Rule 77J of the Rules governs what action the Office may take at the end of the review procedure, and reads as follows:
(1) Upon the completion of the proceedings under rule 77I the comptroller shall either (a) set aside the Opinion in whole or in part; or (b) decide that no reason has been shown for the Opinion to be set aside.

The scope of the review

11 The Act is quite specific about what aspect of an opinion can be subject to a review. As noted in previous reviews 1 , it might be thought odd that provision is made for a review of an opinion at all. After all, opinions under the Act are not binding, and if a person wishes to have an issue resolved, it is usually possible to bring an action before the comptroller or the courts, or to undergo alternative dispute resolution. The rationale for providing reviews is that this option is not always available. This was explained in the consultation document that the Office issued prior to introduction of the opinions service 2. Paragraphs 33 and 34 of the consultation referred to reviews of opinions on infringement, and read as follows:

TPF FPT TPF FPT

33. The patent holder may apply to have an adverse opinion on validity set aside, and this would include an opinion which suggested that the patent was only partially valid. It is important to provide this opportunity since in the absence of a third party launching revocation proceedings or committing an allegedly infringing act the patent holder may have no other way of tackling an adverse opinion on validity that he feels is wrong. 34. The patent holder may also apply to have an adverse opinion on infringement set aside, but only where the opinion has come to that adverse view as a result of (what the patent holder believes is) an erroneous construction of the patent specification. Generally speaking, if the opinion has concluded that no infringement is taking place and the patent holder disagrees, he may sue for infringement. This could include the circumstances where the patent holder disagrees with the way that the claims have been construed. But suing for infringement is not possible if the opinion was sought on a potential or hypothetical act, and in such circumstances it would be unfair to deny the patent holder a chance to overturn an infringement opinion based on a construction of the claims which is adverse to him. Thus it is proposed to allow a review of an infringement opinion where the sole issue at stake is the construction of the claims.

The Protocol is given effect in the UK by section 125(3) which in turn reads:
The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.
So what does all this mean? The judgment in Kirin-Amgen builds upon the purposive approach to claim construction first introduced in Catnic 5 , where Lord Diplock stated
"A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge".
In Kirin-Amgen, Lord Hoffmann held that purposive construction does not mean that one was extending or going beyond the claims to what, on the basis of the specification as a whole, it appears the patentee has contemplated. Rather he noted that the language chosen was usually of critical importance, with the
Catnic Components Ltd and another v Hill and Smith Ltd [1982] RPC 183
specification being a unilateral document in the words of the patentees own choosing, usually chosen on skilled advice. 35 Thus Lord Hoffman summarized that when applying a "purposive construction", the question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. In this case however, as Mr Cunningham notes, the wording of the specification was not chosen on skilled advice and I mean that as no disrespect to Mr Cunningham. Rather what I mean is that a patent attorney who is skilled in drafting patent applications was not employed. I should stress that it is not necessary to employ such an attorney when applying for a patent and that a significant number of applications are filed without the use of such an attorney. The Office does nevertheless advise unrepresented applicants to seek advice from a patent attorney. There are a number of reasons however why attorneys are not used; cost being among these, and Mr Cunningham has alluded in his submissions to some of the reasons behind his decision. Hence the patent is based on Mr Cunninghams own initial efforts augmented by exchanges between the examiner and Mr Cunningham during the examination of the patent. But does the fact that the patent was drafted without such skilled advice have any bearing on my decision here? The specification as a whole is clearly not as extensive as it might have been. Nor are the claims as clear. However that does not alter the approach that I must take when interpreting the claims although it does perhaps make that task more difficult. The correct approach is as already mentioned a purposive approach where I need to decide what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. That is what I shall now do.

single camera system. Taking into account the arguments presented I believe Mr Cunningham would like Claim 6 to read: A security system for a vehicle comprising a PIR detector and one or more cameras activated by the PIR detector detecting a person close to the outside of the vehicle, the one or more cameras being capable of sending a picture to a mobile phone. 48 To further support this interpretation of claim 6, Mr Cunningham has refers me to Lord Hoffmans comments regarding particular terms and phrases in claims for which there is no accepted definition. According to Mr Cunningham, his claim is defining something new for which there is no accepted definition. Mr Cunningham also argues that the examiner misapplied the teachings in two further cases: Telsonics Patent 6 and Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd 7. Mr Cunningham appears to be using these references to demonstrate that when purposively construing the claims, the test is to consider what a person skilled in the art would have understood the patentee to be using the language of the claim to mean rather than looking at the claims from the view of the general public. I cannot however find anything in the Opinion that would lead me to conclude that the examiner has not applied the correct test in this respect. Indeed the reference by the examiner to Telsonic was by way of rebutting an attempt by Nokia to rely on the pre-grant file to support its interpretation of the claims. I believe that I need say no more about these two cases.
Interpretation the Opinion
So did the Opinion misinterpret the claims? Before I can reach a decision on that, I think it necessary for me to put the claims into context so that I can place myself in the position of a skilled person and attempt to understand what the patentee meant the language of the claims to mean. This understanding will then allow me to decide whether the examiners interpretation is correct or not. Turning to the description, I am presented with eight short statements instead of the detailed description that one might expect in an application for a patent. From the description I find that the application relates to a device which might be referred to as a 3G doorbell, an alarm system or a security system. As set out in the description, the device comprises a camera (singular) that is linked to a mobile phone and which can be used to protect your house, business or car. The camera is apparently capable of being activated by a PIR detector or a doorbell and upon activation links up with the mobile phone to allow the phone user to talk to the person who has activated the camera. The sixth statement of the description reads:

