Printed QR Codes: UK Court of Appeal scans through patent's invalidation

The Court of Appeal recently upheld a Patents Court decision invalidating Ensygnia’s patent relating to graphical objects that encode information (“GOs”), such as barcodes and QR codes. 

Summary 

A key issue was whether the patent claims encompassed a “static” GO (e.g. a QR code printed on paper) or were limited to electronically displayed GOs (i.e. dynamic GOs that could change between transactions). 

Birss LJ in the Court of Appeal (“CA”) construed the claims to include static QR codes displayed on paper. However, the patent, as initially granted, did not clearly disclose static GOs, which was only introduced into the patent after grant. Therefore, the findings of invalidity on the grounds of extension of scope and added matter, due to the post grant amendments made, were upheld. 

Additionally, the CA found no error in the Patents Court’s finding of obviousness over the prior art relating to ticket machine barcodes, which did not change between transactions.

Background

The patentee, Ensygnia contended that Shell infringed its UK patent by using QR codes printed on sheets of paper or cards as a payment method in Shell’s petrol stations. Ensygnia argued that static QR codes were disclosed in the original patent application and fell within the scope of the granted claims. 

Shell denied infringement, asserting that the claims were limited to electronically displayed GOs, and argued that the patent was invalid on various grounds, including extension of scope (under section 76(3)(b) Patents Act 1977), added matter (section 76(3)(a)) and obviousness (section 3). The CA considered these grounds in its judgment. 

Key Issues and findings

Construction

Both the specification as granted and the amended post-grant specification contained an electronic door lock embodiment in which GOs “may be displayed on a sign geographically proximate to the electronic door lock”. The CA acknowledged that this could be read either way in isolation and considered “display” to be a technical term referring to electronic displays.However, it stated that an isolated reading was not the right approach. 

Instead, the CA examined the wording and the context of the specifications. It noted that the common knowledge of printed GOs, although something that the skilled person would have been aware of, was irrelevant in determining whether static signs were actually disclosed. The CA concluded that “sign” in the amended post-grant patent was understood as GOs displaying non-electronic static signs, such as a piece of paper near the lock. 

Extension of scope (s76(3)(b))

The claim as granted specified that the GOs were “displayed on a display of a computing apparatus”, Nothing in this wording suggested that the claims encompassed GOs displayed on paper. Describing a piece of paper on a wall as a display of a computing apparatus was considered an unnatural use of language. Therefore, the patent as granted was held not to cover non-electronic static signs. 

Since the amended post-grant patent introduced static paper GOs, the CA considered that the scope of the patent was extended post-grant.

Added matter (s76(3)(a))

The CA relied on case law to emphasise that general words may cover a variety of things without disclosing any particular one (or more) of them. Just because “sign” is “highly general and non-specific” enough to include non-electronic signs, and just because the skilled person would understand that the patentee intended the concept of a sign to be distinct from the electronic display, did not necessarily mean that non-electronic signs were disclosed. This was particularly true given that the specification was entirely focussed on electronic systems and described periodic updating, suggesting that the sign must be digital.

Consequently, there was no clear and unmistakable disclosure of non-electronic signs in the patent as granted. Instead, the idea was only introduced through the post-grant amendment, constituting added matter. 

Obviousness (s3)

Whilst dismissing alleged errors in the finding of obviousness, the CA noted that the construction of prior art is a matter for the judge not the experts.

Additionally, Ensygnia’s argument that there was no evidence that a skilled person would – as opposed to could – modify the prior art to use static displays was deemed irrelevant. Obviousness is assessed on a multifactorial basis and is not determined solely by whether the skilled person would have arrived at the claimed invention. Consequently, there was a sufficient evidentiary basis for the judge to find obviousness.

Takeaways

In reaching his conclusion Birss LJ reinforces existing case law and provides a useful reminder of the following points:

• Construction: General words in patent claims may cover a variety of things, but this does not necessarily mean that aparticular one (or more) of those is disclosed. 

• Distinction between common general knowledge and construction: Something being common general knowledge to the skilled person does not make it relevant in determining whether it is disclosed in the patent. 

• Construction of the prior art is a matter for the judge and not the experts: The role of expert evidence is to equip the judge with the perspective of the skilled person, including their common general knowledge, enabling the judge to accurately interpret the documents. However, an exception arises for technical terms of art, where expert evidence can be helpful.  For instance, in this case, “digital” was considered a technical term of art, whereas “sign” was not.
  
  
• Obviousness is not simply determined by a single question: It is not simply a question of whether the skilled person would have arrived at the claimed invention. The analysis is multifactorial and closely tied to the particular circumstances of the case. 

Authored by: Quinn Liang & Vrinda Gambhir