Ensygnia IP Limited v Shell Oil Products Limited & Ors

Patent claims are construed purposively by reference to their wording, the specification and the inventor’s purpose. A description expressly stating that an embodiment is outside the claims remains relevant to construction. Here, that teaching meant that a claimed sign was static and non-electronic, but the amended claim lacked clear and unambiguous support in the application as filed. The claims therefore failed for added matter. They also extended the protection conferred by the patent because the granted claims did not cover static signs. The claims were independently obvious over prior art concerning barcode payment systems. A claim requiring a first message and first server is not necessarily limited to the first message chronologically, but the server receiving that message must itself establish the user’s identity. If valid, one Shell system iteration would have infringed, while two others would not.

Ensygnia sued Shell for infringement of UK Patent GB 2 489 332 C2, concerning secure access to a registered service through a graphical encoded information item scanned by a mobile device. Shell denied infringement and counterclaimed for revocation on grounds including anticipation, obviousness, added matter, extension of protection and uncertainty insufficiency.

The central construction issues concerned the meaning of a sign, the relationship between the display and electronic apparatus, and the meaning of a first message. The court also considered prior art disclosures in Schmidt and Kiliccote and infringement by three iterations of Shell’s mobile payment system.

1. Construction. The claim required a static, non-electronic sign. The specification’s express distinction between a sign within the claims and an electronic display outside them was decisive. The sign need not be geographically proximate to the electronic apparatus, and the display and electronic apparatus need not be part of the same device.
2. First message. “First” distinguished the claimed message and server from other messages and servers. It did not require the message to be the first chronologically. However, the first server had to receive the message and establish the user’s identity.
3. Validity. The application as filed did not clearly and unambiguously disclose a static, non-electronic sign. The amended claims therefore added matter under Patents Act 1977, s.72(1)(d). The amendments also introduced new disclosure that the electronic apparatus provided the service. The amended claims extended protection contrary to ss.72(1)(e) and 76(3)(b), because the granted claims did not cover static signs.
4. Prior art. Schmidt did not clearly disclose a barcode unchanged between transactions, so it did not anticipate claims 1 and 7 on the adopted construction. It would nevertheless have been obvious to implement its local public transport embodiment with a static barcode, and server-side decoding was also obvious. Kiliccote disclosed most integers, including a static sign, but did not clearly disclose a first message containing an identifier identifying the device or user. The uncertainty insufficiency attack failed because the boundary of a static sign was ascertainable.
5. Infringement. If valid, the first Shell iteration would have infringed claims 1 and 7. The second and third would not, because the server receiving the first message did not itself establish the user’s identity. Claims 1, 2, 7 and 8 were invalid for added matter, extended protection and obviousness over Schmidt.