Telsonics Patent [2004] RPC 38 Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59
At work you are notified of person at your door & act accordingly back of house camera alerts your mobile 3G of person close to house / security. 53 From this statement I understand that a second camera may be used in addition to a camera mounted at the front of a property. This second camera would be located at the rear of a property. Turning to the figures, I find that one drawing shows a camera for use with the front door of a property. The drawing is annotated to inform the reader that the camera is activated by a doorbell. I understand this drawing to illustrate the single camera system described in statements 1 to 5. In the second drawing, I find a camera mounted over a back door with an annotation informing the reader that the camera is activated when a person comes within 2 feet of the house. It is not clear from the drawing how the camera is activated but given that the camera is located above the door and that no doorbell is illustrated, I believe that activation would be by a PIR detector. It is unclear whether the drawings are intended to show a single camera system or a two camera system but with reference to statement 6 of the description, I understand the second drawing is illustrating the second camera of a two camera system. I turn now to paragraphs 17 to 20 of the Opinion in which the examiner explains how he arrived at the interpretation given to claim 1. The examiner begins by considering the passage activated both by a person pressing a doorbell and a PIR detector, then moves on to consider the passage camera/cameras built into or above the door, and finally the passage the cameras being linked (wireless/mains). The passage activated both by a person pressing a doorbell and a PIR detector, was construed by the examiner to mean that a something has the capability to be activated by both a signal from a doorbell and from a PIR detector although not necessarily by both means at the same time. He also concluded that actually having a PIR detector and doorbell present is not necessarily part of the claimed invention. The examiner finds no reason to depart from a normal understanding of the words built into or above the door of a property. In particular he was not persuaded by Mr Cunninghams argument that this was merely an option or suggestion. The phrase the camera/cameras being linked (wireless/mains) is interpreted by the examiner to mean that if there is more than one camera, they are linked in any material way. If there is only one camera then the phrase in his opinion imposes no limitation. The examiner goes on to conclude that, on a proper construction, Claim 1 requires a security system comprising at least one camera built into or above a door of a property, capable of being activated by a PIR detector and capable of being activated by a doorbell to send a picture to a mobile phone, but not necessarily having a PIR detector and doorbell as part of the invention.

I shall discuss whether each camera must have the capability of being activated by either the doorbell or PIR detector shortly but before I do so I shall first consider the location of the camera/cameras and what is meant by linked (wireless/mains). Claim 1 says that the camera/cameras are built into or above the door of a house or other property [emphasis added] which clearly implies just a single door. I think however, that a skilled person, having considered the drawings and description would deem the word door to also means doors as the application clearly contemplates a system for the front and back of a property, and there is no suggestion that two cameras are to be mounted within or above a single door. Mr Cunningham argues that dependent claim 4 in referring to cameras mounted within the grounds of a property supports a much broader interpretation of claim 1. I do not believe that this argument is well founded. Indeed in the absence in the description, or indeed anywhere else, of any support for such an interpretation, any ambiguity arising from claim 4 would be resolved by treating the claim as merely adding flesh to the bones of claim 1. In other words it would be construed as adding to claim 1 as properly construed rather than as an invitation to construe claim 1 in a way that has no proper basis in the application. Claim 1 clearly contemplates a system comprising a single camera or more than one camera. Claim 1 goes on to specify that the camera/cameras being linked (wireless/mains) and capable of sending picture information to a mobile phone. The opinion examiner only looked at the words linked (wireless/mains) within this passage and concluded that this means that if there is more than one camera, then the cameras are linked in any material way. I can see the logic in this interpretation but must also consider the alternatives offered by Mr Cunningham. Mr Cunningham asserts that it was quite clear that in this part of the claim he was attempting to say that the, or each, camera is powered either by battery means (wireless) or via cable means (mains). The whole of this argument seems to rely on the word mains and that this would lead a skilled person to the conclusion that the passage is referring to power supply. I am not persuaded by this argument and, having carefully examined the specification, noting especially the use of the word linked in the description and also the absence of any reference to (wireless/mains) in the application as filed, I find myself coming to an interpretation that differs slightly from that reached by the examiner. I am of the Opinion that the linkage that is being referred to in the description is that between the camera/cameras and what is described as a mobile or 3G mobile system which is part of the system and which is capable of sending picture information to a mobile phone. I believe that this interpretation has sufficient support in the description to enable me to use it to resolve the ambiguity that clearly exists in the granted claims. I should stress that this interpretation would cover a system where the camera and mobile or 3G mobile system were part of the same device for example a mobile 3G phone with camera. In the event, I do not think that anything turns on this particular feature of the claim. I return now to the activation of the camera(s) of the system. The examiner was of the opinion that the system comprises at least one camera, wherein the at least one camera must be capable of being activated by either a PIR detector or

