The architect of the obvious: the skilled person’s crucial role in patents for immersive gaming

In European patent law, the “Person Skilled in the Art” (PSA) is often described as a legal fiction. This hypothetical individual or team – possessing average knowledge and ability but no inventive skill – plays a crucial role in the determination of whether the subject matter of patent claims involves an inventive step.

For some inventions, the PSA can be a person whose knowledge and abilities are relatively straightforward to decide given the technical field of the invention. However, for patents relating to immersive gaming and other areas which combine different engineering specialisms, identifying the PSA can be far from a formality. The different possibilities for the PSA in this scenario present both opportunities and risks for patentees.

This was exemplified by a recent judgement from the Intellectual Property Enterprise Court in London, UK, Battlekart Europe SA v Chaos Karts 1 Ltd, in which a diverse range of skills attributed to the PSA was a significant and possibly determinative factor in the patent claims being held to lack inventive step.

Opportunity and risk: the options for PSA under European practice

According to patent case law in Europe, including the EPO, the UPC and national courts, the PSA is a skilled practitioner in the relevant field of technology.  The PSA has access to everything in the “state of the art” in that field of technology, together with the capacity for routine work and experimentation. However, it can be challenging to pinpoint the relevant field of technology when an invention straddles multiple disciplines – as can be the case for innovations in immersive gaming.

Battlekart Europe SA v Chaos Karts 1 Ltd is an illustration of the various possibilities for identifying the PSA in these complex situations.  The invention was a system for creating an immersive racing experience which combined driving a real go-kart with features of a video game similar to Nintendo’s Mario Kart.  In the system, a player drives a kart around a track which takes the form of an image projected onto the floor. The track, including obstacles to be avoided, may be varied at any time.  The motion of the kart is partly within the control of the driver but is also significantly influenced by instructions from the system.  For instance, when the system detects that the kart has encountered a virtual object on the track (such as a simulated banana), it causes actuators on the kart to make the kart spin.  Implementation of the invention involved karts modified with physical actuators, projectors to create the virtual track, a motion tracking system to detect interactions between the karts and simulated objects on the track, and an overriding control system.

In Battlekart, the presiding judge, Hacon J, outlined three options for the identity of the PSA in these complicated circumstances.  A first option is for the PSA to be an expert from the ‘field of the problem’, which in this case was conventional karting.  A second option is for the PSA to be an expert from the ‘field of the solution’, which in this case was projection and tracking systems used in the theatre industry – as evidenced in the prior art.  A third possibility is for the PSA to be a team of those likely to have a practical interest in the invention (a so-called Catnic team).

It was in the interests of the patentee for the PSA to be identified as an expert in a particular field, either that of the problem or the solution, rather than a broader Catnic team.  This would have bolstered the case for inventive step because the PSA would have been knowledgeable about only a relatively small portion of the different technical areas needed to implement the invention. However, seemingly influenced by inconsistencies between the patentee’s arguments and testimony from its own expert witness, the judge found the PSA to be a Catnic team with a broad range of skills and knowledge including:

• A systems engineer with “practical experience in location tracking systems, projection systems, and embedded and integrated systems”
• A software engineer with “knowledge of computer graphics, computer simulation, distributed architectures (i.e. software running across multiple connected hardware devices) and location tracking algorithms, and likely with practical experience of the gaming industry”.
• A hardware engineer with the ability to “design or modify karts to make them suitable for use in an XR karting system” and experience of “other hardware components, so that they can assist the systems engineer to bring together the different components of the hardware and software to form a functional commercial product”.

This was an unfavourable and potentially avoidable outcome for the patentee.  The sheer range of capabilities and knowledge attributed to the PSA was damaging to the patentee’s argument for inventive step, which was essentially that it would not have been obvious to the PSA to apply object tracking and projection systems used in the theatre industry to create an immersive gaming experience involving real-life karts and video game features.

Practices for improved outcomes

For patent holders in the field of immersive gaming, Battlekart Europe SA v Chaos Karts 1 Ltd illustrates the importance of making the PSA’s knowledge and skills an active point of consideration during the patent drafting process.

Being intentional and realistic about the PSA from the beginning can help to ensure that patent applications present inventive aspects of the technology from the appropriate perspective, particularly when explaining the relevant background and technical advantages.  This will improve the patent’s prospects in prosecution and any post-grant validity challenges.

Furthermore, being clear headed about the PSA’s abilities at the drafting stage can make it easier to be consistent later on about where those abilities start and end, especially in complex situations where the invention involves interactions between different hardware and software elements. In Battlekarts, a lack of consistency in submissions and evidence about the PSA was detrimental to the patentee’s case for inventive step.