Technetix BV & Anor v Teleste Ltd

Novelty is assessed objectively. A prior disclosure anticipates a patent claim if performing what it discloses would necessarily result in infringement, even if the skilled person would not recognise that consequence at the time.

An arbitrary selection of numerical parameters does not confer inventive step without evidence of a technical advantage. In assessing obviousness, terminology such as “blocking capacitor” must be construed in context rather than treated as having a fixed and narrow meaning.

An amendment infringes the prohibition on added matter where it presents the skilled person with new technical information. Extracting features from a specific embodiment is impermissible where the skilled person would not regard the omitted features as merely incidental.

Technetix, the proprietor and exclusive licensee of a patent concerning filters in cable television networks, alleged that Teleste’s products indirectly infringed the patent. Teleste counterclaimed for revocation on grounds of lack of novelty, lack of inventive step and added matter.

Technetix sought unconditional and conditional amendments to the patent. The court considered whether the products fell within the amended claims, whether the claims were anticipated by Jelinek, whether the claims were obvious over Jelinek, Mothersdale and Buie, and whether the conditional claim introduced matter extending beyond the application as filed.

1. Infringement. The ASH4P product contained a high-pass filter within the meaning of the unconditional claim. The relevant threshold was whether the filter at least partially prevented intermodulation products. The possibility that the device might suffer a surge-related failure did not answer that question.
2. Novelty. Applying the approach in Synthon BV v SmithKline Beecham plc [2005] UKHL 59, the court held that Jelinek disclosed all the integers of the unconditional claim. It was unnecessary that the skilled person, reading Jelinek, would appreciate that protection against transients would reduce intermodulation. The question was whether performance of the prior disclosure would in fact produce that result. It would.
3. Inventive step. The numerical limitations in the conditional claim, requiring two 1nF capacitors and a 3.3µH coil, had no demonstrated technical advantage and represented an arbitrary range. The claim therefore lacked inventive step, consistently with the reasoning in LG Philips LCD Co Ltd v Tatung (UK) Ltd [2006] EWCA Civ 1774.
4. In relation to Mothersdale and Buie, “blocking capacitor” had to be construed in context. The skilled person would understand the capacitor to block DC and also operate as an AC high-pass filter. Replacing that first-order filter with an LC filter was an obvious potential improvement. Both the unconditional and conditional claims therefore lacked inventive step over Buie; the unconditional claim also lacked inventive step over Mothersdale.
5. Added matter. The conditional claim extracted particular capacitor and coil values from a specific embodiment while omitting other disclosed features, including the voltage rating. Applying the principles discussed in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40, Edwards Lifesciences LLC v Boston Scientific Scimed, Inc [2017] EWHC 405 (Pat) and Nokia Corporation v IPCom GmbH & Co KG [2012] EWCA Civ 567, the amendment disclosed new information and was invalid for added matter.
6. The patent was revoked. The unconditional claims were invalid for lack of novelty and inventive step. The conditional claims were invalid for lack of inventive step and added matter. Had the unconditional claims been valid, all three products would have infringed.