doorbell. This does not mean that the camera, in use, is connected to both a PIR detector and a doorbell, but it must have the capability of being activated by both. The construction given in paragraph 20 is also open to alternative interpretations since it is unclear whether it is the system or the camera that must be capable of being activated in the specified manner, however, having regard to the comments made in paragraph 17, I am satisfied that it is the activation of the camera that is being referred to. 64 In my opinion, this interpretation of the camera/cameras being activated both by a person pressing a doorbell and a PIR detector would sit comfortably with a claim to just a single camera system. This would allow the single camera to be sited at the front of a property and linked to a doorbell, or alternatively sited at the rear of the property and linked to a PIR detector. In relation to a claim to a system having more than one camera I can also see benefits in having a single design of camera that can be placed in various locations and connected to the most appropriate source of activation; which might be the doorbell at the front of the house or a PIR detector at the back. Whilst it is of course possible to envisage a system similar to that set out but having different designs of camera for the various locations each being activated only by one source, the simple fact is that that such a system is neither clearly disclosed nor more importantly claimed. I must therefore take the claim at face value and conclude that the examiners interpretation in this respect is correct. Thus, I believe claim 1 should be interpreted slightly differently to how it was in the Opinion so as to read: A security system comprising one or more cameras built into or above the door(s) of a property, each camera in the system being capable of being activated by a PIR detector and also by a doorbell, the camera/cameras being linked to a device that, upon the camera/cameras being activated, is capable of sending picture information to another phone. 67 I turn now to claim 6. The first thing that strikes me is that in claim 1, Mr Cunningham specifically refers to camera/cameras and thus clearly contemplates a system having just one camera or a system with more than one camera. He had the opportunity use exactly the same wording in claim 6 but chose to restrict the claim to a system with cameras. The second thing that strikes me is that with one exception the claim makes linguistic and technical sense, and, significantly, there are two separate references to cameras. The only part of the claim that is in any way ambiguous in terms of how it might impact on the scope of the claim, is the part that seems to be referring to the intent of the person who is very close to the outside of the vehicle. Mr Cunninghams argument that this part of the claim did not impose any restriction on the claim was accepted by the Opinion examiner. I believe that was correct and I too accept that this part imposes no limitation on the scope of the claim. I can find no further ambiguity in this claim and I find its meaning no different when I look at the supporting description and drawings, which I might add, are noticeably silent on this aspect of the invention. I accept Mr Cunninghams

argument that claim 6 is attempting to define something new, namely a security system for a vehicle, but the components within the system and the words used to define those components are quite conventional. Therefore, whilst Lord Hofmanns comments regarding references to things for which there are no known definitions, offer me assistance, I do not find that they lead me to an alternative interpretation of claim 6. It is clear to me that a skilled person who has read the single page description and noted the security system illustrated in the figures, would ultimately take the words of claim 6 at face value, with no alternative meanings being applied. In conclusion, I believe that the examiner correctly construed claim 6. 69 The remaining claims, claims 2-5, are specified as being dependent on claim 1. By virtue of their dependency these claims are taken to build upon the invention set out in claim 1 rather than taking away or replacing features of claim 1. In other words these dependent claims add to the system set out in claim 1. I will need to consider these only if I find claim 1 to be infringed. Having properly construed the independent claims I need now to go on and review the Opinions finding in respect of the validity of claim 6 and the noninfringement of the claims. I will start with the issue of validity.

Validity of claim 6

71 The Opinion found that claim 6 was anticipated by WO242. Again I must stress that as this is a review of the Opinion I need only consider whether this particular claim was anticipated by this document. It is not necessary for me consider in respect of validity the other disclosures considered by the Opinion examiner, for example those relating to the PT2 or PT6 systems. There was some discussion at the hearing as to whether WO242 was describing the PT-6, the PT-2 or something else. That is not however relevant. What matters is whether WO242 on its own anticipates claim 6. I should add also that I do not need to consider at this stage the validity of the other claims as none of these were found to be invalid.
Mr Cunningham puts forward a number of reasons why he believes the examiner was wrong to find claim 6 anticipated by this document and I will consider each in turn. The first is that WO242 is not citable under section 2(3) of the Act because: (i) the matter contained WO242 as filed was not the same as published and therefore one of the requirements of section 2(3) has not been met; (ii) WO242 fails to provide an enabling disclosure.
To support his argument that the content of WO242 as filed was not the same as published, Mr Cunningham points to the different wording found in an equivalent US patent application and differences between WO242 and the features of the PT-6 and the PT-6s predecessor, the PT-2 (both of which are allegedly embodied in the patent application). At the hearing Mr Cunningham also questioned how closely WO242 resembled its priority document.

See Section 2.30 of the Manual of Patent Practice at http://www.ipo.gov.uk/practice-sec-002.pdf
was published. As I pointed out to Mr Cunningham at the hearing, patent applications are typically published as filed. This means the document that is published is identical to the document as filed by the applicant. The only exception to this is that the published document may also include later filed amended claims alongside the originally filed claims. In the case of international applications such as WO242, the content of the application is governed by Rule 48 of the Regulations under the Patent Cooperation Treaty (PCT). Rule 48(2)(f) in particular states:
If the claims have been amended under Article 19, the publication of the international application shall contain the full text of the claims both as filed and as amended.
Thus, under the PCT, the only changes to a PCT application that will be published are amendments to the claims; even then the original claims will still form part of the published specification. The fact that the US patent application that is equivalent to WO242 has claims of a different format or a different description is irrelevant to section 2(3)(a). Also irrelevant is the Finish priority document. This is because the filing date of WO242 is before the filing date of Mr Cunninghams patent hence it is not necessary to rely on the priority date for WO242 to be citable under section 2(3). For section 2(3)(a) to apply it is necessary for Mr Cunningham to show that the matter contained in the originally filed application for WO242, which according to the front page 9 was filed in English, is different to that in WO242 as published. I do not believe that Mr Cunningham has shown that it is and therefore I must conclude that the examiner was right to consider the document as a potential citation under section 2(3).
I turn now to the next strand of Mr Cunninghams arguments in relation to this document; namely that it does not provide an enabling disclosure. It is well established and accepted by both sides that the novelty of a claim can only be challenged if the anticipating material, whether it be a patent specification or something else, provides an enabling disclosure. Mr Cunningham argues that WO242 fails to provide the necessary enabling disclosure and thus cannot be used to attack the novelty of claim 6. The issue of anticipation was considered recently by the House of Lords in SmithKline Beecham Plcs (Paratoxetine Methanesulfonate) Patent 10. A copy of this case was made available to Mr Cunningham by Nokia immediately before the hearing. Mr Cunningham has queried whether the lateness of this constitutes acceptable behaviour. I will return to that later when I discuss the issue of costs. In the event it quickly became clear at the hearing that there was common ground on the need for an enabling disclosure hence it was not necessary to refer in detail to this case. Whilst both sides were content to accept that an enabling disclosure is required, there was less agreement as to what the expression

