Cunningham v Nokia Corporation

An appeal from a review of a non-binding patent opinion is conducted as a review, not a rehearing. The court should interfere only where the examiner made an error of principle or reached a clearly wrong conclusion, and the hearing officer failed to correct it.

Patent claims are construed by asking what a skilled person would understand the chosen language to mean, read with the description and drawings. In the absence of evidence of special usage, conventional meanings apply. For anticipation, prior art need only disclose matter falling within the claim and need not disclose every possible embodiment within its scope.

The appellant was proprietor of a patent for security systems using cameras, motion detectors and mobile telephones. He sought an opinion under the Patents Act 1977 on whether a Nokia product infringed. Nokia sought an opinion on validity. The examiner concluded that the product did not infringe and that claim 6 was invalid for lack of novelty.

A hearing officer reviewed the opinion under the Patent Rules 1995 and confirmed it. The proprietor appealed to the High Court, which had to decide whether the examiner or hearing officer had made an error of principle or reached a clearly wrong conclusion.

1. The appeal was dismissed. The court proceeded on the merits despite the appellant’s non-attendance. The usual order for costs was made, with an interim payment of £20,000 within 28 days.

2. Under rule 77K of the Patent Rules 1995, the appeal was a review rather than a rehearing. Applying Re DLP Ltd [2007] EWHC 2669, the court could interfere only if the examiner had made an error of principle or reached a clearly wrong conclusion and the hearing officer had failed to recognise it.

3. The claims were the focus of infringement analysis under section 14(5) of the Patents Act 1977. Claims were to be construed by asking what a skilled person would understand the language used by the patentee to mean, with the description and drawings relevant under section 125(1). Following Kirin-Amgen v Hoechst Marion Roussel Ltd [2005] RPC 9, conventional meanings applied because there was no evidence that the patentee used the language in a special sense.

4. The construction of claim 1, requiring activation by both a doorbell and a PIR detector, was the construction most fitted to the words used. It was not plainly wrong. Claim 6, which referred twice to “cameras” and differed from claim 1’s “camera/cameras” wording, was properly construed as requiring more than one camera.

5. The international application was prior art under section 2(3) of the Patents Act 1977. Its own priority application was unnecessary because the relevant filing dates satisfied the statutory condition. The provision required publication of the matter relied on, not the grant of a patent. Enablement concerned whether the prior-art invention could be performed by a skilled person, and lack of patentability did not itself prevent the disclosure from being enabling.

6. Applying the “plant a flag” approach from Tire & Rubber Co. v Firestone Tire & Rubber Company Ltd [1972] RPC 457, the prior art disclosed all features of claim 6. It therefore anticipated the claim and destroyed its novelty.

• High Court (Chancery Division): appeal from the hearing officer’s review decision dismissed.
• Patent Office: examiner’s opinion concluded that the Nokia product did not infringe and that claim 6 was invalid for lack of novelty.
• Patent Office review: the hearing officer confirmed the examiner’s opinion.