Garmin (Europe) Limited v Koninklijke Philips N.V., Patents Court, London, UK, 29 January 2019, case no. [2019] EWHC 107 (Ch)
This was a claim brought by Garmin for revocation of Philips’ patent EP (UK) 1,076,806 B1 relating to a portable GPS based athletic performance monitor and to the use of the device in an external feedback system comprising a computer. The feedback system provided certain functionality including long term performance monitoring, and a website adapted to compare performance data between two or more athletes and facilitate virtual competitions. Philips counterclaimed for infringement by Garmin’s range of GPS based sports activity trackers and the Garmin Connect fitness platform.
During the proceedings, Philips applied to make two conditional amendments to the patent. The first introduced the feature of recommendations to increase or decrease effort level based on inputted pre-set performance targets. The second added the feature of performance feedback provided by aural means which reduced the volume of a music player so it could be heard by the athlete.
Garmin admitted infringement of all amended and unamended claims by the Garmin products alleged to infringe, but contested validity in light of a number of prior art citations. Garmin also asserted that the use claims and the second conditional amendment were mere collocations of features (i.e. there was no synergistic effect between the features of these claims and claim 1 as granted) and that some of the granted and amended claims were unpatentable on the grounds of presentation of information.
Henry Carr J held that although the granted claim and the first conditional amendment were obvious over a prior art citation called Schutz, the second conditional amendment was valid and infringed by Garmin’s products.
In seeking to establish that the claims were obvious, Garmin relied on the results of a detailed literature search which it alleged would have been carried out by the skilled person when seeking to develop a GPS based performance monitoring device in light of Schutz. Whilst Henry Carr J accepted that the skilled person would have carried out a detailed literature search, he emphasised (citing the previous UK case of Generics v Daiichi) the difference between common general knowledge (which informs and guides the skilled person’s approach to a problem from the outset) and information which is obvious for the skilled person to acquire.
In reaching his conclusion on obviousness, Henry Carr J considered Philips’ patent to be an “ideas patent”, where the invention lies in having the ideas or concepts prescribed in the claims, rather than in any perceived difficulty of implementation once one has had those ideas. As such, implementation issues were not taken into account when considering whether the idea was obvious.
Henry Carr J rejected Garmin’s argument on lack of synergistic effect. He held that whilst the device could be used independently of the wider feedback system, the wider feedback system could not be used independently of the device. Thus the overall system claimed was a new system that did not exist previously. As regards conditional amendment 2, the claimed solution required interaction between the device and music player and thus there was a synergistic effect.
Finally, the court held that whilst some of the claims (the use claims) contained elements of presentation of information, the overall system was a new system which could use GPS-based data, for example, to facilitate virtual competitions by outdoor athletes. This was a technical contribution which was not confined to “presentation of information … as such”. An equivalent argument on the second conditional amendment was also rejected as the implementation required technical means (e.g. a mixer) to ensure the music volume was lowered to enable the performance feedback to be heard.
A copy of the judgment can be found here.
Headnote by Matthew Raynor, Bristows LLP