"If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented. A signpost, however clear, upon the
General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited 11 , [1972] RPC 457

PT TP PT

road to the patentees invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee".
So does WO242 plant a flag on the invention as defined by claim 6? This claim as properly construed requires the following: A security system for a vehicle comprising a PIR detector and cameras, the cameras being activated by the PIR when a person is very close to the outside of the vehicle and being capable of sending picture information to a mobile telephone
Mr Cunningham argues that WO242 does not disclose certain aspects of the system claimed in this claim. In particular it gives no indication that any aspect of the system is wireless nor is the invention in WO242 suitable for use outdoors. He bases this last assertion on the presence in WO242 of what he refers to as a temperature backup and the absence of any form of outside weather shield. I would add that Mr Cunningham is using the term wireless I believe to mean that the device is not mains powered but rather battery powered. I am not persuaded by any of these arguments for the simple reason that none of the features that Mr Cunningham argues is lacking in WO242, is an essential feature of the invention set out in claim 6. Again Mr Cunningham has misunderstood that it is the invention as actually set out in claim 6 that is being considered. Claim 6 is entirely silent on how the system is powered it is not therefore necessary for anticipation to show a particular mode of powering the system such as by battery. Equally the claim does not explicitly require the system to be waterproof. Whilst Mr Cunningham might only have had in mind a waterproof system; that is not what he has claimed. The wording of the claim, as recognized by the examiner, extends to cover systems that may or may not be waterproof. And for the purpose of anticipation it is necessary only that the prior art plants it flag somewhere within the scope of the claim. It is not necessary for the prior art to disclose everything falling with the claim. I am therefore not persuaded by Mr Cunninghams arguments. I still need however to ensure that WO242 does actually disclose something falling within the scope of claim 6. WO242 clearly discloses, in for example, paragraphs [0047] to [0050] a surveillance system that comprises one or more cameras that can be activated by an infra red detector and which according to the description can be located to monitor, for example, a pleasure boat, a car or a garage. Upon activation, picture information is sent from the camera(s) to a portable videophone (multimedia phone). I am therefore satisfied that this document discloses all the features of claim 6 and consequently if put into practice would infringe claim 6. Consequently the disclosure is an anticipating disclosure that destroys the novelty of claim 6 - it does plant a flag on the invention set out in claim 6. I am therefore satisfied that the Opinion was correct to find claim 6 invalid.

Infringement

94 I turn now to the question of infringement. As I discussed in the section entitled Scope of review, if I find that the Opinions interpretation of the claims was correct then I do not need to say anything further on infringement. That is the case with claim 6. However in my consideration of the interpretation of the claims I found that the examiner has misinterpreted an aspect of claim 1 the meaning of the word linked. As such I need now to go on and consider whether this resulted in the Opinion wrongly concluding that there was no infringement of the patent by the PT6 system. That consideration can however be very brief. This is because the Opinion examiner did not consider the word linked as limiting the scope of the claim in any material way. Hence he favoured a slightly broader interpretation of claim 1 (although in practice there is probably very little between his interpretation and mine). However even with this broader interpretation he did not find the PT 6 to be infringing essentially because he found that the PT6 is not capable of being activated by a doorbell - this being something on which the parties agreed then and still agree now. Since I have also construed the system of claim 1 as requiring the capability of being activated by both PIR and a doorbell, it follows that the claim as interpreted by me is not infringed. It follows also that claims 2-5, all of which are dependant on claim 1, are not infringed. I am therefore satisfied that the Opinion correctly found none of the claims to be infringed.
96 Having dealt with the substantive issues and found in favour of Nokia, I now go on to the issue of costs. Both sides have provided me with submissions Nokia at the hearing and Mr Cunningham shortly afterwards. Rule 77H refers to a review as proceedings and in that context proceedings are defined as proceedings before the comptroller. Accordingly it is appropriate that I should follow the standard procedure adopted in such proceedings when considering the issue of costs. It is long-established practice for costs awarded in proceedings before the comptroller to be guided by a standard published scale 12. The scale costs are not intended to compensate parties for the expense to which they may have been put but merely represent a contribution to that expense. This policy reflects the fact that the comptroller ought to be a low cost tribunal for litigants, and builds in a degree of predictability as to how much proceedings before the comptroller, if conscientiously handled by the party, may cost them.
However as is made clear in the Patents Hearing Manual the scale is not mandatory. I have the power to award costs off the scale where the circumstances warrant it. In extreme cases, costs may even be increased to the extent of approaching full compensation, or be reduced to zero. This flexibility is to enable me to deal proportionately with, for example:

