Nokia Oyj (Nokia Corporation) v. IPCom GmbH & Co KG, Patents Court, Floyd J, High Court of Justice, London, UK, 21 December 2011, Case No. [2011] EWHC 2719 (Pat)
Following the decision of Mr Justice Floyd of 16 June 2011 ([2011] EWHC 1470 (Pat)), in which he held that IPCom’s patent in suit had been infringed by two Nokia devices, an issue arose as to whether the financial relief which would normally be awarded to IPCom should be restricted by the terms of section 63(2) of the Patents Act 1977 which provides that, where a patent is found to be partially valid, the Court must take into account in awarding such relief whether the specification of the patent was framed in “good faith and with reasonable skill and knowledge” (“GFRSK”).
In an interim decision handed down on 26 October 2011 ([2011] EWHC 2719 (Pat)), Mr Justice Floyd held that the burden of establishing a lack of GFRSK lies with the party who raises the issue (in this case, Nokia). However, on the basis that the Court was not fully in possession of the facts, he refused to decide on the issue of GFRSK and the effect thereof on the award of relief itself, and ordered that IPCom respond to a request for information from Nokia. The current decision follows IPCom’s provision of further information and further submissions and evidence by both parties on the issue of GFRSK.
Now, in his decision of 21 December 2011, Mr Justice Floyd has found that there was no lack of GFRSK by IPCom.
Nokia’s GFRSK allegation concerned a feature of the claim in issue which had been removed during prosecution of the patent in suit. (Nb. The omission of this feature had been the subject of an added matter attack by Nokia, with which the Judge agreed, but which was overcome by an amendment to the specification submitted by IPCom prior to trial.) The core of Nokia’s GFRSK case was the suggestion that no reasonably competent patent attorney could have deleted the feature in question reasonably believing it to be valid.
This was rejected by the Court on the basis that “the proposition was not supported, as it should have been, by any evidence of an expert patent attorney”. Furthermore, the fact that the deletion had been found by the Court to add matter did not mean that no reasonable patent attorney could have honestly or without negligence have come to the view that the claim was valid. This was supported by the fact that the EPO examiner had, during prosecution, accepted the claim (with the omitted feature) in full knowledge of third party observations from Nokia raising this particular issue, and that the EPO had again rejected the point (raised by five opponents) in opposition proceedings.
The Judge also noted two “important considerations”. One was that the finding shows that “the validity of the claim in issue is not a question of fact of which IPCom could have had knowledge one way or the other, but is a question of judgment and opinion”. The other is that “it is common ground that it is the duty of a patent attorney to obtain the widest coverage he can for his client, consistently with what can properly be advanced on the basis of known facts. […] Obtaining broad claims is not the same thing as obtaining invalid ones”.
Read the judgment (in English) here.
Head note: Sara de Sousa
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