Long v Comptroller General of Patents

This is an appeal by Linda Long against the decision of a hearing officer in the Intellectual Property Office. At the request of the parties, the hearing officer dealt with the matter on the basis of the documents before him. This appeal to the Patents Court was also dealt with on paper, without an oral hearing, again at the request of the parties.

On 24^th November 2005, Ms Long filed a patent application which was given the number GB0523890.2. The application was published on the 23^rd July 2008. The decision under appeal explains why there was delay in this respect but it is not necessary to refer to this matter further for the purposes of this appeal.

The original application comprised three pages of text by way of a specification. The body of the specification, being the description of the invention, extended to two pages and the claims were set out on the third page. There were no drawings referred to in the description of the invention or the claims.

The application was referred to an examiner who concluded that the claimed invention was not novel and did not involve an inventive step. Consequently, Ms Long revised her claims. She replaced the third page with a fourth page setting out claims which were expressed more narrowly than before. The examiner considered the amended claims but remained of the view that the claimed invention was not novel and did not involve an inventive step and in addition that the claims were unclear because they defined the invention by reference to the result to be achieved. Thereafter, Ms Long referred the matter to the hearing officer and he reached his decision on 25^th May 2010. I will refer to that decision in detail later in this judgment.

The body of the specification stated that the claimed invention related to improvements in car parks and especially in car parks with a ceiling, for example, a multi-storey car park. The invention was described as one which provided a car park with an indicator, located above or adjacent to a parking space, to indicate whether a space or an adjacent space or a group of spaces were occupied by a vehicle; the indicators would function in this way because they would be responsive to the presence of a vehicle in a particular space or group of spaces. The body of the specification continued by referring to a number of possibilities. The first possibility was preceded by the word “preferably” and referred to an indicator being controlled by a sensor where the sensor was responsive to the presence of a vehicle in a parking space. The sensor would be illuminated or not illuminated as the case might be or the sensor would show a different colour of light depending on the presence or absence of a vehicle. Another option was expressed in these terms (on page 2 of the specification):

“Preferably also, the indicator comprises a light source configured to illuminate an indicia (sic) in the absence of a vehicle in a parking space, and cast a shadow (e.g. of the vehicle) on said indicia in the presence of a vehicle in a parking space. More preferably, and where the car park has a ceiling, the indicia comprises a portion of the ceiling.”

In the passage quoted above, the phrase “an indicia” is used. Indicia is a plural noun which should not be preceded by the word “an”. This phrase is used throughout the description of the invention and in the claims. It is not immediately clear whether Ms Long was referring to a single indicium or to a group of two or more indicia. Later in this judgment when I refer to “an indicia”, I do so because I am referring to the language used in the body of the specification or the claims.

The body of the specification continued by stating that it was preferable that indicators were provided for individual parking spaces. It was then stated that the scope of the invention included the means suitable for putting, or intending to put, into practice the invention. The specification stated that “in practice” the system “might” use the lighting system already in place in the car park. It was added that instead of a constant white light above every parking space, a light might be provided that changed to amber or green when the space became available. The specification further referred to existing technology which detected the arrival of a motorist in a so called “disabled badge” parking space and it was suggested that “similar technology” might be implemented to trigger the change in a light when activated by a parking motorist. The specification did not provide any further details of this similar technology.

The specification as originally published contained six claims. Claim 1 referred to an indicator being responsive to the presence of a vehicle in a parking space or a group of spaces. Claim 2 referred to a lighting unit which would respond to the presence of a vehicle, by changing from illuminated to not illuminated, or by the choice of colour of light. Claim 3 referred to a light source casting a shadow on an indicia in the presence of a vehicle in a parking space. Claims 4 and 5 referred to the indicia comprising a portion of the ceiling and the provision of indicators. Claim 6 referred to the means suitable for putting into practice that invention.

As explained above, the claims were amended to make only three claims which are in these terms:

“1.