See Chapter 5 of the Patent Hearings manual at http://www.ipo.gov.uk/hearings-chapter05.pdf
i. delaying tactics, failure without good cause to meet a deadline, or other unreasonable behaviour, particularly where the other side is put to disproportionate expense; ii. a claim launched without a genuine belief that there is an issue to be tried; iii. costs associated with evidence filed in respect of grounds which are not pursued at the substantive hearing (though a party should not be deterred from dropping an issue which, in the light of the evidence filed by the other side, it now realises it cannot win); iv. unreasonable rejection by the party that eventually loses of efforts to settle the dispute before the proceedings were launched or a hearing held; v. unreasonable refusal by that party to attempt alternative dispute resolution; and the increase or reduction should be commensurate with the extra expenditure incurred by the other side as the result of such behaviour. It should however be emphasised that merely because a party has lost does not of itself mean that their behaviour in fighting the case was unreasonable: it only becomes unreasonable if it was fought in a way that incurred unnecessary costs. 100 I note also that the costs that I am considering here are the costs related to these proceedings, in other words the review of the Opinion. They do not cover the costs incurred by the parties leading up to the issuing of the Opinion. Hence the behaviour of the parties during that time is not relevant. Nokia requests that I depart from the normal scale in view of what they see as unreasonable behaviour by Mr Cunningham. In particular they argue that he raised irrelevant grounds for review; he made untrue allegations of impropriety and that he brought these proceedings before the Office with no bona fide intention of allowing their outcome to resolve the dispute about whether Nokia infringes the Patent. Nokia goes on to argue that I should award full costs and has provided me with a schedule detailing some 14,800 of costs although at the hearing they indicated that they were actually looking for an award in the region of 70% of that figure. This, in their view, reflects the normal court practice of never awarding 100% of claimed costs. In addition to the figures mentioned above, Nokia also indicate that the additional costs incurred on their side as a result of Mr Cunninghams unreasonable behaviour was 1443. I should add that Nokia refer in support of their submission on costs to Rizla Ltds Application 13.

At the hearing Nokia also sought to submit two further documents to support their case on costs. These were two letters sent by Nokia to Mr Cunningham, both of which were marked Without prejudice save as to costs. One of the letters was redacted to hide a certain passage. In seeking to submit these documents Nokia agreed to waive any privilege. After having had an opportunity at the hearing to
Rizla Ltds Application [1993] RP 365.
read the letters, Mr Cunningham agreed that I could also read them. However in his written submission filed shortly after the hearing Mr Cunningham argues that these documents should not have been admitted into the proceedings. Mr Cunningham did however also make observations on the contents, recognising that by then the letters had already been admitted. 105 I have further considered these letters in the light of Mr Cunninghams observations and have concluded that they do not demonstrate any unreasonable behaviour on the part of Mr Cunningham. Rather what they show was a genuine effort by Nokia to avoid further litigation beyond this review which also not unreasonably was rejected by Mr Cunningham. I therefore attach no weight to these documents when considering the issue of costs. Mr Cunningham in his written submission seeks to defend his own behaviour whilst also identifying a number of aspects of Nokias behaviour that he considers unreasonable. I will deal first with Nokias behaviour and as I noted above I am concerned only with their behaviour during these proceedings ie the review of the Opinion and not with anything that occurred during the Opinion process itself. Looking through the particular examples provided by Mr Cunningham and excluding those relating to events prior to the launching of these proceedings, I am left with the following allegations of unreasonable behaviour: failure to provide sufficient information relating to the priority document of WO 03/075242 and the late introduction of the SmithKline Beecham House of Lords case. I have considered Mr Cunninghams arguments in respect of these two issues but am not persuaded that Nokias behaviour in respect of either of these was unreasonable. As I have discussed above the priority document relating to WO242 was not relevant to the issues before me here. As I have also mentioned the late introduction of the House of Lords case did not give rise to any unnecessary delay or expense as there was no disagreement between the sides on the need for an enabling disclosure. Indeed no use was made of this authority during the hearing. I return now to the behaviour of Mr Cunningham during these proceedings and whether this justifies an award off scale. Mr Cunningham is clearly someone who believed strongly in his case. He has also indicated on more than one occasion that he considers himself already to have been the subject of one miscarriage of justice. I am sure that that experience has had a significant bearing on the way that he has approached this case. He also sees himself very much in a David v Goliath battle. On top of all of this he also chose, probably out of necessity, to represent himself although he did have some help at the hearing at least although apparently not from someone familiar with patent law or litigation. Nevertheless he has represented himself with no little conviction and has clearly thrown himself into the legal aspects of the case. Unfortunately much of his argument was based on misunderstandings. In particular he based his arguments mainly on a false assumption that the scope of his patent extended well beyond the words that he had actually used in his claims, even when read in the light of the description and drawings, to cover aspects of his invention that he seems to have thought of yet not specified or else specified in a way that was clear only to

Tribunal Practice Notice (TPN 2/2000) Costs In Proceedings Before The Comptroller at http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-tpn/p-law-tpn-2000/p-law-tpn-2000tpn22000.htm 15 http://www.justice.gov.uk/civil/procrules_fin/contents/parts/part52.htm
I award Nokia the sum of 1500 to be paid by Mr Cunningham not later than 7 days after the expiry of the appeal period. If an appeal is lodged, payment will be suspended pending the outcome of the appeal. Under the Practice Direction to Part 52 of the Civil Procedure Rules, any appeal must be lodged within 28 days.
PHIL THORPE Deputy Director acting for the Comptroller

Patents Act 1977 OPINION UNDER SECTION 74A
Patent Proprietor(s) Exclusive Licensee Requester Observer(s) Date Opinion issued Mr Frank Cunningham Nokia 20 September 2006 GB 2400958 Mr Frank Cunningham

