Technetix BV & Ors v Teleste Ltd

Patent claims are construed by the ordinary principles of construction, read through the eyes of the skilled person with the common general knowledge in mind. There is no general rule requiring a court to construe a claim narrowly to avoid invalidity over common general knowledge. Novelty and inventive step remain separate questions.

Under the doctrine of equivalents, the relevant comparison is between the accused product as a whole and the inventive concept. A patentee need not identify an equivalent for every missing claim integer separately, although no missing integer may be ignored. The court left open whether English law recognises a Formstein defence where an equivalent within the scope of a claim would itself have been anticipated or obvious.

The claimants were the proprietor and licensees of a patent for a cable television tap unit. They alleged that Teleste’s Tap Bank infringed the patent. Teleste counterclaimed for revocation on grounds of lack of novelty and inventive step.

The patent was considered in its proposed amended form. The principal issues were the construction of claim 1, whether the claim was anticipated or obvious over two items of prior art, whether the Tap Bank infringed under the doctrine of equivalents, whether a Formstein-type defence existed, and whether one claimant had been an exclusive licensee during the relevant period.

1. Construction and validity. Claim 1 required the signal input to form an integral part of the base unit, and the base unit had to contain the necessary circuitry. A “group of signal outputs” did not require outputs producing a signal at a level suitable for a subscriber connection. The requirement that the directional coupler be replaceable independently of the signal outputs required independence from at least one identified group in the relevant signal path, not from every group in the tap unit. Temporary interruption of the signal path when access was obtained did not exclude an apparatus from the claim.
2. There was no general rule that a court must construe a claim slowly or narrowly where a normal construction might lead to invalidity over common general knowledge. Construction depended on the clarity of the claim and the facts. Claim 1 lacked novelty over both Rocci and Toner. Alternatively, if Rocci did not anticipate the claim because it was not enabling, the claim was obvious over it. The claim was also obvious over Toner on the alternative construction advanced by the claimants.
3. Infringement. The Tap Bank lacked the base-unit and receptor integers on a normal construction. Applying the three revised Improver questions, however, it achieved substantially the same result in substantially the same way as the inventive concept. It would have been obvious to the skilled person that it did so in that way, and the skilled person would not have regarded circuitry in the base unit as essential to the inventive concept. The Tap Bank therefore infringed under the doctrine of equivalents.
4. The court rejected the submission that equivalence must invariably be pleaded integer by integer. The variant must be considered as a whole, but all missing integers remain relevant. The inventive concept was the independent removability and insertion of the directional coupler, rather than the location of the circuitry.
5. The court left open whether English law recognises a Formstein defence. On the hypothesis that it does, the Tap Bank would have been obvious over common general knowledge and Teleste would have had the defence.
6. The patent was invalid as granted and would remain invalid as amended. No exclusive licence to the Second Claimant existed during the period 23 May 2006 to 19 December 2016.