Koninklijke Philips Electronics NV v Nintendo of Europe GmbH

Section 63 of the Patents Act 1977 gives the court jurisdiction to grant relief on a patent that is partially valid without requiring deletion of every invalid claim. The ordinary practice is to require deletion, but leaving an invalid claim in the patent is legally permissible in truly exceptional circumstances. The court must balance the risk of public confusion and prejudice to other parties against the unfairness of revoking a patent containing a valid and infringed claim. Appropriate safeguards may include declarations of validity, undertakings against assertion or assignment, and notification to the patent register.

This was the final post-trial matter arising from the court’s earlier judgment, [2014] EWHC 1959 (Pat). The patent was found partially valid: claim 2 was valid and infringed, while claims 1 and 3 were invalid, with claim 1 also requiring amendment for added matter.

Philips initially proposed deleting claim 3 and incorporating claim 2 into claim 1. It later sought the exceptional course of leaving the patent formally unamended while obtaining declarations of invalidity for claims 1 and 3, together with undertakings and registration safeguards. Nintendo argued that the court lacked jurisdiction, or should revoke the patent, because deleting claim 3 might alter the construction and validity of claim 2.

1. Jurisdiction. Section 63 of the Patents Act 1977 permits relief in respect of the valid and infringed part of a partially valid patent. Neither section 63 nor section 72(4) requires deletion of an invalid claim in every case. The practice of deleting such claims is a practice, not an absolute legal requirement.
2. Authorities. Gerber v Lectra showed that relief could be granted without amendment where a patent was partially valid. The relevant reasoning in Kirin-Amgen’s Patent was not obiter, but formed part of the decision concerning the court’s discretion. Zipher v Markem reinforced the conclusion that revocation of a partially invalid patent was not compulsory.
3. Exceptional exercise. Leaving an invalid claim in place is wholly exceptional and requires truly exceptional circumstances. The present interaction between deletion of claim 3 and the construction and validity of claim 2 was unprecedented and sufficiently exceptional. Nintendo’s reliance on Nikken v Pioneer failed because the relevant outcome had been foreseeable before trial. The case concerned a new post-trial validating amendment, whereas the proposed deletion and consequential claim dependency had been identified in advance.
4. Discretion and safeguards. Revocation would be unfair where the court had found claim 2 valid and infringed. Philips’s proposed declarations and undertakings, including restrictions on assertion, assignment and licensing of the invalid claims, together with notification to the Comptroller and entry on the register, adequately protected Nintendo and the public. The court therefore accepted the exceptional course.
5. The European Patent Office retained its independent jurisdiction under Article 138(2) of the Convention. Its possible future decision did not prevent the court from making the order.