World Wide Technical Services N.V. v. Panasonic Marketing Europe GmbH and Panasonic Manufacturing UK Ltd., District Court of The Hague, the Netherlands, 15 July 2012, Case number 460236 / HA ZA 14-228
WWTS holds a method-patent (EP '882) for connecting a computer, a server, a computer program product and a system, which technology is implemented into WWTS's IQonn software. WWTS had licensed its IQonn Software to Panasonic via a third party, Diginext, which has since been declared bankrupt. After an update, parties disagreed on the scope of the license. Panasonic was under the impression that the paid license fee was meant for version 3 and 4, while WWTS claimed that Panasonic should pay a separate license fee for version 4. Additionally, WWTS accused Panasonic of infringing its patent and copyrights by selling Toughbook laptops with version 4 of the IQonn Software, without having a license to do so.
At the end of 2009, Panasonic indicated that the IQonn software did not support the chip to be used in the Toughbooks. Diginext initially communicated that the problem would be solved by updating version 3. Neither WWTS nor Diginext informed Panasonic of a required additional license fee and the agreement did not contain a provision on the subject. Once Diginext denoted that the update would be incorporated into a new version, version 4, Diginext stated that “there are no additional costs involved with this release”.
The person making this statement, Griffioen, was not authorized to do so, but Diginext conveyed the impression that he was. Griffioen was the go-to for Panasonic and, on occasion, copied other employees and the director into the emails. None of them stepped up to warn Panasonic about additional license fees. The Court ruled that version 4 fell under the scope of the attained license. Panasonic had thus not infringed WWTS's copyrights and did not have to pay an additional license fee.
In respect of the patent, the court found that the patent lacked inventive step. The problem to be solved was to keep the machine - on which the network connectivity software is running - up to date. The court deemed the solution described by the patent to collect configuration information and information on the used connection for sending it to an update server to be obvious, since the average person skilled in the art would have found that solution in the relevant prior art (US '348). Since infringement of the dependent claims had been insufficiently argued by WWTS, the court only considered independent claim 1, which it deemed invalid.
WWTS' claims were thus denied and WWTS was ordered to pay EUR 199.747,93 to Panasonic to compensate the costs of the proceedings.
Read the judgment (in Dutch) here.
Headnote: Maurits Westerik, Bird & Bird