Secretary of State for Education and Skills v Frontline Technology Ltd

For patent validity, claims must be construed purposively in the context of the specification. A functional expression such as a data collation program may be satisfied by software operating at any appropriate processing level. Downloading respective sets of student data requires transfer of discrete batches of data, followed by processing on the portable unit and uploading of the combined result. The skilled team is identified by the technical field of the invention. Specialist expertise may be introduced where the problem reasonably requires it; no rigid rule excludes such expertise. Obviousness must be assessed without hindsight. A broad conceptual claim may be obvious even where a detailed implementation claim is not.

The Secretary of State sought revocation of European patent (UK) No. 0.664.061, relating to a wireless student attendance and data-collection system. Claims 1, 2 and 7 were independently challenged for lack of novelty and inventive step, and the earlier priority date claimed for claims 1 and 2 was disputed. The court considered the construction of disputed claim terms, the relevant skilled person and common general knowledge, several prior systems and publications, priority entitlement, and alleged intervening use by the defendant’s associated company.

The central issues were whether claims 1 and 2 were entitled to the earlier priority date and whether claims 1, 2 and 7 were novel and inventive over the cited prior art and intervening disclosures.

1. Construction. The claims were to be construed purposively, having regard to Article 69 and its Protocol. A data collation program meant a program which assembled data uploaded from the portable units. It need not also manage downloading, and its processing level was immaterial. “Downloading respective sets of student data” required transfer of discrete batches of data from the central computer to the portable units, followed by independent processing on the portable unit and uploading of the combined result. “Portable unit” meant a unit capable of being carried by hand or on the person; desktop computers on trolleys were not portable in that sense.
2. Skilled team. The relevant art was student data collection and school attendance registration. The notional team included educational IT personnel and a general systems analyst, but did not automatically include radio communications expertise. The wording of sections 3 and 14(3) of the Patents Act 1977 was used in different contexts, and did not impose a rigid rule that the same skilled persons must be used for inventive step and sufficiency.
3. Novelty and inventive step. The Symbol systems did not anticipate claims 1, 2 or 7 because they were not programmed as the claimed student data collection system and did not disclose the required batch downloading, collation, or claim 7 traffic-management features. The Kingshurst wired school system disclosed the functional architecture underlying claims 1 and 2. Replacing its wired portable computers with wireless portable units was a logical alternative which would have been obvious, with assistance from a radio networking specialist. Claims 1 and 2 were therefore obvious. Claim 7, involving intelligent transceivers, buffering, polling and the specified RF implementation, was not obvious in light of Kingshurst or the other cited material.
4. Priority and intervening use. Claims 1 and 2 were entitled to the earlier priority date because their subject matter was directly and unambiguously derivable from the priority application using common general knowledge. The Brentford, St John Bosco and Spennymoor disclosures did not render claim 7 obvious; the systems disclosed only features corresponding to claims 1 to 4.

Claims 1 and 2 were found obvious and lacking inventive step. Claim 7 was not obvious in view of the cited prior art, intervening use or disclosures.