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IPCom Gmbh & Co Kg v HTC Europe Co. Ltd & others, UK, High Court (Patents Court), Birss J, 24 April 2105

Birss J’s decision in IP Com v HTC is the latest decision in the on-going dispute between IPCom, Nokia and HTC. Previously Nokia and IPCom had been involved in litigation involving EP 1 186 189, a patent which Floyd J (as he then was) found to be invalid ([2009] EWHC 3482 (Pat)), a decision which was upheld on appeal ([2011] EWCA Civ 6).

The present case concerned EP 1 841 268 which was based on a divisional application of the EP’189 patent previously litigated by Nokia and IPCom. In 2011, this divisional patent EP’268 was found by Floyd J to be valid in an amended form and infringed ([2011] EWHC 1470 (Pat)), another judgement which was upheld on appeal ([2012] EWCA Civ 567).

In parallel with the UK proceedings, in May 2012, the Opposition Division held that EP’268 was invalid in the form as it had been originally granted due to added matter and refused to allow an amendment corresponding to the amendment considered in the UK litigation on the grounds that that amendment also added matter. In March 2013 the EPO Board of Appeal upheld the decision of the Opposition Division that the amended claim found to be valid by Floyd J and the UK Court of Appeal was actually invalid due to added matter. However, the Board did consider that an alternative amendment might be permissible and sent the case back for reconsideration by the Opposition Division on the basis of a different amendment (T1282/12). This alternative claim has since been considered allowable by Opposition Division, although that decision is still currently under appeal.

The present proceedings in the UK were brought by IPCom on the basis that HTC infringed the claims of EP’268 in the form which had been found to be valid by the Opposition Division.

In his judgement, Birss J refers extensively to the analysis undertaken by Floyd J in the previous dispute in particular in relation to definition of the relevant common general knowledge and the detailed functioning of the specific embodiments. Since these aspects of the patent had previously been considered, this enables Birss J to focus his consideration of the novel aspects of the amended claim as allowed by the Opposition Division and in particular the meaning of “bit pattern” as used in the claims. Based on the evidence before him, the judge decided that HTC’s phones did not transmit authorization data “as a bit pattern” as required by the amended claims and hence the patent was not infringed.
Two matters of note appear in the decision.

EP’268 was prosecuted before the EPO in German. Since the coming into force of the London Agreement in May 2008, there has been no requirement to file a translation of a European patent in English in order for a European patent to be maintained in the UK and thus the authoritative content of the specification was the wording of the patent as granted (in German) with the translations of the description considered by the Court being just that – a translation.

However, as IPCom had accepted that the claims in EP’268 were not valid and the decision of the Opposition Division allowing the amended claims of EP268 was under appeal, the only authoritative clams which the Court had to consider were the amended claims in English which IPCom had submitted in the English proceedings and these claims (in English) were the claims to be considered as authentic.

The other matter of note appears at the end of the judgement where the judge considers the validity of the amended claims submitted in the English proceedings corresponding to those allowed by the Opposition Division at the EPO. HTC had challenged the amendments made to the claims on a number of grounds including added matter. Here the judge makes an interesting comment about intermediate generalisations, noting that even though the coverage of a claim might cover something more general than what is described in an embodiment of the patent that alone would not render a patent invalid unless the skilled addressee was given new information by virtue of the amended claims.

This approach which is backed by an earlier line of English case law including the English Court of Appeal decision in AP Racing v Alcon ([2014] EWC Civ 40), seems to take a more pragmatic line that the very strict approach to added matter adopted by the EPO such as is exemplified by the recent decision there in T1363/12 issued at the end of 2014. It will be interesting to see if the EPO Board of Appeal reaches the same conclusion on added matter when the validity of the claims in EP’268 are reconsidered in the pending EPO appeal.

Read the decision here.

Headnote: Nicholas Fox, Simmons & Simmons