Court of Appeal Decision Upholds Invalidity of Patent Due to Amendment Identifying Embodiment as Outside the Scope of the Claims

In a case that highlights the challenges arising due to post-grant amendments, and in particular interpretation of the claims in view of the description, the Court of Appeal in Ensygnia IP Ltd v Shell UK Oil Products Ltd & Ors ([2024] EWCA Civ 1490) has upheld a first instance decision of invalidity of Ensygnia’s patent, considering matters of claim interpretation, added matter, and extension of scope.

This decision makes clear that the claim scope cannot be broadened by amending the description to shift the interpretation of the claims and provides a reminder of the potential risk imposed on Applicants by the EPO’s practice of requiring explicit marking of examples not falling within the scope of the claims.

Background

Ensygnia IP Ltd (“Ensygnia”), the patentee, alleged that Shell UK Oil Products Ltd (“Shell”) infringed its patent GB 2489332 C2. Ensygnia sued Shell for patent infringement for allowing registered users of the Shell app to purchase fuel using their phone and a QR code displayed on a card at the pump at Shell petrol stations. The central question was whether Ensygnia’s patent claims encompassed static graphical codes, such as printed QR codes, or covered only codes displayed electronically on display screens.

Shell counterclaimed the patent was invalid because the patentee had amended the description post-grant, and thus had impermissibly changed the interpretation of the claims beyond the original disclosure to cover non-digital code display, whereas the original disclosure pertained only to electronic display of the code.

Ensygnia had amended their patent post-grant to specify in the claims that a graphical encoded information item is displayed on the display of the computing apparatus (as in the granted claims) but further, by amendment, that the computing apparatus “comprises a display and an electronic apparatus, and wherein the display is a ‘sign’ ”. An initial attempt of post-grant claim amendment included that the sign was “geographically proximate to the electronic apparatus” which was rejected as being unclear by the Examiner. The description was also notably amended post-grant to state that embodiments displaying the graphical encoded information item (or “Graphical Object, GO”) electronically, such as on a webpage or on an electronic display, were “outside the scope of the claims”, to ostensibly provide for interpretation of the claim language to mean the display of the code was not on an electronic display, i.e. it was shown on a card. In the first instance it was found these post grant amendments added matter and unallowably extended the protection of the patent claims.

Court of Appeal’s Findings

On claim interpretation, Lord Justice Birss found the claim language, when viewed in isolation, to be ambiguous as to whether it covered static codes. However, the specification, including the post-grant amendment, provided context that the skilled person would understand the claims to include static, non-electronic graphical codes, as the specification described the invention without limiting it to electronic displays. This broader interpretation meant that static codes, such as printed QR codes, fell within the scope of the claims.

However, the court found there was no basis, explicit or implicit, in the specification as granted, or as filed, for the claims to include static codes. The court upheld the first instance decision that the post-grant amendments, to define the displayed signs as being other than a sign displayed on an electronic display, including explicitly marking as falling outside the scope of the claims embodiments in which the graphical code is displayed on an electrical display, introduced added matter. The originally granted claims were found to be limited to electronic display, and the post-grant amendments impermissibly extended the scope after grant to cover static displays. Birss LJ noted that the post grant amendments were not clarifications, but an extension of the scope of the claims.

Conclusion

This decision underscores the importance of precise patent drafting and the risks of post grant amendments, and serves as a cautionary tale for patentees: any attempt to broaden claims post-grant risks invalidation on the grounds of added matter or impermissible scope extension.

Furthermore, the decision makes clear that care must be taken when amending the description, as currently required by EPO Examination Guidelines, to mark examples that do not fall within the scope of the claims as such amendments may change the scope of the claims as interpreted by a UK court and potentially result in an invalid patent.

This article was prepared by Patent Directors Janine Swarbrick and David Hufton.