Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg

Under the amended Patents Act 1977, the matters in section 63(2) are factors to be taken into account when awarding relief for infringement of a partially valid patent. They are not preconditions to relief. A finding that the specification lacked good faith and reasonable skill and knowledge does not automatically bar damages, costs or an account of profits. The court may adopt a graduated approach, considering the bearing and seriousness of the relevant factor in relation to the particular relief sought. The party alleging lack of good faith and reasonable skill and knowledge bears the burden of proving it. Where a properly pleaded allegation requires an answer, privilege attaching to communications does not generally prevent inquiry into the patentee’s knowledge itself.

The court had previously held that European Patent (UK) No 1 841 268 was partially valid, following an amendment that restored a random-number comparison feature, and had been infringed by two Nokia devices. Before making the usual inquiry as to damages or account of profits, Nokia relied on section 63(2)(b) of the Patents Act 1977. It alleged that the patent specification had not been framed in good faith and with reasonable skill and knowledge because the feature had earlier been removed during prosecution.

The issues were who bore the burden of proving that allegation, whether Nokia’s request for further information required an answer, and whether the available material was sufficient to determine the effect of any lack of good faith or skill on the relief.

1. Construction of section 63(2). The amended section 63(2) requires the court to take account of the specified matters when awarding damages, costs, expenses or an account of profits. Unlike the former provision, lack of good faith and reasonable skill and knowledge is not an absolute precondition to relief. Relief may therefore be granted despite such a finding, applying a graduated approach that takes account of the factors and their seriousness.
2. The amended provision is directed to the bearing of the relevant matters on the relief sought. It is not intended to operate as a general sanction for careless drafting or lack of good faith where those matters have no bearing on the damages or other remedy claimed. This construction was consistent with the need to avoid reducing relief by reference to matters unrelated to the proprietor’s actual prejudice.
3. Burden of proof. Nokia, having alleged that the specification lacked good faith and reasonable skill and knowledge, bore the burden of establishing that allegation. The court would assess the evidence by reference to what each side was in a position to produce and contradict.
4. Further information. Nokia’s pleading advanced more than the bare contention that no reasonable patent attorney could have drafted the claim. It adequately crossed the applicable threshold and required an answer. Patent attorney privilege protects communications, but IPCom’s knowledge was not itself privileged. The possibility that privileged communications might obscure part of the evidential picture was insufficient to justify refusing the request.
5. The court declined to decide in advance whether any lack of good faith or skill would justify reducing relief. That issue, including its possible relevance to costs, required fuller factual material. IPCom was ordered to answer the request for information, with further directions for final disposal.