HTC Europe Company Ltd v Apple Inc. (a company incorporated under the laws of the State of California)
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 04 July 2012 |
| Neutral Citation | [2012] EWHC 1789 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC11 C02826 & HC11 C02703 & HC11 C03080 |
| Date | 04 July 2012 |
[2012] EWHC 1789 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Rolls Building, EC4A 1NL
The Hon Mr Justice Floyd
Case No: HC11 C02826 & HC11 C02703 & HC11 C03080
Richard Meade QC, Daniel Alexander QC, Michael Tappin QC, Andrew Lykiardopoulos, James Abrahams and Isabel Jamal (instructed by Powell Gilbert) for the HTC parties
Simon Thorley QC, Guy Burkill QC and Joe Delaney (instructed by Freshfields, Bruckhaus Deringer) for Apple Inc.
Hearing dates: April 19–20, 23, 25–27, 30, and May 1–3, 8–10, 12 2012.
Introduction
These three actions concern four patents owned by Apple Inc. ("Apple"): European Patents Nos. 2 098 948; 2 964 022; 2 059 868; and 1 168 859. For convenience I will refer to the patents by the last three digits of their numbers. Two of the actions (HC11C02703 and HC11C02826) were commenced by HTC Europe Co. Ltd (a UK company) as applications for revocation of the 022, 868 and 859 patents. In response, Apple sued HTC Corporation, a Taiwanese company, in a third action (HC11C0380) for infringement of those patents and the 948 patent. HTC Corporation counterclaimed for revocation of the 948 patent. I will refer to HTC Europe Co. Ltd and HTC Corporation together as "HTC". The trial of the actions therefore proceeded as if Apple were claimant and HTC defendant, with Apple opening the case and calling its evidence first. The evidence was called in three tranches: first 948, then 022 and 868, and finally 859. I heard some final speeches before the evidence on 859 was called. Mr Burkill QC argued the cases for Apple on 948 and 859, opposed by Mr Tappin QC for HTC on 948 and Mr Alexander QC for HTC on 859. Mr Thorley QC for Apple and Mr Meade QC for HTC argued the cases on 022 and 868. Apple's junior counsel was Mr Delaney; HTC's were Mr Lykiardopoulos, Mr Abrahams and Ms Jamal. I am extremely grateful to all counsel and solicitors for their highly skilled presentation of these cases. I shall have something to say about the time estimates for the hearing at the end of this judgment.
Legal principles
Construction. In Kirin Amgen v TKT [2005] RPC 9 the House of Lords explained that the determination of the extent of protection only involves asking what a person skilled in the art would have understood the patentee to have used the language of the claim to mean. Guidelines to assist the court in construing the patent are summarised by the Court of Appeal in Virgin Atlantic v Premium Aircraft [2010] FSR 10 at paragraph 5.
Novelty. The law is set out in the speech of Lord Hoffmann in Synthon v SKB [2006] RPC 10 at [22]. To deprive a claim of novelty, the prior document must contain clear and unmistakeable directions to do or make something which falls within the scope of that claim, and the disclosure must be enabling in the relevant sense.
Obviousness. In Conor v Angiotech [2008] UKHL 49; [2008] RPC 28 at [42] Lord Hoffmann approved the following statement by Kitchin J in Generics (UK) Ltd v H Lundbeck A/S [2007] RPC 32 at [72]:
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
It is convenient to address the question of obviousness by using the structured approach explained by the Court of Appeal in Pozzoli v BDMO [2007] EWCA Civ 588; [2007] FSR 37. This involves the following steps:
"(1)(a) Identify the notional 'person skilled in the art'.
(b) Identify the relevant common general knowledge of that person.
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it.
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed.
(4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
Common general knowledge. In relation to information in documents, the Court of Appeal in General Tire v Firestone [1972] RPC 457, noted at pages 482–3 the statement of Luxmoore J in British Acoustic Films that:
"A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and [accepted without question] by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art" (square brackets added)
Whilst the Court of Appeal was not prepared to endorse the words "accepted without question" in the above citation, they were content with "generally regarded as a good basis for further action".
Both Mr Thorley and Mr Burkill reminded me of the considerations which apply in the case of an attack on lack of inventive step which starts from the common general knowledge alone, without reference to any particular citation. I set out some of these considerations in ratiopharm v Napp [2009] RPC 11 at [155] to [159].
Added subject matter. In Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10, Jacob LJ approved his own earlier statement (as Jacob J) in Richardson-Vicks' Patent [1995] RPC 568 at 576 where he summarised the rule against added matter in a single sentence:
"I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification."
Although this simple principle has been much elaborated in its application to particular types of amendment between application and granted patent, it is sufficient for the issue which arises in the present case. I would only add that it is always important to bear in mind that a claim may be broadened so as to cover additional subject matter without necessarily disclosing anything new.
Excluded subject matter. Article 52 of the European Patent Convention, which is given effect to by section 1(2) of the Patents Act 1977 provides:
"(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
…
(c) … programs for computers;
(d) presentations of information.
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
The law on this topic has been explained in two decisions of the Court of Appeal: Aerotel v Telco Holdings and Macrossan's Application [2006] EWCA Civ 1371; [2007] RPC 7 and Symbian v Comptroller General of Patents [2009] RPC 1.
In Aerotel the Court of Appeal set out a four step approach to deciding cases where the exclusions from patentability were engaged:
"(1) properly construe the claim
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature".
At [43]–[44] in Aerotel, Jacob LJ cites with apparent approval a submission made by counsel for the Comptroller as to how one identified the actual or alleged contribution for the purposes of steps (2), (3) and (4). It involves asking what the inventor has really added to human knowledge:
"The second step—identify the contribution—is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable—it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form—which is surely what the legislator intended.
Mr Birss added the words "or alleged contribution" in his formulation of the second step. That will do at the application stage—where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made."
In Gemstar TV Guide International v Virgin Media Ltd [2009] EWHC 3068 (Ch) at [37], Mann J left open the question of the appropriate "baseline" for the purposes of determining the contribution: was it any cited prior art, or only common general knowledge? Although I did not hear full argument on this point, it seems to me that the baseline is defined by any item of prior art admissible for a novelty attack....
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