Home > Insights > Outcome of parallel EPO Opposition proceedings has knock-on effect for UK infringement proceedings

Authors: Simon Kahn and Victoria Russell
1 June, 2015

The next stage in a lengthy series of patent litigation by IPCom took place on 25 April 2015 with a judgment, IPCom v. HTC & Ors [2015] EWHC 1034 (Pat), by Birss J in the High Court. This case appears to demonstrate the influence of parallel Opposition proceedings at the EPO on ongoing national infringement proceedings in the UK, to the benefit of the defendant. In view of a negative decision by the EPO’s Opposition Division on the granted claims, IPCom applied for discretion to amend the claims of the patent at the commencement of the UK infringement and validity proceedings.

IPCom v. HTC concerned the infringement and validity of European (UK) patent 1841268. This patent was filed as a Divisional application from European patent EP 1186189, with both patents forming the basis of a long-running dispute between IPCom and a number of other companies including Nokia and HTC. Although the parent patent was revoked in the UK in late 2009, the Divisional patent was found in 2011 to be both valid and infringed in the UK by Nokia. Shortly after this decision, IPCom sued HTC for infringement of the Divisional patent in the UK.

Concurrent with the UK proceedings, HTC and Nokia (together with other Opponents) had pursued Opposition proceedings at the EPO regarding the validity of the Divisional patent. After a protracted battle, the Opposition Division revoked the claims that were granted but subsequently upheld the validity of amended claims in 2014 (although the result of an Appeal is still outstanding). In view of this, in the present UK proceedings IPCom requested the discretion of the court to amend the claims on file in the UK. The amendments to the claims (filed in English) were intended to be in line with the amended claims (in German) that were allowed by the EPO.

Birss J, acting in the High Court, was asked to consider four separate points in the UK proceedings: a) whether the court should exercise its discretion to admit the amendment to the claims; b) whether devices operating according to the Universal Mobile Telecommunications System (UMTS) standard infringe the patent in its amended form (and so whether the patent is essential to the UMTS standard); c) whether the HTC devices in class A (classified according to mobile telecommunication standards) infringe; and d) whether HTC devices in classes B to G (classified according to mobile telecommunication standards) infringe.

HTC contended that the amended claims before the court were different in scope from those allowed in Opposition at the EPO (in part, by virtue of translation from German to English). Therefore, they argued the amendment should not be admitted by the court. However, Birss J confirmed that even if there were a difference in scope, this was not reason enough to impose the court’s discretion to refuse the amendment. Upon the judge’s own assessment of the claims, the amended claims were valid and formally allowable, and thus should be allowed.

In respect of the questions of infringement of the amended claims, the judge ruled that neither devices acting according to the UMTS standard nor HTC devices in class A infringed. Consequently, the patent was deemed not to be essential to the UMTS standard. Furthermore, the judge agreed that devices in classes B to G did not infringe, and was satisfied to grant corresponding declarations that were sought by HTC.

Although there surely will be further twists and turns in this long running series of litigation by IPCom, this case demonstrates the effectiveness of HTC’s central Opposition at the EPO to consequently affect the national infringement proceedings. By proving a case for the invalidity of the granted claims before the EPO, IPCom were required in the UK courts to file amended claims, and in these proceedings, this seems to have been to HTC’s benefit.

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Authors

Simon Kahn

Simon Kahn
Partner

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Email this address skahn@boult.com

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London
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Victoria Russell

Victoria Russell
Patent Attorney

Phone this number (0)+44 20 7430 7500

Email this address vrussell@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT