Tough For A Troll To Argue Commercial Succes

Aerotel v Wavecrest Group Enterprises

This invention related to a system for making prepaid telephone calls from any telephone. The closest prior art disclosed a similar system except the cost of calls was not prepaid but charged to an account and a call, once connected, was not cut off.

The Court of Appeal dismissed the Appeal against a decision of the High Court that the patent was invalid for lack of inventive step. The Appeal was based on the grounds that the High Court had used hindsight analysis in finding the invention lacked an inventive step and had not taken into account certain evidence in the prior art and commercial success, as an indication of non-obviousness. The Court of Appeal said the commercial success was not attributable to the invention but an aggressive licensing strategy. In addition, the distinction over the closest prior art was one of only two possible alternatives, i.e. prepayment or credit. The selection of prepayment was not regarded as inventive and all differences over the prior art were entirely ascribable to this choice.

Comment:

Commercial success is merely a secondary indication of non-obviousness and is a notoriously difficult argument to support, because it is necessary to demonstrate that the success is attributable to the technical features of the invention. The Court did not stoop so low as to suggest that Aerotel is a patent troll, but said “Aerotel does not make or sell anything. It is a company formed to exploit the present patent and its corresponding patents in other countries, particularly the US.” A decade passed between the first filing date and the first commercial exploitation. Various prepaid businesses “just started up: there is no suggestion that any of them even got the idea from the Aerotel patent.” Assertions that the invention “helped change the industry” did not wash.