Ensygnia IP Ltd v Shell UK Oil Products Limited & Ors

Patent claims are construed in the context of the specification as a whole. General wording may receive a specific limitation where the document makes that necessary, although this can reduce certainty for third parties. For post-grant extension of scope, the court compares the properly construed claims as granted and amended. A concrete embodiment newly brought within the amended claim engages the absolute prohibition. Added matter is assessed by strict comparison with the application as filed. Subject matter is added unless clearly and unambiguously disclosed, without hindsight. Claim coverage is distinct from disclosure. Obviousness requires the Pozzolli preparatory steps followed by a multifactorial assessment without reducing the inquiry to what the skilled person could or would do. Construction of prior art is for the court, not the experts.

The patentee appealed from the decision of a Deputy High Court judge in [2023] EWHC 1495 (Pat). The patent concerned methods using graphically encoded information, including QR codes, to identify a user and authorise access to a service. The judge accepted the patentee’s construction of claim 1 but held the patent invalid for added matter, extension of scope and obviousness over Schmidt. Shell challenged the construction by Respondent’s Notice. The Court of Appeal considered whether “sign” meant a non-electronic static sign, whether the post-grant amendments added matter or extended protection, and whether the claim was obvious over Schmidt.

The appeal was allowed only on the second added-matter issue. The Respondent’s Notice challenging construction was dismissed. The findings of invalidity for extension of scope, the first added-matter issue and obviousness remained.

1. Construction. Claims must be read with the specification as a whole. Although the claim in isolation could suggest an electronic display, the C2 specification drew a specific contrast between a sign and an electronic display near an electronic door lock. The skilled reader would therefore understand “sign” to mean a non-electronic static sign, such as paper or card. Reading that limitation into general claim language was unusual, but necessary to make sense of the claim and specification together, having regard to the Protocol on the Interpretation of Article 69 EPC.
2. Extension of scope. Under sections 76(3)(b) and 72(1)(e) of the Patents Act 1977, the court compares the properly construed claims as granted with the amended claims. The granted B specification covered a QR code on a computer screen but did not cover a static sign. The C2 amendments brought a static sign within the claim. The prohibition was therefore engaged and the patent was invalid on this ground. The general expectation that claims may cover the disclosed embodiment was only one factor and did not override the document’s language and context.
3. Added matter. Under sections 76(3)(a) and 72(1)(d), subject matter is added unless clearly and unambiguously disclosed in the application as filed. Express and implicit disclosure must be assessed strictly and without hindsight. The application did not clearly disclose a non-electronic static sign. The reference to periodic updating naturally applied to both limbs of the electronic-door-lock passage and reinforced an electronic reading. The first added-matter finding was therefore correct. The distinction between claim coverage and disclosure meant that general language covering alternatives did not itself disclose each alternative.
4. Second added-matter issue. Recasting the original wording concerning provision of a service via the computing apparatus as transmission of a signal to the apparatus followed by provision of the service by that apparatus did not disclose new subject matter. The later division of the computing apparatus into an electronic apparatus and a display was also legitimate. This ground succeeded.
5. Obviousness. The Court followed the Pozzolli approach: identify the skilled person and common general knowledge, identify the inventive concept or construe the claim, identify the differences from the prior art, and then assess obviousness without hindsight. The inquiry is multifactorial and cannot be reduced to whether the skilled person could, rather than would, make the relevant modification. Construction of Schmidt was for the judge. Schmidt did not positively direct the use of a static barcode, but its local-public-transport embodiment did not require dynamic barcodes. The evidence supported the conclusion that an unchanging barcode was a simple design choice and that claim 1 was obvious.

1. Court of Appeal (Civil Division). In [2024] EWCA Civ 1490, the Court dismissed Shell’s Respondent’s Notice, allowed the appeal on the second added-matter issue, and dismissed the remaining grounds.
2. High Court of Justice, Intellectual Property List (ChD). In [2023] EWHC 1495 (Pat), the Deputy High Court judge accepted the construction of claim 1 but held the patent invalid for extension of scope, added matter and obviousness.