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UK – Sony Communications International v. SSH Communications Security Corporation

24 Oct 2016

Sony Communications International AB and others v SSH Communications Security Corporation and others, UK Patents Court, Roger Wyand QC, 10 October 2016, Neutral Citation Number: [2016] EWHC 2359 (Ch)

In this action Sony sought to revoke SSH’s patent, EP (UK) 2 254 311. This patent related to an aspect of accessing wide area networks (WANs) such as the internet. It was specifically directed at ensuring that the recently standardised Internet Protocol Security (‘IPSec’) protocol suite could be used reliably and securely through an intermediate node in the network called a Network Address Translator (NAT).

In response, SSH put forward three sets of conditional amendments (i.e. amendments which were to be considered only if the granted claims were held to be invalid) and counterclaimed for infringement in respect of a number of mobile phones sold by Sony.

The deputy judge held that all three of SSH’s sets of conditional amendments were permissible (i.e. they did not add matter and did not fall foul of clarity objections). However, all granted and proposed claims were found to be either anticipated or obvious (or both) over the prior art – the Minutes of the 43rd Internet Engineering Task Force (‘IETF’) NAT Working Group meeting (the ‘Minutes’) when read together with a paper presented at that meeting (the ‘Guidelines’). It was accepted that the Minutes and the Guidelines could be read together since the Guidelines were cross-referenced in the Minutes and would be likely to be consulted by a person reading the relevant section of the Minutes. Unlike at the EPO, in UK Patent cases two prior art documents cannot be read together, other than in circumstances like this where there is clear cross-referencing.

In assessing obviousness, Roger Wyand QC applied the guidelines set out in Pozzoli v BDMO [2007] EWCA Civ 588 and found that the difference between the prior art and the inventive concept of the patent would be obvious to the skilled addressee, who would have no difficulty in implementing the prior art and, in doing so, would achieve a method within granted claims 1 and 2. The deputy judge also held that the other granted claims alleged to be independently valid were all obvious, and that the proposed amendments did not cure this invalidity.

Sony had also argued that the patent was obvious over the common general knowledge (CGK). However, this attack failed as there was no identifiable starting point in the CGK for an assessment of obviousness. This acts as a reminder of Floyd LJ’s warning in Ratiopharm v Napp [2009] RPC 11 that an allegation of obviousness in the light of the CGK alone “needs to be treated with care”. The deputy judge noted that without a starting point he could not apply the Pozzoli questions and consider issues such as motive, the number of possible alternative approaches, or the kinds of problems that might have been caused by seeking to apply the invention. Whilst the Pozzoli approach may not be suitable for every case, the lack of a starting point was indicative of a fatal flaw in Sony’s attack based on the CGK alone.

Had the patent not been invalid, the claims in both their granted and proposed amended forms would have been infringed by Sony’s Xperia devices.

A copy of the judgment can be found here.

Head note: Chloe Dickson, Bristows LLP