Bose Corporation v Freebit AS

Patent claims are construed purposively and in context, but deliberate limitations in the claim must be given effect. Where a claim requires an article to have a specified shape, the required shape must exist before insertion unless the claim indicates that the article is to acquire it in use. A prior publication anticipates a claim only if it discloses all its features, expressly or inherently. A flexible prior-art device may anticipate a claim where the teaching is to conform to the relevant anatomical surface in use. An amendment is obvious where the skilled person would naturally make the identified modification for the purposes of the relevant field. Added matter is assessed by comparing the disclosure of the application as filed with the patent as granted or amended, applying the direct-and-unambiguous-disclosure test.

The claimants sought declarations concerning the validity and infringement of European Patent 2177045, entitled “Improved Earpiece”, owned by Freebit. Freebit counterclaimed for infringement and consented to revocation of one patent. The validity challenge relied on prior publication of Freebit H1 ear units, anticipation and obviousness over US patent application US 2002/0096391 (Smith), and added matter and clarity objections to a proposed conditional amendment. The central issues were the construction of the claimed curvatures, whether the H1 units and Smith disclosed the claim, whether the proposed amendment was allowable, and whether Bose’s units infringed.

1. Construction. The claims were to be construed purposively and in context. The claimed ear unit had to possess the specified shape before insertion into the ear. The claim did not cover a resilient unit which acquired the relevant second curvature only through compression in the ear. “Decremental” indicated a substantially continuous curve generally following the antihelix, with a decreasing radius, rather than a mathematically regular curve. The second curvature followed the floor of the concha and provided a contact surface.
2. Prior publication and anticipation. On the balance of probabilities, the Freebit H1 type A and/or B units had been supplied before the patent’s priority date and possessed the claimed second curve. Claim 1 was therefore anticipated and the patent was invalid. It was unnecessary to decide whether type C units had also been made available before the priority date.
3. Smith. Smith disclosed all the features of claim 1 except the second curvature. If the patent were construed to cover a flexible device which acquired that curvature in use, Smith would anticipate claim 1 because it taught the use of flexible material conforming to the concha. Smith did not disclose the proposed incision feature.
4. Obviousness. Applying the four-stage Pozzoli analysis, it would have been obvious to improve Smith by using flexible material contacting the floor of the concha. It would also have been obvious, for an in-ear headphone designer, to adapt the device with a downward-projecting part and an incision cooperating with the intertragic notch. The proposed amended claim was therefore obvious over Smith.
5. Added matter. The direct-and-unambiguous-disclosure approach applied. The granted claim added matter if construed to cover an ear unit in which part of the decremental curve was formed by the hearing element, because the relevant structural and functional context had been omitted. The proposed incision amendment was not an impermissible intermediate generalisation.
6. Infringement and orders. The Bose units were planar in the relevant plane before insertion and therefore did not infringe the patent as construed. The patent was invalid on the prior-publication ground; the granted claims added matter on the stated construction; and the proposed amendment was obvious over Smith and would not cure anticipation by the H1 units.