First published in EPLAW Patent Blog, February 2023.
The English High Court has held that AIM’s patent concerning virtual advertising billboards (EP (UK) 3 295 663 B1 (the Patent)) is both valid and infringed by Supponor’s competing technology. These advertising billboards are used in sports stadiums and relate to the “digital superimposition of an image onto another image”. In short, the technology allows broadcasters to adapt the advertising boards for television viewers so they see different adverts to the spectators actually present in the stadium.
The Patent claims a method for dealing with the challenge faced when something or someone obstructs the camera’s view of the billboard (such as a player or ball on the pitch). Supponor denied infringement and argued that the Patent was obvious.
By the time of trial, only a single claim (claim 12) remained in issue. This claim, which had numerous integers, was to a method of digitally overlaying an image with another image.
Construction and infringement
Infringement depended entirely on claim construction, specifically the meaning to be given to the claim integers “capturing at least one…..detection image” and “detecting an occluding object at least partially occluding the overlay surface….. based on an image property of the occluding object and detection image”. Regarding the former integer, Supponor argued that it required one and only one detection image. If right, this would exclude Supponor’s system which used two cameras. Meade J rejected Supponor’s interpretation, finding that the claim uses deliberately open and non-limiting language. He held that there was no support for Supponor’s construction based on either the patent language or under a purposive construction.
Regarding the latter integer (i.e. how the model detects the occluding object), Supponor maintained that it required “higher order” processing. It argued that to fall within the claim, the model has to process what the occluding object “actually looks like”. Meanwhile, AIM argued that the claim is not so limited and includes carrying out an assessment of pixel brightness (a low ratio of pixel brightness indicates the presence of an occluding object). Meade J accepted AIM’s construction that the claim feature was not limited to “higher order” processing and therefore that Supponor’s system (which involves an assessment of pixel brightness) fell within its scope.
Turning to validity, Supponor argued that the Patent was obvious over a patent application referred to as “Nevatie”. Nevatie discloses how to replace content in images by using an infra-red (IR) detector to pick up signals which represent the field of view as an array of digital pixel values corresponding to the intensity of detected radiation. The Nevatie method thus generates a mask which indicates where replacement content should be overlaid.
Supponor’s position was that the skilled person would identify that the Nevatie system would not work as well in bright sunlight conditions. They would know from their CGK that the solution would be to add another IR channel to detect IR from occluding objects. However, Meade J held that this argument was based on hindsight, which was not supported by Supponor’s expert evidence. It also contradicted Nevatie’s teaching, which was to focus on detecting radiation from the billboard rather than anything else.
Application to amend
A further issue arose in relation to the amendment. AIM had made a conditional application to amend the Patent which would only become relevant if its proposed construction of the granted claims was refused. Supponor resisted the application alleging the amendments did not make a difference to claim construction; lack of clarity; and added matter. Meade J did not agree with any of Supponor’s points. As such, he held the proposed amendments would have been permissible had they been necessary.
The “Promptu” point
Finally, Meade J had to decide an abuse of procedure-type point. Supponor alleged that AIM should not be allowed to assert that claim 12 was valid because it had previously accepted that claim 1 was invalid and that neither claim 1 nor claim 13 would be defended. Since claim 13 was indistinguishable from claim 12, Supponor’s positon was that the latter must also be invalid. Supponor relied on an earlier decision from Meade J in Promptu v Sky  EWHC 2021 (Pat), wherein he noted that the patentee was trying to act inconsistently with a previous concession it had made regarding claim validity.
In contrast in this case, Meade J confirmed that he did not purport to decide any point of principle in Promptu and in any event, that he considered Supponor’s argument was erroneous in three respects:
- AIM in fact had not admitted claim 13 was invalid if claim 1 was, but rather had dropped claim 13 for pragmatic reasons;
- AIM had not admitted that claim 12 was invalid if claim 13 was; and
- AIM had never admitted that claim 12 was invalid in any event.
In closing, Meade J heeded that patentees ought not to be discouraged from narrowing down their case by making admissions about claims in the way AIM had done for fear of unforeseen consequences.
This decision follows a decision from the Munich Regional Court in May of last year which also found the German designation of the Patent valid and infringed by Supponor.
A copy of the decision can be read here.