A car park having indicators to indicate whether a parking space, or group of spaces, is occupied by a vehicle, each of said indicators being responsive to the presence of a vehicle in said space or group of spaces and comprising a light source configured to illuminate an indicia in the absence of a vehicle in a parking space and to cast a shadow on said indicia in the presence of a vehicle in a parking space.

2.

A car park according to claim 1, wherein the car park has a ceiling and the indicia comprises a portion of the ceiling.

3.

A car park according to either preceding claim and in which the indicator casts a shadow of the vehicle on the indicia.”

The application in this case was governed by the Patents Act 1977. All references hereafter in this judgment to numbered sections are to the sections of that Act.

By section 1(1), a patent may be granted only for an invention where the invention is new and it involves an inventive step. Section 2 deals with the question whether an invention is new. By section 2(1), an invention is taken to be new if it does not form part of the state of the art. By section 2(2), the state of the art in the case of an invention is taken to comprise all matter which has at any time before the priority date of that invention been made available to the public, whether in the United Kingdom or elsewhere, by written or oral description, by use or in any other way. It is not necessary to refer to the further provisions contained in section 2. Section 3 deals with the requirement of an inventive step. For present purposes, it can be stated that an invention is taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art by virtue only of section 2(2).

Section 14 deals with the making of a patent application. By section 14(2), a patent application must contain, amongst other things, a specification containing a description of the invention and a claim or claims. Section 14(3) provides:

“The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.”

Section 14(5) provides:

“The claim or claims shall –

(a)

define the matter for which the applicant seeks protection;

(b)

be clear and concise;

(c)

be supported by the description;

(d)

relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.”

Further, under section 72(1)(c) a patent may be revoked on the ground that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art.

By section 125(1), a claim in a patent application is to be interpreted in the light of the description of the invention in the body of the specification. By section 125(3), the Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to section 125(1)) applies for the purposes of section 125(1), as it applies for the purposes of Article 69. In brief summary, the Protocol steers a course between construing claims strictly and literally and using the body of the specification only to resolve an ambiguity (on the one hand) and treating the claims only as a guideline (on the other hand). Instead, Article 69 (and section 125(1)) is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of legal certainty for third parties.

Although the construction of the claims in the present case is central to the determination of this appeal, neither party made any submissions as to the approach which I should adopt when construing the claims. I plainly must apply section 125 and the Protocol, as described above. I have also considered how the process of construction of a patent is described in the decision of the Court of Appeal in Rockwater Ltd v Technip France SA [2004] RPC 919, in particular per Jacob LJ at [41], which was approved, with a minor qualification, in Kirin-Amgen Inc v Hoechst Marion Roussell Ltd [2005] RPC 9 at [33], per Lord Hoffmann. I must read the words in which the claims are expressed in the context of the specification as a whole and I should adopt a “purposive” construction as described in those two authorities.

There is a considerable body of case law on the meaning and effect of section 14(3) and (5) and the issues of sufficiency and ambiguity. The hearing officer referred to only one authority on the question of sufficiency and ambiguity in relation to the description of the invention and/or the claims. This was the decision of the Court of Appeal in No-Fume Limited v Frank Pitchford & Co Limited 52 RPC 231 which was cited as authority for the proposition that it is sometimes permissible to describe an invention by reference to the result to be achieved. On this appeal to the Patents Court, both parties made submissions as to the application of the decision in No-Fume and, for that reason, I ought to refer to it in a little more detail.

In No-Fume, the Plaintiff brought an action for infringement of a patent and was met by a counter-claim for revocation. The Defendant contended that the patent was invalid for insufficiency and ambiguity. Luxmoore J held that the patent was invalid on these grounds. The Court of Appeal held that the patent was valid but had not been infringed by the defendant. Lord Hanworth MR adopted the trial judge’s definition of insufficiency and ambiguity in the following terms (at page 236):

“Insufficiency is directed to the issue whether the description is sufficient to enable those persons to whom the specification is addressed to understand how the subject-matter of the patent, if it is for an article to be manufactured, has to be made, or, if it is a process or method, how it is to be worked. Ambiguity is directed to the issue whether the invention is sufficiently described and ascertained so as to enable the public to understand the scope of the monopoly granted by the Letters Patent.”

