Factual and Procedural Background
This appeal concerns UK patent number GB 2,489,332, relating to the use of graphical images encoding information, such as barcodes and QR codes, collectively referred to as graphical objects (GOs). The Plaintiff contends that the Defendant infringed the patent by using QR codes printed on paper or card at petrol stations as part of a payment method, where customers scan the QR code with their mobile phones to verify identity and pay for petrol. The Defendant denies infringement and asserts invalidity on multiple grounds.
At trial, the judge accepted the Plaintiff's construction of the claims and found infringement of the Defendant's first iteration of the method. However, the patent was held invalid on grounds of added matter, extension of scope, and obviousness, with the obviousness attack succeeding based on a prior art reference known as Schmidt. Other invalidity grounds were rejected and not appealed.
Permission to appeal was granted on the three invalidity grounds, with some hesitation regarding obviousness. The Defendant also challenges claim construction in a Respondent's Notice, which, if successful, would render the patent invalid and negate infringement. The appeal focuses on invalidity grounds assuming the Plaintiff's claim construction.
The patent originated from a parent application filed in November 2010 and a divisional application filed in March 2012. The patent was granted in May 2013 and amended twice post-grant, with the relevant claims and specification in a C2 specification published in August 2021.
Legal Issues Presented
- Whether the post-grant amendments to the patent claims result in added matter and/or extension of the scope of protection conferred by the patent.
- The proper construction of the claims, particularly whether the claims cover a static, non-electronic sign (such as a printed QR code on paper) or are limited to electronic displays such as computer screens.
- Whether the patent claims are obvious in light of the prior art reference Schmidt, particularly regarding the use of static versus dynamic graphical objects.
Arguments of the Parties
Plaintiff's Arguments
- The claims in their current amended form cover a system using a static sign (e.g., QR code printed on paper or card) scanned by a mobile phone.
- The concept of using a static sign was disclosed in the original application and within the scope of the claims as originally granted.
- The passage in the specification describing an electronic door lock with a sign near the lock supports the interpretation that "sign" refers to a static, non-electronic display.
- The claim language, read in context, supports this construction despite most embodiments involving electronic displays.
- The patent is novel and not anticipated by Schmidt, and the obviousness attack fails because Schmidt does not clearly teach the use of a static sign.
Defendant's Arguments
- The claims as amended do not cover a static sign but are limited to graphical objects displayed on electronic screens.
- The idea of using a static sign was not clearly and unambiguously disclosed in the original application, rendering the amendments invalid for added matter and extending the scope of the claims post-grant.
- Schmidt either anticipates the claims or renders them obvious, as it discloses both dynamic and static barcode uses, including printed barcodes.
- The sign referred to in the specification is more likely to be an electronic or digital sign, not a non-electronic static sign.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Hospira v Genentech [2014] EWHC 3857 |
Principles on extension of scope of patent claims post-grant (s.76(3)(b) and s.72(1)(e) Patents Act 1977) |
Used to explain that amendments extending claim scope beyond granted claims are prohibited and to guide comparison of claim scope before and after amendment. |
| Vector v Glatt Air Techniques [2007] EWCA Civ 805 |
Law on added matter (s.76(3)(a) and s.72(1)(d) Patents Act 1977) |
Summarized to clarify that amendments cannot add subject matter beyond that originally disclosed, protecting the public and the first-to-file system. |
| AC Edwards v Acme [1992] RPC 131; Texas Iron Works [2007] RPC 207; AP Racing v Alcon [2014] EWCA Civ 40 |
Distinction between coverage and disclosure in added matter analysis |
Applied to explain that general claim language may cover more than originally disclosed and that added matter requires clear and unambiguous disclosure. |
| Add 2 Research and Development Ltd v Dspace Digital Signal Processing & Control Engineering GmbH Dspace Ltd [2021] EWHC 1630 (Pat) |
Claims are not presumed limited to preferred embodiments; general language in claims may cover broader concepts |
Referenced to support the principle that claims are generalizations and not necessarily limited to specific embodiments described. |
| Promptu Systems Corp v Sky UK Ltd [2021] EWHC 2021 (Pat) |
Similar principle to above regarding interpretation of claims and embodiments |
Used to confirm the approach to claim construction in context of specification. |
| Pozzolli v BDMO [2007] EWCA Civ 588 |
Framework for assessing inventive step/obviousness |
Adopted to structure the analysis of obviousness including identifying skilled person, inventive concept, differences from prior art, and whether those differences are obvious. |
| Actavis v ICOS [2019] UKSC 15 |
Principles of obviousness and inventive step |
Applied as the leading authority on determining obviousness after preparatory steps. |
| Optis v Apple [2023] EWHC Civ 438 |
Role of expert evidence in claim construction and document interpretation |
Referenced to explain that construction of documents is a judicial function, with expert evidence assisting in understanding skilled person perspective. |
Court's Reasoning and Analysis
The court first addressed claim construction and internal invalidity issues, focusing on the effect of post-grant amendments and their relationship to the original application and claims. The central dispute concerned whether the claims cover a static, non-electronic sign (e.g., printed QR code) or are limited to electronic displays such as computer screens.
