MMI Research Ltd. v Cellxion Ltd & Ors

A patent claim term should ordinarily have a consistent meaning across the claims. A skilled person may understand a claimed device to include a combination of items performing the relevant functions, but the term cannot be extended to an item or combination that performs none of those functions. A court should rarely ignore an express claim requirement merely because it appears unrelated to the inventive concept. Parties should disclose and present alternative allegedly infringing embodiments at trial so that issues can be determined efficiently in one hearing.

The judgment concerned a paper application arising from a patent infringement action. Following earlier judgments on the scope of an injunction and infringement by a UGX device, the court was asked to determine infringement by a further variant without any mobile phone properly so called.

The claimant contended that the variant satisfied claim 1 because the scanner performed all functions expressly required by that claim. The defendants relied on the ordinary meaning of the term test mobile phone. The central issues were the construction of that term and whether the further variant fell within claim 1.

1. Construction of “test mobile phone”. The term had to bear the same meaning in claim 1 and claim 4. The skilled person would understand it as referring to a device capable of operating as a mobile phone.
2. The court’s earlier conclusion that a combination of items could constitute a test mobile phone did not extend to an item or combination that performed none of the normal mobile-phone functions. The further variant therefore fell outside claim 1.
3. The court rejected an approach treating the claim term as an empty vessel containing only the functions expressly specified in the claim. The absence of anything capable of operating as a mobile phone was decisive.
4. It would be rare for proper principles of patent construction to justify ignoring a claim requirement merely because it appeared not to affect the inventive concept, consistent with STEP v Emson [1993] RPC 513 at 519.
5. The court also deprecated the piecemeal presentation of alternative alleged infringing devices after trial. Parties should disclose such variants at trial where reasonably practicable, in the interests of efficient litigation management under the Civil Procedure Rules 1998.

Declaration made that the further variant did not infringe claim 1.