At page 243, Romer LJ explained the reasoning behind the rules as to insufficiency and ambiguity. As to sufficiency, he stated that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee’s monopoly has come to an end. Such disclosure was the consideration that the patentee gave for the grant to him of a monopoly during the period that the patent would run. As to the requirement that the specification should sufficiently and clearly ascertain the scope of the monopoly claimed, the reason given by Romer LJ was in order that those who were engaged in the art might know how far they could go without running the risk of having an action for infringement of the patent started against them by the patentee.

The Court of Appeal held that the patented invention in that case could be defined by reference to a result. The dispute in No-Fume related to whether the dimensions and proportions needed to produce a successful product had to be laid down in the specification. It was held that the proportions need not be exactly laid down if there was a field in which the proportions might vary and yet within which success might be ensured and if the dimensions were sufficiently described as to be ascertainable by tests not involving the exercise of any inventive faculty.

In the present case, the hearing officer set out details of a German patent published on 6^th September 1990. The German patent related to a system which indicated whether or not a car parking space was occupied. The principal way in which the invention was described involved a lamp in the floor emitting a light beam in the direction of a mark on a wall or ceiling. When the car parking space was occupied, the light beam was interrupted by the presence of the car. An alternative description of the invention involved the light being switched off when a car was present.

The hearing officer then addressed himself to the arguments of the parties. He felt it was necessary to construe the claims (in particular claim 1) and to consider their clarity. He dealt with arguments addressed to him as to the meaning of “shadow”. At paragraphs 17 to 19 of his decision he said this:

“17 It is important to read a patent specification in the eyes of the skilled addressee. In this case I would take the skilled addressee to be a designer of car park layouts and features (rather than in the overall structural design of a car park) who is particularly skilled in internal features of a car park. In my view he would give the ordinary general meaning to the term “shadow” and the action “cast a shadow”. Although this term can sometimes be used to refer to darkness (e.g. “the forest was in shadow”) it is more commonly used in the context of an object blocking a source of light. In my view casting a shadow on an indicia means obscuring a light source so that an area containing the indicia which was illuminated by that light source is no longer illuminated. It does not matter whether the region around the indicia is darker than the surrounding area or is lit to the same level as the surrounding area. The indicia was lit by a light source and once a shadow has been cast on the indicia it is no longer lit by the light source. The fact that claim 1 says that the light source is configured to cast a shadow on the indicia when a vehicle is present adds support to this construction. Moreover the person skilled in the art of car park design will understand that the invention works by illuminating indicia to indicate free parking spaces. It is immaterial to the design whether, when a vehicle is present in a space, the indicia is lit to the same level as the surrounding area or to a lower level.

18 In summary I therefore conclude that the person skilled art (sic) would construe claim 1 to mean that when there is no vehicle in a parking space a light source illuminates an indicia. When there is a vehicle is (sic)present in the parking space the path the light takes from its source to the indicia is blocked in a way that the indicia is no longer illuminated by the light source. This would in my view be the construction given to the term “cast a shadow”. The person skilled in the art would not limit the claim to light sources that are only partially obscured as the claim is not defined by the extent to which the light source is obscured. Rather it is defined by the indicia being no longer illuminated by the light source due to a shadow being cast on it.

