Garmin (Europe) Ltd v Koninklijke Philips N.V.

Patent claims are construed purposively and in context, while respecting their language and deliberate limitations. A device claimed for a function is ordinarily required only to be suitable for that function. In a collocation analysis, interacting features producing a combined technical effect are assessed together; independent features may be assessed separately. Information discovered on a routine search can be considered in assessing obviousness, although it is not thereby common general knowledge. A GPS-based athletic performance monitor and several associated functions were obvious. However, combining audio entertainment with automatic volume reduction during performance feedback was inventive. That integrated feature made a substantive technical contribution and was not excluded as presentation of information.

Garmin (Europe) Ltd sought declarations of invalidity and revocation of Philips’ patent for a GPS-based athletic performance monitor. Philips counterclaimed for infringement and brought an additional infringement claim against Garmin International, Inc.; the Garmin parties were treated collectively.

The judgment concerned construction, anticipation, inventive step, collocation, conditional amendments, and excluded subject matter. Claim 1 as granted, claim 30A and conditional amendment 1 were challenged as obvious. Conditional amendment 2 added audio performance feedback and automatic reduction of music volume. The central issues included whether the claims required GPS-derived data, automated electronic processing, meaningful comparison for virtual competitions, and an integrated audio system.

1. Construction. The court construed the claims purposively and in context. The athletic performance feedback data in the claim chain had to be derived, at least in part, from GPS position data. Claim 24 required the external computer to provide regular performance updates; advice independent of performance data was insufficient. The claimed verification and data-transfer means were automated electronic functionality, not human witnessing or manual re-entry. A virtual-competition system had to make meaningful comparisons between uploaded performance data. Customised training advice had to be based on that data. Conditional amendment 2 required automatic, not manual, reduction of music volume during audio feedback. The approach was consistent with Saab Seaeye Limited v Atlas Elektronik GmbH [2017] EWCA Civ 2175, Virgin Atlantic v Premium Aircraft [2010] RPC 8, and the principles concerning suitability explained in Qualcomm v Nokia [2008] EWHC 329.
2. Collocation. Under section 14(5)(d) of the Patents Act 1977 and article 82 of the European Patent Convention, the question was whether the features formed one inventive concept. Applying Sabaf SPA v MFI Furniture Centres Ltd [2005] RPC 10, the court held that the monitor and wider feedback system interacted and produced a combined technical effect. The audio system and performance monitor likewise formed an integrated system through automatic volume reduction. The claims were not collocations.
3. Inventive step. Schutz disclosed using GPS to monitor athletic speed, making development of a GPS-based athletic performance monitor obvious. Existing functions such as external data uploads, Internet comparisons, virtual competitions, exercise verification, performance targets and effort recommendations were common general knowledge or obtainable by routine search. Claim 30A and conditional amendment 1 were therefore obvious. Audio feedback alone was obvious for runners, but the combined audio-entertainment and automatic-dimming feature was not obvious. Secondary evidence supported the conclusion that the latter feature was not a hindsight reconstruction.
4. Excluded subject matter. Applying the four-stage approach in Aerotel Ltd v Telco Holdings Ltd and others [2006] EWCA Civ 1371, the contribution of conditional amendment 2 was a technical solution to the problem of simultaneously providing music and aural performance feedback. It was not presentation of information as such under section 1(2)(d) of the Patents Act 1977.
5. Disposition. Claim 1, claim 30A and conditional amendment 1 were invalid for lack of inventive step. Conditional amendment 2 was allowed and was valid and infringed. Conditional amendment 3 and claim 30B were not obvious for the same essential reason.