Factual and Procedural Background
This appeal arises from an order made by Judge Bacon on 18 December 2023 revoking United Kingdom Patent No. 2 473 376 ("the Patent"), which relates to a method and apparatus for reducing fraud in call centres by blocking dual-tone multi-frequency (DTMF) tones entered by callers to prevent sensitive information from reaching call centre agents. The Patent's earliest priority date is 9 May 2008.
The judge held that claim 9 of the Patent was invalid due to obviousness over two prior art references, Van Volkenburgh and Shaffer, and that if claim 9 was invalid, none of the other claims were independently valid. The judge also found no infringement by the Defendants ("Company B"). The Plaintiff ("Company A"), the Patent proprietor, appealed on five grounds, including a challenge to the construction of claim 9. After hearing argument on the first ground, the Court dismissed the appeal on that ground, rendering further arguments unnecessary. This judgment sets out the reasons for that conclusion.
Legal Issues Presented
- What is the correct construction of integer (f) of claim 9, specifically whether the claim requires the request to be sent directly to an external entity without entering the call centre's data processing environment?
- Whether the judge erred in her assessment of obviousness based on the construction of claim 9.
Arguments of the Parties
Appellant's Arguments
- Claim 9 should be construed as requiring the request to be transmitted directly to the external entity, bypassing the call centre's data processing environment.
- The skilled team would understand the claims as limited to such direct transmission embodiments, excluding those where the request passes through the call centre.
- The distinction between "the invention" and "also provided" language in the specification indicates that certain embodiments, including those involving indirect transmission through the call centre, were abandoned during prosecution.
- Compliance benefits under PCI DSS are only achieved if the request is sent directly to the external entity without passing through the call centre.
Appellee's Arguments
- The claim language is broad and does not limit the transmission of the request to direct routes only.
- The specification discloses and contemplates embodiments where the call processor is located inside or outside the call centre, and both are covered by the claims.
- The skilled team would understand the claims as encompassing both direct and indirect transmission embodiments.
- There is no express or implicit limitation in the claims restricting the location or routing of the request.
- The distinction drawn by the Appellant regarding the specification language is not supported by the text or the skilled team's understanding.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Philip Morris Products SA v Nicoventures Trading Ltd [2022] EWCA Civ 1638, [2023] ECC 13 |
Principles of patent claim construction, including purposive interpretation and the requirement for clear exclusionary language to exclude embodiments described in the specification. |
The Court relied on this precedent to affirm that claim language should be interpreted broadly and that clear language is required to exclude embodiments described as part of the invention. |
Court's Reasoning and Analysis
The Court began by reaffirming established principles of patent claim construction: claims are to be interpreted through the eyes of the skilled team with common general knowledge, purposively and in context of the specification and drawings, without unjustified narrowing or extension of clear claim language.
The central issue was the construction of integer (f) of claim 9, which requires transmitting a request via a data interface to an external entity. The Appellant argued this required direct transmission bypassing the call centre's data processing environment, while the Respondent argued for a broader construction encompassing both direct and indirect transmission.
The Court found no basis in the claim language or specification for reading in a limitation requiring direct transmission only. The specification explicitly discloses multiple embodiments, some where the call processor is inside the call centre and processes sensitive data before sending it on, and others where it is outside. Both types are presented as embodiments of the invention.
The Court rejected the Appellant's argument that the claims exclude embodiments where the request passes through the call centre. The "also provided" language in the specification, relied upon by the Appellant to support narrowing, was found insufficient and not indicative of abandonment of broader embodiments.
The Court emphasized that claim 9 is drafted broadly and functionally, without specifying the location or routing of the call processor or request, and that the skilled team would understand the claims to cover all disclosed embodiments.
Consequently, the judge's construction was upheld as correct. Since the judge's obviousness assessment was based on the correct construction, the invalidity finding stood.
Holding and Implications
The Court DISMISSED the appeal on the ground of claim construction.
The direct effect is that the Patent remains revoked for obviousness. There is no new precedent set beyond the application of established principles of patent claim construction to the facts of this case. The decision clarifies that claims drafted in broad, functional terms should not be narrowly construed to exclude embodiments expressly disclosed in the specification absent clear language to that effect.