19 The construction of the claim has been made more difficult for two reasons. Firstly there is little support in the description as to how the invention works, that is, how the light source is set up so that it illuminates an indicia when a vehicle is absent in a parking space and casts a shadow on the indicia when a vehicle is present in the parking space. There is therefore little in the description to guide the skilled reader on the construction of the claim. Secondly the invention is defined in claim 1 by the result to be achieved. The claim does not define the particular features of the light source or the way that it operates that would result in it illuminating an indicia in the absence of a vehicle or casting a shadow on an indicia in the presence of a vehicle. No information is given as to how the light source casts this shadow. I have inferred in my construction of the claim that the path the light takes between the light source and the indicia must be to some extent blocked but this information is not present in the claim. It would, subject to suitable disclosure of the description, have been possible to have described the invention in precise terms independent of the result to be achieved. The claim is therefore in my view unclear and does not satisfy the requirements of section 14(5)(b) of the Act. Even if I decide that the claimed invention is novel and inventive over the prior art I remain doubtful as to whether an amendment is possible which would render the claim clear because of the first difficulty I have set out in this paragraph.”

It will be seen that the hearing officer grappled with the meaning of the phrase “cast a shadow” and concluded that, on the true construction of the claims, and in particular claim 1, this would be understood as referring to the parked vehicle blocking the passage of light from its source to the indicia in the ceiling. The hearing officer then referred to the fact that the specification did not describe how the invention worked and the invention was defined in claim 1 by the result to be achieved. This led the hearing officer to conclude that the claim was unclear contrary to section 14(5)(b).

The hearing officer went on to consider whether the invention was novel. On his interpretation of the phrase “cast a shadow”, all the features of all three claims were already disclosed by the invention the subject of the German patent. Accordingly, the claimed invention lacked novelty.

Having found that the claimed invention was not novel the hearing officer directed himself that he did not need to consider whether the invention contained an inventive step. He then considered other descriptions of the invention in the specification which were not the subject of the amended claims. As these alternatives were only discussed briefly and somewhat vaguely, he held that no possible amendment to the claims could result in a patentable claim. Accordingly, the application was refused.

Ms Long has served written submissions in support of her appeal. In those submissions, she seeks to have certain “evidence” admitted. It is said that this material is new evidence and satisfies the usual requirements for admission of new evidence on the hearing of an appeal. It is said that the evidence was not previously available, that it would have an important influence on the issue and that the evidence is credible.

The so called evidence consists of photographs published in a newspaper of various sporting events. For example, one photograph shows a tennis player on a grass court playing in bright sunlight where the shadow of the tennis player is clearly demarcated on the grass court. Ms Long submits that these photographs are evidence as to the meaning of “cast a shadow”. The Respondent to the appeal does not oppose the introduction of this material.

Ms Long’s written submissions then address the question of the novelty of her invention. She stresses that the reference in the claims to “cast a shadow” is all important and indeed the meaning of the term “shadow” is the point on which the whole decision turns. She states that a shadow must have boundaries and an outline. She contrasts her invention with the German patent where (she says) the presence of a vehicle in a parking space blocks the beam of light, producing no defined shadow. Her submissions then deal with the hearing officer’s finding that claim 1 was unclear. She submits that the wording of the claim is straight forward and no further instruction is necessary to put the invention into practice. She adds: “one simply takes a strong enough and wide spread enough light source, from available alternatives, so that when the light source is switched on, then light simply spills out from around the underside of the vehicle to illuminate the ceiling above it and in the process, casts a clearly defined black shadow of the vehicle on the ceiling. Once the invention has been revealed, putting it into practice is axiomatic and requires no further example.” She submits that no amendment to the claims is needed as they are inherently clear.

Ms Long does not draw any distinction between claim 1 and claim 3.

