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Koninklijke Philips Electronics N.V. v Nintendo of Europe GmbH, London, UK, 20 June 2014, Case No. [2014] EWHC 1959 (Pat)

This case concerned validity and infringement of three patents owned by Philips. The first patent claimed a means of controlling the movement of a virtual body in a computer-generated virtual environment; the other two patents covered electronic pointing devices designed to be held in the hand and used to control electrical apparatus. Nintendo denied infringing any of the patents and counterclaimed for invalidity. Philips made conditional applications to amend these last two patents but contended they were still valid as granted.

On the facts it was held that the first patent was invalid for obviousness over an earlier Nintendo gaming system. The other two patents were challenged a number of grounds, including added matter. The unamended patents were held to be invalid but the Court ruled that the patents in their amended form were valid: although the scope of the amended claims meant that they covered the use of “beacons” in contexts other than identification equipment, they did not disclose such an idea. There was therefore no added matter.


In addition, Nintendo alleged that Philips had “double-patented”, that is, had been granted two patents for the same invention. This challenge ultimately also failed. The court took the opportunity to state that a double patenting objection could be a ground for refusing post grant amendment of the patent in certain circumstances (although not in this case), namely when:

1. The patents have the same priority dates and applicants.
2. The patent claims have the same “scope”.
3. The claims of the two patents are independent claims.

The Court further observed:

4. If both patents are involved in an action before the Patents Court, then the double patenting can be cured by an amendment or amendments to either patent.
5. The amendment should not be refused if the patentee has a legitimate interest in maintaining both claims.

The court also gave a clear guidance that when arguing that it would have been obvious to combine two pieces of prior-art, this must be clearly and unambiguously set out in the pleadings.

The court ultimately held that the remaining amended patents were valid and indirectly infringed by Nintendo’s sale of its console. Even though the console was sold without software which was required to carry out the invention described in Philips’ patents, the console constituted means essential for putting invention into effect. There was as a result indirect infringement.

Read the decision (in English) here.

Head note: Graham Burnett-Hall and Luke Hill