Opinion Number

The request 1. This opinion relates to a request filed on 26 June 2006 by Mr. Cunningham asking whether patent number GB2400958 (the patent) is infringed by a product made by Nokia known as the Nokia PT-6 Remote Camera. I shall refer to this simply as the PT-6. The request is accompanied by a picture and description of the PT-6 detailing its specifications and capabilities. Observations 2. Observations in response to the request were filed on 14 August 2006 by Nokia. Accompanying the observations was a request for an opinion in relation to the validity of the patent. Nokia initially asked for this request to proceed only if the PT-6 was found to infringe the patent. The observations relate to the issues of both infringement and validity. Observations in reply 3. Observations in reply were filed on 29 August 2006 by Mr. Cunningham in which he addressed the issues of infringement and validity raised by Nokia. 4. Further correspondence has subsequently been received from both sides. This falls outside the procedure under rule 77F and I therefore take no account of it. In any case I do not think this affects the conclusions I come to below.
Preliminary Issues 5. There are two distinct preliminary issues.
6. The first concerns which matters this opinion should cover. As noted above, Nokia has filed observations which cover both infringement and validity, and in addition has filed a separate request for an opinion on validity. After submissions from both sides regarding the best way to handle the two requests, it has been agreed that, since the issues of infringement and validity will to a large extent hinge on the same issue, namely construction of the claims, I should consider both infringement and validity in this request, In consequence Nokia will withdraw its request. 7. The second preliminary issue is that Mr. Cunningham has also applied to amend the patent under section 27, which may result in amended claims. However Mr. Cunningham has made it clear that he wishes this request to proceed on the basis of the claims at grant. The Patent 8. The patent has a filing date of 23 April 2003 with no claim to an earlier priority date and was granted on 7 December 2005. It relates to a security system comprising a camera linked to a mobile phone. The camera sends a picture to the mobile phone when activated by a PIR detector or a doorbell. PIR stands for passive infrared and is a type of motion sensor. There are six claims (two of which are independent) as follows:
Claim 1 A security system comprising a camera/cameras built into or above the door of a house or other property, the camera/cameras being linked (wireless/mains) and capable of sending picture information to a mobile phone and being activated both by a person pressing a doorbell and a PIR detector Claim 2 A security system as claimed in claim 1 above which the mobile phone can be a 3G mobile phone Claim 3 A security system as claimed in either claims 1 or 2 in which the camera can also be linked (wireless/mains) to a mobile phone that can use PIR or other motion detector that can be set to activate within various parameters even inches Claim 4 A security system as in claims 1 to 3 in which cameras can be provided at both front and back doors of a house or set above the doors and or within the grounds of a property Claim 5 A security system as in any one of claims 1 to 3 where the
system can be first set to be activated by a front doorbell or PIR detection or both Claim 6 A security system for a vehicle comprising a PIR detector and cameras, the cameras being activated by the PIR when a person is very close to the outside of the vehicle either to disable the power supply or vandalise and being capable of sending picture information to a mobile telephone Infringement: evidence and arguments 9. Both parties have submitted evidence and arguments in relation to infringement and validity. I set out the main points relating to infringement here and discuss them below. 10. The information provided by Mr. Cunningham describes the PT-6 as a remote camera for installation indoors or outdoors, in your home, cottage, warehouse or office and for the boat. It detects motion, sends an image to your mobile phone and has an infrared light source for taking photos at night. Further features include temperature sensing and a one way audio connection to the camera for listening in at the location of the camera. Mr. Cunningham states in his request that in his view Nokia has copied his patent and merely added a few variants (namely temperature sensing and a one way audio connection) to make it look different. 11. Nokia argues in its observations that claim 1 requires both a doorbell and a PIR sensor. That is to say, an infringing device must be capable of being triggered by a PIR sensor and a doorbell (though not necessarily at the same time). Nokia draws my attention to an examination report under section 18(3) (supplied as evidence) in which they claim the examiner suggested and allowed claim 1 to be granted based on this construction of the claim. Nokia asserts that since the PT-6 cannot be triggered by a doorbell then it does not infringe claim 1. Furthermore, Nokia says there is no recommendation or express instruction to customers that the PT-6 should be built into or above a door. 12. With regard to claim 6, Nokia argues that this claim requires a PIR detector and cameras, that is, more than one camera whereas the PT-6 is a single camera. Furthermore they say claim 6 requires the cameras to be selectively activated based on a persons intent either to disable the power supply or vandalise whereas the PT-6 would be activated by anyone including an innocent passer-by. Still further Nokia points out that claim 6 is a system for a vehicle whereas the PT-6 user guide (extracts supplied as evidence) states Do not install the camera in a vehicle. 13. In his observations in reply Mr. Cunningham argues that the patent must be looked at as a whole and given a purposive construction, and that the

particular words or phrases in the claims that describe what the inventor considered to be the essential elements of his invention should be identified. He argues that claim 1 requires two different independent methods of activation of the camera. He accepts that the PT-6 is not capable of being activated by a doorbell but states that there are elements of that patent claim 1 that are linked with the PT-6 and that the device can clearly meet the application detailed in the Patent for protecting the rear of the property. Furthermore he argues that the requirement in claim 1 to be built into or above a door is purely an option and the PT-6 is suitable for this. 14. With regard to claim 6 Mr. Cunningham denies that the invention requires the device to know the intent of an approaching person and denies that it requires more than one camera. He also asserts that various parts of the documents submitted in evidence by Nokia teach or suggest that the PT-6 can be used in a vehicle. Infringement: discussion 15. My task is to determine whether the PT-6 infringes the patent. To do this I must first decide how to construe claims 1 and 6. Then I must decide whether the PT-6 falls within the scope of the claims so construed. The latest guidance on how to construe claims is given by Lord Hoffmann in Kirin-Amgen Inc v Hoescht Marion Roussel Limited [2005] RPC 9. The guidance in the judgement is to put a purposive construction on the claims, interpret the claims in the light of the description and drawings as instructed by section 125(1) of the Act and take into account the Protocol to Article 69 of the EPC. 16. Section 125(1) of the Act states that:
For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly The Protocol to Article 69 of the EPC states that: Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a