The written submissions on behalf of the Respondent contend that the phrase “cast a shadow” must be interpreted in the light of the specification and that the hearing officer was right in his decision. It is also submitted that in the case of the German patent, the light source would not be totally blocked and the light source could cast a faint or diffuse shadow of a vehicle parked above it. On the question of clarity, it is submitted that if the application is construed so that it describes an invention where the indicia are no longer illuminated when a vehicle is parked above the light source, then such an application would be sufficiently clear, but not novel. Conversely, if Ms Long is correct that it is of the essence of her invention that the light source casts a clearly defined black shadow of a vehicle on the ceiling then the claim is unclear. The Respondent is, in effect, saying that if the claim is clear, it is not novel and if it is novel, it is unclear.

I will deal first with the application to admit fresh evidence on this appeal. In my judgment, the photographs sought to be relied on by Ms Long are not admissible evidence for any purpose. The photographs are said to be evidence of the meaning of the word “shadow” or of the phrase “cast a shadow”. But these words are ordinary English words. One cannot give evidence as to the meaning of ordinary English words. If there were any doubt as to the literal meaning of the word or phrase, resort might be had to a dictionary. The photographs illustrate the meaning of the word or phrase in the context of those photographs. For what it is worth, I agree that the photographs illustrate what is a perfectly ordinary and acceptable meaning of the word or phrase in that context. In this case, the word, or phrase, has to be construed in the context of the patent application and given a purposive construction. The photographs from the newspaper cannot help with the context of the patent application.

The specification in this case was originally drafted when the claims referred to matters wider than the claims now put forward, which refer to a light source casting a shadow on the relevant indicia. Although the claims were amended, the description of the invention was not. There is therefore a question as to which parts of the description of the invention apply to the reduced extent of the claims and which parts do not. One can say with some confidence that the paragraph on the second page of the body of the specification, which refers to the light source casting a shadow, continues to apply to the amended claims. It is probably the case that other parts of the body of the specification which refer to a light being illuminated or not illuminated, or changing its colour, do not apply to the amended claims.

Claims 1 and 3 and the relevant paragraph on page 2 of the body of the specification both refer to a light source being used “to cast a shadow” in the presence of a vehicle in a parking space. Ms Long is obviously right that in some circumstances when one speaks of an object casting a shadow one has in mind a defined shadow caused by the object partially obscuring the light source. However, I have to consider how the specification would be understood by a person skilled in the relevant art in the context of the specification as a whole, and adopting a purposive construction. The hearing officer defined the person skilled in the art in this case and his definition has not been challenged on this appeal. In truth, this question as to the meaning of the specification does not involve any special or unusual skill in designing the features of a car park. I think that I can judge the reaction of the reader skilled in the art by reference to the standards of an ordinary person reading the specification and being familiar with the everyday experience of parking in a multi-storey car park.

It would be clear to a reader of the specification that the inventor would wish to produce a situation where it was immediately obvious to a driver of a car which parking spaces were unoccupied. The unoccupied spaces would be clearly identified as the spaces below the illuminated parts of the car park ceiling. Conversely, the occupied spaces would be those below the non-illuminated parts of the car park ceiling. The reader would then reflect that the best way to produce that state of affairs would be to switch off the source of light or block it when a vehicle was present in a space. If the reader paid particular attention to the word “shadow” or the phrase “cast a shadow”, he would ask himself how that word or that phrase was consistent with what appeared to be the obvious best way of achieving the desired object. I think that the reader would readily conclude that the phrase “cast a shadow” was intended to describe a situation where the light source was blocked so that the indicia were not illuminated or were in “shadow”. If the reader persisted in wondering whether the phrase might nonetheless have some different meaning, he would wonder what benefit would be achieved by not adopting the alternative of (1) switching off the light or (2) blocking the light, but instead allowing some light to pass around the parked vehicle so as to cast a clearly defined shadow on the ceiling. The reader would not be able to see the benefit involved in casting a clearly defined shadow on the ceiling. Further, the reader would note that the specification and claims 1 and 3 do not refer to illuminating a ceiling or casting a shadow on a ceiling but instead refer to illuminating or casting a shadow on “an indicia”. This reference would suggest that one was not looking at the area of ceiling which is co-extensive with the area of the parking space below it but only with a comparatively small area, perhaps even a point, at ceiling level. As against that, I acknowledge that the body of the specification is not so clear when it refers to the indicia comprising “a portion of the ceiling”. Finally, the reader might consult the body of the specification to see what was said as to the method to be used to cast a clearly defined shadow on the indicia or on a portion of the ceiling. The reader would find that no information was given in this respect. At that stage, I think the reader would confidently conclude that the reference to a “shadow” or to “casting a shadow” was not used in the sense of casting a clearly defined shadow on the ceiling but was instead referring to the indicia at ceiling level not being illuminated or being in darkness and in that sense being in shadow.

