Nokia GmbH v IPCOM GmbH & Co KG

A patent claim is construed purposively. A specific embodiment does not restrict its general language unless the patent indicates that the restriction serves the claimed invention's purpose.

A patentee should formulate any fallback amendments in time for validity and allowability to be determined at the scheduled trial. A post-trial amendment which would require a second validity trial will ordinarily be refused as an abuse of process where it could have been advanced earlier without procedural unfairness.

Article 138 of the European Patent Convention 2000 does not override national procedural rules or confer a right to amend a patent already held invalid in its entirety. Patent amendment is also distinct from enforcement for the purposes of the Enforcement Directive.

IPCom appealed from three judgments of Floyd J concerning two European Patents (UK) relating to mobile telecommunications. In the main judgment, [2009] EWHC 3482 (Pat), the judge held both patents invalid, although Nokia would have infringed them had they been valid.

IPCom challenged the invalidity of the Synch Patent. The issues were the construction of two expressions in its principal claim and the obviousness of a method for preparing a mobile telephone for handover between cells. IPCom did not challenge the Access Rights Patent's invalidity as granted. Instead, it appealed against [2009] EWHC 3034 (Pat) and [2010] EWHC 789 (Pat), which had refused late and post-trial attempts to seek extensive amendments.

The central procedural question was whether IPCom could pursue amendments which would require a new trial on their allowability and validity after the patent had been held wholly invalid.

1. The appeals were dismissed unanimously. The Synch Patent was invalid for obviousness. The Access Rights Patent remained revoked, and IPCom was not permitted to pursue the proposed amendments. Permission to appeal the two amendment judgments was granted because they raised novel and potentially important questions, but both appeals failed.

2. The term “preprocessing” in the Synch Patent permitted frequency correction at any point before decoding. The claim was not confined to correction before an equaliser merely because the described embodiment contemplated that arrangement. The patent's purpose was improved decoding certainty, and “equaliser” was itself used with varying meanings. The expression “up-to-date frequency measurements” also included a useful correction obtained by averaging sufficiently recent measurements. The plural wording and the need to correct both slow and fast effects supported that construction.

3. The claimed lock-on feature was obvious. The skilled team would recognise that the handover period was tight and that storing neighbouring cells' frequency offsets while obtaining timing information was a prudent, routine preparation. The trial judge made no error in evaluating the expert evidence. An appellate court should be cautious before differing from a trial judge's evaluation of obviousness, applying Biogen v Medeva [1997] RPC 1.

4. The first proposed amendment was made too late to be tried fairly without an adjournment. Nokia lacked a proper opportunity to investigate allowability, prior art and validity. IPCom did not seek an adjournment. Procedural fairness therefore compelled refusal.

5. Applying Nikken v Pioneer Trading [2005] EWCA Civ 906, a post-trial rewriting amendment which would require a second validity trial should ordinarily be refused where it could have been advanced earlier. The governing inquiry remains the broad, merits-based abuse-of-process test explained in Johnson v Gore Wood [2002] 2 AC 1. Here IPCom had ample opportunity to formulate fallback claims, elected to try the patent as granted, and offered no sufficient justification for subjecting Nokia to further litigation after Nokia had succeeded.

6. Article 138 of the European Patent Convention 2000 required national systems to permit amendment but did not displace national rules of procedural fairness. On its face it addressed grounds affecting a patent only in part, whereas every claim here had been held invalid. Article 3 of the Enforcement Directive did not apply because amendment narrows protection in rem and is distinct from enforcement. A second trial would in any event add unnecessary complexity, cost and delay.

1. Court of Appeal (Civil Division): Permission to appeal the two amendment judgments was granted, but IPCom's appeals concerning both patents were dismissed unanimously. Nokia's contingent cross-appeal on infringement did not require determination.
2. Patents Court: In the main judgment, [2009] EWHC 3482 (Pat), Floyd J held both patents invalid but held that Nokia would have infringed them had they been valid.
3. Patents Court: In the first amendment judgment, [2009] EWHC 3034 (Pat), Floyd J refused IPCom's late pre-trial amendment because it could not be tried fairly without an adjournment.
4. Patents Court: In the second amendment judgment, [2010] EWHC 789 (Pat), Floyd J refused IPCom's post-trial attempt to pursue amendments which would require further litigation over allowability and validity.