Garmin (Europe) Ltd v Koninklijke Philips N.v (a company existing under the laws of the Kingdom of the Netherlands)

JurisdictionEngland & Wales
JudgeMr Justice Henry Carr
Judgment Date29 January 2019
Neutral Citation[2019] EWHC 107 (Ch)
Docket NumberCase No: HP-2017-000068
CourtChancery Division
Date29 January 2019

[2019] EWHC 107 (Ch)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

PATENTS COURT (Ch)

7 Rolls Building

Fetter Lane, London

EC4A 1NL

Before:

Mr Justice Henry Carr

Case No: HP-2017-000068

Between:
Garmin (Europe) Limited
Claimant
and
Koninklijke Philips N.V. (a company existing under the laws of the Kingdom of the Netherlands)
Defendant

and

Garmin International, Inc. (a company existing under the laws of Kansas)
Third Party

Hugo Cuddigan QC and Tom Alkin (instructed by Powell Gilbert LLP) for the Claimant and the Third Party

Brian Nicholson and Christopher Hall (instructed by Bristows LLP) for the Defendant

Hearing dates: 7, 10, 11, 17 and 18 December 2018

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Mr Justice Henry Carr

Contents

Topic

Paragraphs

Introduction

1–6

The Witnesses

7–26

Mr Farringdon

8–18

Mr McKnight

19–26

Technical Background

27–54

GPS technology

28–33

Existing athletic performance monitoring devices

34–52

The Internet and Worldwide Web

53–54

The Patent

55–84

The Skilled Addressee

85–88

Common General Knowledge

89–120

Legal principles

89–96

Summary of common general knowledge

97–98

Common general knowledge and information that would be found on a routine search

99–101

Common general knowledge – issues in dispute

102–119

Conclusion

120

The claims of the Patent

121–181

Construction – legal principles

123–125

Construction – disputed issues

125–178

Claim 30A

126–174

Claim 30B

175–177

Claim CA2

178–180

Conclusion

181

Collocation

182–189

The Schutz/Higham/GPS II+ Prior Art

190–207

Anticipation of Claim 1 as granted by Schutz/Higham/GPS II+

208–209

Anticipation of claim CA2 by Dolan

210

Conventional obviousness over Schutz/Higham/GPS II+

211–215

Claim 30A – inventive step

216–244

Claim CA1 – inventive step

245–251

Claim CA2 – inventive step

252–266

Claim CA3 – inventive step

267

Claim 30B – inventive step

268–272

Conclusions in relation to inventive step

273

Obviousness of claims 30A/B on an ‘MFI’ basis over Concept II

274

Excluded subject matter — presentation of information

275–293

Legal principles

275–285

Application to the facts – claim CA2

286–291

Presentation of information – other claims

292–293

Conclusion

294–295

Mr Justice Henry Carr

Introduction

1

This case concerns GPS sports watches, also known as fitness trackers, and the use of such devices. Most readers of this judgment will be very familiar with such devices. Whether you love them, hate them, or are obsessed by them, they are difficult to avoid. There are several famous brands including Garmin. They are personal monitoring devices that enable users to obtain, amongst other things, real-time feedback whilst exercising. Users of such devices may not be “athletes” in any normal sense of the word, although the devices have been referred to by the parties as “athletic performance monitoring devices” (“APMDs”).

2

On 20 October 2017 the Claimant, Garmin (Europe) Ltd, issued a claim for a declaration of invalidity and for an order for revocation against the Defendant (“Philips”) in respect of EP(UK)1,076, 806B1 entitled “Athlete's GPS-based performance monitor” (“the Patent”). The priority date of the Patent is 26 March 1998. Philips counterclaimed for infringement, and issued an additional infringement claim against Garmin International, Inc. Common design between the defendants to the counterclaim is admitted and I shall refer to them collectively as “Garmin”. Once infringement was alleged, the parties treated Philips as the claimant, and its evidence was called first.