person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties Lord Hoffmann summarized the approach by saying The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. 17. Turning first then to claim 1, the key question seems to me to be how to construe the phrase activated both by a person pressing a doorbell and a PIR detector. I do not think this means that the camera is only activated when it receives two signals, one from the doorbell and one from the PIR detector. The description and drawings suggest that either signal on its own will activate the camera. However I do believe that the invention requires the capability of both doorbell activation and PIR detector activation as essential elements. The description and drawings relate to an embodiment having both elements. There is no embodiment describing a security system for a house or other property having just a doorbell or just a PIR detector. Claim 5 seems to reinforce this interpretation since it specifies a doorbell or PIR detector or both and as a dependent claim it must lie within the scope of claim 1. 18. Nokias argument that the pre-grant file shows that the claim was only granted on the grounds that both doorbell and PIR detector activation must be present is not in itself persuasive. In Kirin-Amgen Inc v Hoescht Marion Roussel Ltd [2005] RPC 9, Lord Hoffmann held that the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file. Furthermore, in Telsonics Patent [2004] RPC 38, Laddie J expressed reluctance to accept that file wrapper estoppel, that is, interpretation of claims on the basis of views expressed by the applicant during the examination process, has any part to play in construing a patent and its claims in the absence of binding authority or legislation. It was held that patents and their claims are meant to be statements made by the patentee to the relevant public, and their meaning and effect should be discernible from the face of the document. I merely note here that a system as claimed but without a PIR detector appears to be disclosed in prior art documents cited by the examiner pre-grant. 19. The phrase camera/cameras built into or above the door would seem to me to be a clear requirement of the invention. Although Mr. Cunningham argues that it is merely an option or suggestion, it is nevertheless a feature of claim 1 and the description and drawings do not point to any options other than in or above the front or backdoor. Claim 4 specifies cameras placed within the grounds of a property but I interpret this as meaning in addition to the camera/cameras built into or above the door not instead of. The phrase the camera/cameras being linked (wireless/mains) I interpret as meaning

that if there is more than one camera, they are linked in any material way. If there is only one camera then the phrase imposes no limitation. 20. Claim 1 then requires a security system comprising at least one camera built into or above a door of a property, capable of being activated by a PIR detector and capable of being activated by a doorbell to send a picture to a mobile phone, but not necessarily having a PIR detector and doorbell as part of the invention. 21. Having construed claim 1 I now turn to the PT-6. Nokia has stated and Mr. Cunningham has agreed that the PT-6 cannot be activated by a doorbell. I am satisfied that the evidence before me does not show or even suggest that it can be so activated. Therefore I must come to the conclusion that the PT-6 does not infringe claim 1. 22. I turn now to claim 6 and the question of how it should be construed. This is a difficult task since there is little of direct relevance in the description or drawings of the patent to aid me. The two drawings relate to a house or other property not to a vehicle. One shows a front door with a built in camera and the other shows a back door with a camera above it. A single line in the description reads It can also be activated if someone comes within feet of your house/business/car. There is no other disclosure relating to a system for a vehicle. 23. Nokia has argued that the claim requires more than one camera. Mr. Cunningham on the other hand argues that his invention encompasses a camera or multiple cameras, citing the drawing in the patent depicting a single camera at the back of a property above a door. As mentioned previously the drawings and description provide no guidance on this matter since they relate directly only to the system as applied to a house or property and as claimed in claim 1. Claim 6 requires cameras and in the absence of any other information I feel I must construe the claimed invention to require more than one camera. 24. Nokia has also argued that claim 6 requires the cameras to be selectively activated based on a persons intent either to disable the power supply or vandalise. I am not convinced by this argument. It seems to me that the words are intended only to provide an instance of the type of approach to a vehicle that the system is meant to apprehend. I think that a person skilled in the art would not think that the patentee intended to impose any substantive limitation. I do not think a skilled person would consider that detecting intent is actually possible. 25. Nokia argues that the PT-6 is not suitable for a vehicle and has provided extracts from the PT-6 user guide. The guide states that the PT-6 can be used outside provided it is not exposed to rain and it is supplied with

an outdoor shield for protection when used outdoors. The guide also has a warning which reads Do not install the device in a vehicle. Do not use the device or your mobile phone to control or configure the device while driving; park the vehicle first. Mr. Cunningham argues that the user guide is ambiguous and that Nokia accept that it may be used in a vehicle. It seems clear to me that the PT-6 is not suitable for use in a vehicle. Furthermore I do not think the PT-6 is suitable for mounting on the outside of a vehicle with or without a shield because of the requirement that it should not be exposed to rain. Having said that, claim 6 does not specify use in or on a vehicle. For example it could be mounted in a garage and still be for a vehicle. In pregrant correspondence Mr. Cunningham made it clear that his invention was to be fitted on or in a car but I am aware that he is not bound by this interpretation. In the absence of any supporting description I will therefore construe for a vehicle in a broader sense not limited to in or on a vehicle. 26. I therefore construe claim 6 to mean a security system for a vehicle comprising a PIR detector and more than one camera activated by the PIR detector detecting a person close to the outside of the vehicle, the cameras being capable of sending a picture to a mobile phone. 27. I must now decide whether the PT-6 falls within the scope of the claim so construed. Clearly the PT-6 is a single camera as agreed by both parties and because of this I find that it does not infringe claim 6. Validity: evidence and arguments 28. In its arguments on validity Nokia has provided a large amount of information relating to a device known as the Nokia PT-2 observation camera (the PT-2) which it asserts is the predecessor to the PT-6 and is in all material respects the same. This information consists of three press releases, a brochure extract, extracts from the PT-2 user guide, a Powerpoint (RTM) presentation, a website picture and two newspaper articles. All these items have publication dates prior to the filing date of the patent. Mr. Cunningham has questioned the authenticity of the publication dates but on face value, the dates appear to be genuine so I will take them as being correct. Section 2(1) of the Act states that: An invention shall be taken to be new if it does not form part of the state of the art. Section 2(2) goes on to say that: The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by