I note that whereas claim 1 refers to casting a shadow, claim 3 refers to casting a shadow “of the vehicle”. Further the paragraph on page 2 of the specification refers to casting a shadow “(e.g. of the vehicle)”. Ms Long does not draw any distinction between claims 1 and 3. Nor did the hearing officer. I have nonetheless considered whether Ms Long’s construction might be more arguable in relation to claim 3 than it is in relation to claim 1. In the end, I conclude, reading the specification as a whole, that her construction is inappropriate for both claims 1 and 3. The reference to the vehicle in claim 3 and in the paragraph on the second page of the specification shows that it is the presence of the vehicle which places the indicia on the ceiling in shadow. That reference does not convey the sense that what is shown on the ceiling is a clearly demarcated outline of a vehicle.

Accordingly, I agree with the hearing officer in his construction of the claims. I reject Ms Long’s submissions to the contrary.

On this reading of the claims, the alleged invention is not novel, as the hearing officer found. I did not understand Ms Long to challenge this finding, if the hearing officer was right in his construction of the claims. On this basis, it is not necessary for me to consider whether, the application should also fail on the ground that the description of the invention was insufficient or whether the claims were clear and I will not do so.

Further, it is not necessary for me to consider the case on the alternative hypothetical basis that the claims are to be construed in the way contended for by Ms Long. However, in view of the submissions made in relation to No-Fume, I will briefly comment on the issues arising on that alternative construction. I think that I can easily reach the conclusion that, in that event, the specification would not have been sufficient; it would not have complied with section 14(3). On that alternative construction, the specification would not have contained a description of the invention in a manner which was clear enough and complete enough for the invention to be performed by a person skilled in the art. The case is not like the No-Fume case where a description by reference to a result to be achieved was regarded as sufficient and unambiguous. In the present case, there is a complete lack of information as to how the result is to be achieved. That information is necessary if the description of the invention is to be sufficiently clear and complete to enable it to be performed by a person skilled in the art. I referred earlier to a paragraph in Ms Long’s written submissions which seeks to describe the way in which the result would be achieved. Whether the description in her submissions would be adequate to enable the invention to be performed by a person skilled in the art, what is clear is that the specification did not even go that far and this reinforces the conclusion that the specification was insufficient.

The hearing officer did not expressly hold that the specification failed to comply with section 14(3). Further, there is no Respondent’s Notice seeking to rely on section 14(3). The hearing officer relied instead on section 14(5) and, in particular, on section 14(5)(b); he held that the claims were not clear. It does not necessarily follow from a conclusion that the description of the invention is insufficient that the claim is not clear, as required by section 14(5)(b). In the end, I will not answer the question whether the claims were clear on the basis of the alternative construction. It seems to me to be wholly artificial, and therefore unhelpful, to discuss whether a claim is clear on the basis of a hypothetical construction, which (as a matter of decision) I have held is not the correct construction.

My conclusion is that the hearing officer was right to construe the claims in the way which he did. In accordance with that construction, the claimed invention was not novel and he was right to reject the application. Accordingly, I dismiss this appeal.

The Respondent asks for its costs of the appeal. In my judgment, there is no reason why costs should not follow the event and I will order Ms Long to pay the Respondent’s costs of the appeal.