproof. Whilst Mr Cunningham might only have had in mind a waterproof system; that is not what he has claimed. The wording of the claim, as recognized by the examiner, extends to cover systems that may or may not be waterproof. And for the purpose of anticipation it is necessary only that the prior art plants it flag somewhere within the scope of the claim. It is not necessary for the prior art to disclose everything falling with the claim.

91 I am therefore not persuaded by Mr Cunningham’s arguments. I still need however to ensure that WO’242 does actually disclose something falling within the scope of claim 6.

92 WO’242 clearly discloses, in for example, paragraphs [0047] to [0050] a surveillance system that comprises one or more cameras that can be activated by an infra red detector and which according to the description can be located to monitor, for example, a pleasure boat, a car or a garage. Upon activation, picture information is sent from the camera(s) to a portable videophone (multimedia phone). I am therefore satisfied that this document discloses all the features of claim 6 and consequently if put into practice would infringe claim 6. Consequently the disclosure is an anticipating disclosure that destroys the novelty of claim 6 - it does plant a flag on the invention set out in claim 6.

93 I am therefore satisfied that the Opinion was correct to find claim 6 invalid.”

Again, there is no mis-direction here, nor a decision which is obviously wrong. This Court cannot therefore interfere with the decision.

It follows that the appeal will be dismissed. In these circumstances I do not propose to say anything about the points raised in the Respondent’s notice.

Having failed in his appeal there is no reason in my judgment to disapply the usual rule which is that the costs should follow the event and I will order Mr Cunningham to pay the costs of the Respondent to be subject to detailed assessment if not agreed. There will be an interim payment on account of costs in the sum of £20,000, which will be paid in 28 days.