Legal Updates

Intellectual Property - Patents - Invalidity Proceedings - Patent Infringement


In the case of Nokia GMBH and another v IPCom GMBH & Co KG [2011], the Court of Appeal dismissed the defendant’s appeal, ruling that the defendant’s patents were invalid.

The defendant has patents in respect of various mobile phone technology. The defendant and claimant were at one point in  negotiations whereby the  defendant was intending on  granting the  claimant licences for the use of such patents. Negotiations failed as the claimant refused to pay the licence fees.

As a result, the defendant brought an action in Germany for patent infringement against the claimant. The claimant in turn brought revocation proceedings against the defendant's patents in both the UK and Germany. In the UK the claimants commenced revocation proceedings for 15 of the defendant’s patents. There were 2 European patents included (the synch patent and the access rights patent).

The defendant claimed that the claimant's mobile phones breached both European patents. The claimant on the other hand argued that both patents were invalid of under s 72(1)(c) of the Patents Act.

At the start of the patent proceeding, the claimant made an application to the courts to amend its particulars of claim in order to cite relevant prior art. In response, the defendant issued an application to amend the access rights patent in order to further distinguish it from the recently disclosed prior art. Before the proceedings started, the claimant withdrew its application to cite the fresh prior art. The defendant carried on with its application to amend the access rights patent and the claimant objected to the amendments on the basis:-

·         that it was too late;

·         it would have been procedurally unfair to proceed with the trial because the claimant did not have a proper opportunity to consider and attack the proposed, extensive, amendments.

The courts upheld this objection.

In the Patents Court, the courts held that both patents were invalid (if they had been valid the claimant would have infringed them).

The synch patent was found to be invalid on the grounds of? obviousness. The access rights patent was invalid on the basis that it was anticipated by the prior art. The defendant attempted again to amend the access rights patent, and applied the  principles laid down in Nikken v Pioneer Trading (Nikken) ([2005] All ER (D) 350 (Jun)), but the courts did not allow the defendant to proceed with its amendment. The defendant appealed.

Submissions by defendant

In relation to the synch patent the defendant submitted that:-

·         the judge had erred in the construction of claim 1 of the patent and ought to have given it a narrower interpretation;  

·         the judge wrongly decided the the  claim in connection with lock-on synchronisation was obvious;

·         the judge was wrong to refuse the defendant permission to apply for the amendments to the access rights patent.

·         the principles laid down in Nikken should not have been read so strictly, considering the judgement in Johnson v Gore Wood ([2001] 1 All ER 481), the European Patent Convention 2000 and Council Directive (EC) 2204/48 (on the enforcement of intellectual property rights) (Directive).

The defendant’s appeal was dismissed:-

·         on the true construction of the language of the synch patent, the defendant was ascribing the words a non-purposive meaning;

·         the judge had not erred in the construction of the synch patent.

·         on the evidence, the judge had made no errors in the finding obviousness of the lock-on synchronisation claims;

·         the claims were obvious.

·         there could not have been a fair trial had the defendant's proposed amendments to the access rights patent been allowed;

·         the judge was following procedure and had to follow procedural fairness to make such a ruling and had exercised his discretion correctly, otherwise the judgewould have ruled that the trial was unfair;

·         it was trite law that a post-trial application to amend a patent would ordinarily be refused if it would involve a second trial on validity, because procedural fairness required a party to put forward the whole case before trial in order to avoid expense, delay, uncertainty and double vexation of the successful party.

·         the true test in determining whether a second trial should be allowed was one of abuse of process. The burden of proof lay on the party objecting to the second action. However, where a party failed to advance a case that the party could have advanced much earlier, and did so without any real justification, it was therefore an abuse of process and the other party was entitled to object;

·         there was nothing exceptional that justified the defendant's late application to amend the access rights patent after the trial. The defendant had had every opportunity to propose amendments within time and had not done so. The proposed amendments were made too late for them to be dealt with fairly at the trial, having elected to go to trial on the patent as it stood. It was held that only when the defendant lost, it sought to prolong matters. In the circumstances, the judge had been fully entitled to find that that was procedurally unfair.

·         the main purpose of art 138 of the European Patent Convention 2000 was to provide that national authorities had an amendment procedure. It was not intended to govern national rules of procedure concerning patent amendment, still less to require national courts to conduct them in a manner which national law regarded as an abuse of process. Article 138 did not apply to a case where the grounds of revocation affected the European patent as a whole. The provision was only about a case where the grounds of revocation affected the patent in part;

·         amendment of a patent was distinct from its enforcement.  Amendment was a procedure concerned with narrowing the scope of protection, not a procedure concerned with enforcement of what was protected. There was nothing in the Directive that suggested that it applied to the amendment of a patent.  

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© RT COOPERS, 2011. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.


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