written or oral description, by use or in any other way. The documents submitted by Nokia therefore form part of the state of the art as required by section 2(2) and may potentially be used to impugn the novelty of the patented invention. Also included is patent specification WO03/075242 (EP1490853) filed by Nokia published after the filing date of the patent but with an earlier priority date and designating GB. According to section 2(3) of the Act: The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say (a) that matter was contained in the application for that other patent both as filed and as published; and (b) the priority date of that matter is earlier than that of the invention. Patent specification WO03/075242 having an earlier priority date may therefore potentially be used to impugn the novelty of the patented invention in accordance with section 2(3). Nokias argument is that if the PT-6 is found to infringe the patent, then by the same construction of claims, the information relating to the PT-2 and patent specification WO03/075242 show the patent to be invalid due to lack novelty and inventive step. 29. Mr. Cunningham argues that the PT-2 is materially different to the PT-6 in a number of crucial ways and thus does not invalidate his patent. Validity: discussion 30. Nokias request for an opinion on validity was originally to be pursued only if the PT-6 was found to infringe the patent. However, since it was agreed that Nokias validity request be joined with the infringement request I shall consider validity based on the evidence before me. I have already decided how to construe the claims when considering infringement. That same construction will therefore apply in deciding the question of validity. 31. The information relating to the PT-2 describes it as a camera with a stand for wall or table mounting. An integral motion detector activates the camera to take an image which can be sent to a mobile phone. It is intended for indoor use but can be used outdoors if protected from moisture, direct sunlight, dust, dirt and condensing humidity. Suggested uses are at home or the office, outside a warehouse or garage, or near your summer house or boat. The user guide warns Do not install the camera in a vehicle. Do not use the camera or your mobile phone to control or configure the camera while driving; park the vehicle first.

32. It seems clear to me then on the basis of the evidence supplied that the PT-2 device is not activated by a doorbell and therefore does not invalidate claim 1 on the grounds of novelty or inventive step. It follows therefore that claims 2 to 5 are also not invalidated. 33. Claim 6 requires more than one camera activated by a PIR detector. Since the PT-2 is a single camera with integral detector then it does not invalidate claim 6 on the grounds of novelty or inventive step. 34. Patent specification WO03/075242 describes a video surveillance system comprising one or more cameras for monitoring a space such as a holiday home, pleasure boat, a home, a garage, a car or a yard. A motion detector based on the utilization of infrared waves detects motion and causes the camera to send a picture to a mobile phone. The detector may be one or more separate devices or integrated into the video camera. This seems to fulfill all the requirements of claim 6 as I have construed it and therefore invalidates it on the grounds of novelty. 35. It is worth noting here that had I construed claim 6 as a system with a single camera then it would still fall due to a lack of novelty. Furthermore if I had construed claim 6 to mean a system for use in or on a vehicle then although the claim may be valid with regard to the supplied evidence, the PT6 would not infringe the claim so construed. Right to continue use 36. Nokia has claimed a further defence to infringement under section 64 of the Act. I have found the PT-6 not to infringe the patent but consider this point for completeness. Nokia says that effective and serious preparations had been made before the priority date of the patent to import to the UK, distribute, offer for sale, market and commercialise the PT-2. Since the PT-6 is an updated version of the PT-2, it falls within the ambit of permissible adjustments as contemplated by Aldous J in Lubrizol Corporation v Esso Petroleum Co. Ltd. [1998] RPC727 and accordingly acts done in relation to the PT-2 are equivalent to acts done in relation to the PT-6. 37. Mr. Cunningham argues that the PT-2 is a different device to the PT-6 on the basis that it is designed for indoor use only due to its restricted operating temperature (-10 to +50 degrees Celsius). Therefore any acts done in relation to the PT-2 do not also apply to the PT-6. 38. Having considered the evidence it seems to me that the PT-2 was intended mainly for indoor use but could also be used outdoors in limited conditions as discussed earlier. On balance I would say that the PT-6 is an updated version of the PT-2 making it more suitable for outdoor use by having

an operating temperature of -20 to +50 degrees Celsius, battery power and an attachable shield. In relation to the claimed invention, these differences are not material. I will therefore consider acts done in relation to the PT-2 to also apply to the PT-6 for the purposes of section 64. 39. I now turn to Nokias evidence of effective and serious preparations. Much of the documentation does indeed show such preparations but there is very little to suggest they were performed in the UK as required by the Act. There are also a number of preparations claimed by Nokia with no supporting evidence. Therefore in view of this I feel that there is insufficient information for me to conclude that Nokia have a justifiable defence to infringement under section 64. Opinion 40. Firstly on infringement, I conclude that the Nokia PT-6 Remote Camera does not infringe any claim of patent number GB2400958. 41. Secondly on validity, I conclude that claim 6 of patent number GB2400958 is invalid in the light of patent number WO03/075242 but that claims 1 to 5 are not invalidated by the prior art submitted in this request. Application for review 42. Under section 74B and rule 77H, the proprietor may, within three months of the date of issue of this opinion, apply to the comptroller for a review of the opinion. ________________________ NOTE This opinion is not based on the outcome of fully litigated proceedings. Rather, it is based on whatever material the persons requesting the opinion and filing observations have chosen to put before the Patent Office.
Gareth Griffiths Examiner