Patent Case Watch
Written by Michael Coyle on 30 August 2009« Return to Reading Room
Cranway the Claimant sought to enforce its patent EP 0625760B1 for online gambling. It was held to be invalid. The invention related to an interactive, real time, realistic "home" computer gaming system using general purpose computers. Aspects of the invention concern auditing and security to ensure fairness for players and prevent players defeating the outcome of a game. It also ensured that players could play a variety of games.
Playtech and the Tote the Defendants both denied infringement and claimed the patent was invalid for three reasons:
1. The claimed invention is not new.
2. The claimed invention is obvious.
3. The claimed invention is not in fact an invention.
The defendants were successfull in their arguments.
The skilled addressee
The court considered the meaning and identity of a skilled addressee. It considered a skilled addressee had three main functions:- "First, it is through his eyes that the court must interpret the patent in suit. Second, it is through his eyes that the court must decide what is disclosed by any cited piece of prior art. Third, it is with his knowledge that the court will decide whether the claimed invention of the patent in suit is obvious over common general knowledge or a cited piece of prior art. The skilled addressee may be a single person or a team. Usually the parties have little difficulty in identifying who the skilled addressee is or, in the case of a team, who constitute the members of the team".
In this case the parties could not agree. Lord Diplock said in Catnic Components Ltd v Hill & Smith Ltd  RPC 183,
"a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly."
The important principle is "putting the teaching of the patent into actual practice".
Cranway's expert was Stacy Friedman. He was a casino game designer and inventor, computer software systems engineer, and gaming mathematician. His view was that the following three roles would be necessary for "the proper implementation" of the Patent:
i) a casino operations manager;
ii) a computer software systems engineer;
iii) a gaming mathematician.
All three added up to the team making up the skilled addressee. The defendants' expert pointed out that the patent was written in very basic terms with little or no explanation of the details of the systems it describes or how they might be implemented. In addition it was concerned with the functionality of the system rather than details of its design.
In the Defendants view the patent addressed a person or team of persons interested in providing a system for playing multiplayer games using a network of computers. The skilled addressee would have knowledge of the workings of personal computers as terminals remote from a mainframe computer, data transmission, modems and how to use them to interact with online service providers to play interactive games.
The task for the court was to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. Article 69 of the European Patent Convention deals thus as referred to by the court:
"Article 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
It follows that the claims are to be construed purposively-the inventor's purpose being ascertained from the description and drawings.
It further follows that the claims must not be construed as if they stood alone-the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept.
But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
An invention is not patentable unless it is new. If it is not new it is said to have been anticipated. The claim will have been anticipated if someone following the instructions given by a piece of prior art would inevitably infringe the patent.
Lord Hoffmann summarised it thus in Synthon BV v SmithKline Beecham plc
"the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing:
"whether or not a person is working [an] ...invention is an objective fact independent of what he knows or thinks about what he is doing"
The following test is relevant :
Identify the notional "person skilled in the art" and Identify the relevant common general knowledge of that person. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it and then identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
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