Adolf Nissen Elektrobau GmbH & Co KG v Horizont Group GmbH

In assessing inventive step, the skilled person is deemed to consider each item of prior art carefully, regardless of whether it appears a promising starting point. Technical obviousness is distinct from commercial desirability, safety, or regulatory approval. A modification does not cease to be obvious because the resulting product may be unattractive, dangerous, or unlikely to obtain regulatory approval, although those matters may sometimes affect whether a variant falls within the claim. The court must assess whether the claimed technical features would have been obvious to the skilled person in the relevant UK context, including relevant common general knowledge.

The claimant sought revocation of a UK patent owned by the defendant for a mobile warning device for road traffic. The only pleaded ground was lack of inventive step over three items of prior art: a German utility model, a United States patent, and the claimant’s own previously marketed warning board.

The central issues were the proper construction of “mobile warning device” and whether the patent claims, including the use of a constant red warning cross, additional flashing spotlights, a particular spotlight configuration, and separate LED arrays, involved an inventive step.

1. Construction. The expression “mobile warning device” was not a UK term of art requiring use while the vehicle was moving. It meant a device mounted on a vehicle when in use, but the vehicle need not be in motion. The device also had to be suitable for directing road traffic.
2. Approach to inventive step. Applying Pozzoli SpA v BDMO SA [2007] EWCA Civ 588, the skilled person was deemed to consider the cited prior art carefully. Describing an item as a good or bad starting point could distract from the real question: whether the claimed invention was technically obvious after consideration of that prior art.
3. Regulatory obstacles and safety concerns did not, on these facts, prevent a technical modification from being obvious. A product’s possible danger or lack of commercial or regulatory value did not make an otherwise technically obvious variant inventive. The court considered the guidance in Ivax Pharmaceuticals UK Ltd v Akzo Nobel BV [2006] EWHC 1089 Ch and explained the approach in Eli Lilly and Co v Human Genome Sciences, Inc [2008] EWHC 1903 (Pat).
4. Prior art. DE007 disclosed optional use of its signboard on a vehicle in motion. It would have been obvious to adapt it to display a constant red cross as an alternative to flashing yellow arrows, using common general knowledge concerning two-colour LED spotlights. Claims 1, 4, 5 and 6 therefore lacked inventive step over DE007.
5. Pederson did not make the claims obvious because scaling its device sufficiently for visible road-traffic signals would make it impractical for vehicle mounting.
6. The Nissen Board likewise made all the claims obvious. Red LEDs could readily be incorporated to produce a constant red cross, and the additional spotlights and separate LED arrays were technically straightforward modifications.

The Patent was invalid for lack of inventive step.