3

Although the subject matter of the Patent is technically simple, the parties raised multiple issues which have complicated the proceedings. In particular:

i) When opening skeleton arguments were exchanged, Garmin was relying upon six prior art citations as separate starting points for obviousness; certain collocation attacks based on Sabaf SPA v MFI Furniture Centres Ltd [2005] RPC 10; an allegation of excluded subject matter; and an alleged insufficiency squeeze.

ii) In response, Philips applied to make five different amendments. Two claim groups (referred to as claims 30A and 30B) were put forward by Philips. Philips accepted that claim 1 as granted is anticipated by certain of the cited prior art (although it maintained that the anticipation was “accidental”) but denied that any of the prior art deprived any claim of inventive step. Claims 30A and 30B are a combination of claim 30 as granted, which is dependent on certain sub-claims. Philips also proposed three conditional amendments to claim 1, which, according to Philips, only require consideration if the granted claims are to be found invalid.

iii) There was a major dispute between the parties as to the identity of the skilled person for the purposes of obviousness. Philips alleged that the invention changed the art by combining two previously unrelated fields of GPS and athletic performance monitors; and that defining the skilled person for the purposes of obviousness by reference to those fields involved impermissible hindsight; it relied upon the judgment of the Court of Appeal in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33.

iv) The allegation of infringement concerns 73 different Garmin products, which were addressed in Philips' evidence by reference to thirteen different functionalities.

4

By the start of the trial, and during the trial, the issues narrowed to some extent.

i) Garmin did not pursue various of its prior art citations, or only pursued certain prior art in the event that its collocation attack was successful.

ii) Garmin did not cross-examine in relation to the evidence of infringement and did not rely upon any evidence as to non-infringement.

iii) The dispute as to the identity of the skilled person evaporated, and Philips no longer advanced the submission that this was a Schlumberger-type invention. Indeed, Philips accepted that claim 1 of the Patent was not only anticipated by, but also obvious, in the light of one of the prior art citations (Schutz Y and Chambaz A, “ Could a satellite-based navigation system (GPS) be used to assess the physical activity of individuals on earth?”, European Journal of Clinical Medicine (1997) 61, 338–339) (“Schutz”); see in particular Mr Nicholson's oral closing T4/442–443.

iv) Philips continued to advance all of its five proposed amendments, as the scope of any claim found to be valid may make a significant difference to the extent of infringement by the various Garmin products in issue. In particular, if claim 30A is valid, then all 73 Garmin products will infringe. Certain of the conditional amendments will substantially reduce the number of infringing products.

5

I make no criticism of the parties, or their advisers, for the various points which they have pursued. This case was extremely well prepared and presented by both sides. Cases change during the course of litigation, which may mean that issues once seen as important no longer matter. It is very easy for a judge hearing a trial, who has not followed the day to day progress of the case, to wonder why certain points have been advanced. Nonetheless, the stance originally adopted by the parties has influenced the contents of the expert reports and has led to criticisms of the expert evidence.

6

At the conclusion of the trial, the parties agreed a list of issues which remain in dispute. The structure of this judgment is based on that list of issues.

The witnesses

7

Each side relied upon the evidence of a single expert witness, and there were no witnesses of fact. The expert witnesses were Mr Jonathan Farringdon for Philips and Mr Thomas McKnight for Garmin. Both experts gave their evidence carefully. Their purpose was to assist and educate the court. Sensibly, neither counsel made any personal criticism of the experts. However, each side raised issues as to the approach which the experts had taken, and the extent to which the court could rely upon their evidence.

Mr Farringdon

8

Mr Farringdon's knowledge and experience of the relevant fields of expertise was challenged by Mr Hugo Cuddigan QC on behalf of Garmin. I shall summarise Mr Farringdon's experience as described in his written evidence, and then consider his cross-examination.

9

Mr Farringdon explained in his first report that he had worked as an inventor and research scientist for 29 years, with 21 years of commercial experience in the field of wearable health monitoring, and eight years of experience as an academic research scientist in the field of artificial intelligence. He has a degree in mathematical science with computer science and a Master's degree in knowledge-based systems. Between 1990 and 1997 he worked as an academic at UCL. He started his commercial research science career in 1997, joining Philips Research in Redhill UK.

10

He explained that there were three “wearables” teams working in concert at Philips Research, including a technology team which focused on wearable technology that would be feasible to bring to market in the next five years. He was project lead for this team from 1997 to 2001. This work included development of a wearable context detector using an accelerometer published in 1999, and certain fabric sensors measuring body position, also published in 1999. He explained that “application concepts” for these devices included sports training and fitness monitoring. During 1999 he said that he developed a GPS location alarm. This allowed users who had prescriptions to...

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