Koninklijke Philips Electronics N.V. v Nintendo of Europe GmbH

In consequential patent proceedings, amendments must be stated with precision and may be permitted where the proposed form was sufficiently clear at trial. Where a patent contains both valid and invalid claims, section 63(2) may permit an invalid claim to remain on the register under the partial-validity jurisdiction. A novel issue concerning the effect of deleting a claim used in construing other claims should be adjourned for proper argument rather than decided summarily. Where future amendment or revocation may affect sums recovered, the patentee may be required to give an undertaking, with limited liberty to apply. Costs may be apportioned broadly by reference to overall success and the relative significance of distinct issues.

The judgment concerned consequential matters following the court’s earlier decision in Koninklijke Philips Electronics N.V. v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat). The ‘484 patent had been held invalid. The ‘498 and ‘650 patents had been held valid in amended form and infringed by Nintendo’s Wii console.

The court considered the precise amendments to be made, including whether claim 3 of the ‘650 patent should be deleted despite its having assisted in construing other claims. It also considered an undertaking concerning repayment if the ‘650 patent were later amended or revoked, and the appropriate costs order.

1. The proposed amendments to the ‘498 patent, including claims 1D, 2A and 3A, were sufficiently identified at trial and could fairly be sought after judgment. The specification was amended to refer to “room localisation beacons”, and the same correction was made to the ‘650 patent. Precision is essential in patent amendment practice because detail may affect the legal effect of the amended specification.

2. The court declined immediately to determine whether claim 3 of the ‘650 patent should be deleted. Claim 3 had been found invalid but had played a part in construing claim 1 under the doctrine of claim differentiation. Deleting it might affect interpretation, while retaining it might leave an invalid claim in the patent. The issue was novel and required further consideration, including whether claim 3 could remain under the partial-validity jurisdiction in section 63(2).

3. Following the principles considered in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46 and IPCom GmbH & Co KG v HTC Europe Co Ltd [2013] EWCA Civ 1496, Philips was required to give an undertaking to repay sums ordered pursuant to the judgment if the court later directed repayment. Nintendo was given limited liberty to apply concerning the payment order, ending when payment became due.

4. For costs, the overall commercial winner was Philips, but it had lost entirely on the freestanding ‘484 patent and Nintendo had achieved substantial success on issues concerning the other patents. A percentage order was therefore appropriate, but detailed percentage calculations would create spurious precision. Philips was awarded two thirds of its costs.