The court agreed with the trial judge that, when read in context with the C2 specification—particularly the passage describing the electronic door lock—the term "sign" in the claims refers to a static, non-electronic sign. This interpretation was supported by the specification’s explicit exclusion of electronic display embodiments from the claims and the distinction drawn between "sign" and "electronic display." However, the court noted that such a narrow reading of general claim language is unusual and may reduce certainty for third parties but was compelled by the specification’s language.
Regarding extension of scope, the court found that the post-grant amendments introduced the concept of a static sign into the claims, which was not covered by the claims as originally granted. The granted claims and specification primarily contemplated electronic displays, and the amendments expanded the claim scope to cover static signs such as printed QR codes. This constituted an impermissible extension of scope under s.76(3)(b) and s.72(1)(e) of the Patents Act 1977, and the appeal was dismissed on this ground.
On added matter, the court held that the application as originally filed did not clearly and unambiguously disclose the use of a static, non-electronic sign. Although common general knowledge acknowledged printed barcodes, the skilled person reading the original application would not have understood the invention to include static signs as claimed post-amendment. The distinction between electronic and non-electronic signs was not made clear, and the periodic updating described implied an electronic sign. Therefore, the amendments introduced added matter in breach of s.76(3)(a) and s.72(1)(d) of the Patents Act 1977.
However, on a second added matter point concerning amendments to the final part of claim 1, the court found no added matter. The amendment dividing the computing apparatus into electronic apparatus and display and rephrasing the provision of the service was held to be a legitimate and non-additive clarification.
On obviousness, the court applied the Pozzolli framework and Actavis principles. The prior art reference Schmidt disclosed a payment system using barcodes displayed either electronically or printed, including a local public transport (LPT) system. Although Schmidt primarily described dynamic barcodes changing per transaction, it did not require barcodes to be dynamic. The court agreed with the trial judge that Schmidt did not clearly and unmistakably direct the skilled person to use static signs but found that using a static barcode was a simple design choice and thus obvious.
The Plaintiff's arguments challenging the judge’s interpretation of Schmidt, the clarity of the LPT embodiment, the sufficiency of evidence that a skilled person "would" use a static sign, and the adequacy of the judge’s reasoning were all rejected. The court emphasized that the judge’s findings were supported by evidence and that the role of expert evidence is to assist the court’s construction, not to override it. The appeal on obviousness was dismissed.
Holding and Implications
The court's final decision is to DISMISS the appeal.
The patent is held invalid due to impermissible extension of scope and added matter introduced by post-grant amendments. The claims as granted did not cover static non-electronic signs, but the amended claims do, constituting an unlawful broadening of protection. The obviousness challenge was also upheld, finding the claimed invention obvious over the prior art reference Schmidt.
This decision results in the patent remaining invalid and unenforceable against the Defendant’s use of QR codes in the described payment system. No new legal precedent is established beyond the application of existing principles regarding patent claim construction, added matter, extension of scope, and obviousness.