HTC Corporation v Yozmot 33 Ltd.

A patent claim must be construed purposively through the eyes of the skilled person. Preparatory steps may form part of a claimed method where excluding them would make the claim incapable of infringement. Functional expressions such as boosted loudspeaker are not confined to a particular technical construction unless the specification supports that limitation.

Novelty requires prior art to disclose subject matter which would necessarily infringe the claim and to disclose it sufficiently for performance. Obviousness is assessed technically, by applying the structured approach in Pozzoli v BDMO SA. A patent need not enable every possible implementation within a method claim. Supplying products which offer the claimed method for use by consumers can infringe under section 60(1)(b) of the Patents Act 1977.

HTC Corporation sought declarations that European Patent (UK) No 0 909 499 B1, owned by Yozmot 33 Ltd, was invalid. Yozmot alleged infringement of claims 1, 2, 5 and 6, and applied conditionally to amend claim 1.

The patent concerned cellular telephones using customised audible messages, memory and a louder loudspeaker to identify incoming callers. The principal issues were construction, novelty, obviousness, insufficiency, added matter, excluded subject matter and infringement. The court also considered the validity of claim 7.

1. Construction. Claim 1 was construed purposively. Steps I and II were preparatory steps forming part of the claimed calling procedure. “Additional memory” meant memory sufficient to store the customised message in addition to the telephone’s other functions; it did not require retrofitting after manufacture. “In” included a composite apparatus such as an add-on device or hands-free kit. “Ring loudspeaker” was not limited to a buzzer.

2. “Boosted loudspeaker” was defined functionally. It meant a loudspeaker capable of making the customised message audible in the surrounding environment. It could be a moving-coil loudspeaker, a buzzer, an additional loudspeaker, or the earphone loudspeaker operated through a booster circuit. No particular loudness or fidelity was required. The same component could perform the boosted-loudspeaker and earphone-loudspeaker functions at different times.

3. Validity. Claims 1, 5 and 6 were invalid. Noziri and Shen made the claimed cellular-telephone application obvious. Van der Salm anticipated the claims because its buzzer could reproduce audible music or speech sufficiently loudly to qualify as a boosted loudspeaker. The MT-20 and Nokia 9000 also anticipated claim 1 on the construction adopted, and the Nokia 9000 anticipated claims 5 and 6.

4. The obviousness inquiry was technical rather than commercial. The skilled person weighed functionality against power consumption, size and weight; those considerations did not make the claimed adaptations non-obvious. The structured approach in Pozzoli v BDMO SA was applied.

5. The specification was not insufficient. Although transmitting complex audiofiles over a cellular network would present a considerable technical challenge, the patent did not promise implementation of every possible complex audiofile. Claim 7 was not excluded as mere presentation of information because its contribution had technical character and solved a technical problem.

6. The proposed amendments did not cure the invalidity. Claim 7 was valid. If claims 1, 5 and 6 had been valid, the HTC products would have infringed under section 60(1)(b). The section 60(2) issue did not need determination.