HTC Corporation v Gemalto S.A., Court of Appeal, 22 October 2014, [2014] EWCA Civ 1335, Laws LJ, Floyd LJ, Vos LJ
The Court of Appeal upheld the decision of Birss J that claim 3 of Gemalto’s patent (EP (UK) 0 932 865, relating to using a high level programming language with a smart card or microcontroller) was valid and not infringed by HTC’s marketing of a variety of smart phones and a tablet computer. The appeal concerned one of the three patents considered at first instance. The principal issue which Gemalto appealed was Birss J’s construction of the term "microcontroller", Gemalto claiming it was too narrow. However, although the Court of Appeal held that Birss J had erred in his construction of that term, it held that his construction was too wide and, therefore, upheld the finding that HTC’s devices did not infringe. Another issue examined by the Court of Appeal was HTC’s appeal of the decision that claim 3 of the patent was entitled to priority.
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Floyd LJ, giving the Court of Appeal’s leading judgment, noted that the parties were agreed on the proper approach to the construction of a patent specification and its claims, the aim being to discover what the skilled person would understand the patentee to have used the language of the claim to mean (Kirin Amgen v Hoechst [2004]), and that the approach of the judge (and parties) was to consider first what the skilled person would understand the expression meant without reading the patent and then how he would understand it was being used in the patent. As the term “microcontroller” was not a term used in ordinary English, expert evidence was admissible. Birss J had found that the term was used in the art in various ways, the normal or prevalent way being to refer to a "chip", with that chip always having memory on it, i.e. the use of the term in the art did not extend to a chip that had no “on-chip” memory.
Floyd LJ, noting that the judge was better placed than the Court of Appeal to establish how a technical term was used in the art and that the Court should not interfere with the judge’s finding unless it was clear that evidence was ignored or erroneously considered or that the conclusion was plainly wrong, held he was unable to fault that conclusion of the judge. However, regarding Birss J’s finding that, when used in the context of the patent, the term extended to a microcontroller that may able to access “off chip” memory provided that there was at least some “on-chip” memory, Floyd LJ found that construction was too wide. He considered the skilled person would understand the patent to be aimed at providing a system that worked within the constraints of the memory that could be accommodated in the integrated circuit and would not consider that the term "microcontroller" was being used to encompass a functional unit with access to effectively unconstrained off-chip memory. Such a variant was not the type of minor variant that would be read into the scope of the claim.
Regarding entitlement to priority, the Court of Appeal confirmed that what must be considered in the priority document is what was disclosed to the skilled person, rather than what was obvious in light of the common general knowledge (Medimmune v Novartis [2012]). However, the priority document should not be read in a vacuum and the knowledge and background of the skilled person is taken into account. The priority document disclosed a particular method of compacting an application program, called “namespace mapping”.
The issue was whether this disclosure was sufficient to support a claim that was broad enough to encompass all compaction methods. The Court of Appeal confirmed Birss J’s decision that the skilled person would, given his knowledge of a wide variety of compaction methods, understand that namespace mapping was being disclosed as an example of a suitable compaction method and would not think there was any difference if he used an alternative compaction method.
The Court of Appeal confirmed Birss J’s finding that this was supported by the priority document’s teaching of a general principle of space and time efficiency. This contextual consideration of the disclosure of the priority document appears to be a slight relaxation of the English courts’ strict application of the law on priority seen in many recent cases.
Read the decision here.
Head note: Naomi Hazenberg, Bristows
