Koninklijke Philips Electronics N.v (a company incorporated under the laws of the Netherlands) v Nintendo of Europe GmbH (a company incorporated under the laws of Germany, having a registered branch in England with branch number Br005889)

JurisdictionEngland & Wales
JudgeMr. Justice Birss
Judgment Date17 July 2014
Neutral Citation[2014] EWHC 3172 (Pat)
Date17 July 2014
CourtChancery Division (Patents Court)
Docket NumberCase No: HC 12 E 04759

[2014] EWHC 3172 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

The Rolls Building

7 Rolls Buildings

Fetter Lane

London EC4A 1NL

Before:

Mr. Justice Birss

Case No: HC 12 E 04759

Between:
Koninklijke Philips Electronics N.V. (a company incorporated under the laws of the Netherlands)
Claimant
and
Nintendo of Europe GmbH (a company incorporated under the laws of Germany, having a registered branch in England with branch number Br005889)
Defendant

Mr. Thomas Hinchliffe (instructed by Bristows LLP) appeared for the Claimant.

Mr. Brian Nicholson (instructed by Rouse Legal) appeared for the Defendant.

Mr. Justice Birss
1

This is the hearing to deal with the various consequential matters arising from my judgment in this case between the patentee Philips and Nintendo [2014] EWHC 1959 (Pat). I held that the '484 patent was invalid but the two other patents '498 and '650 were valid and were infringed by the Nintendo Wii game console. My finding that '498 and '650 were valid did not relate to the patents in the form they were granted but related to various amendments proposed by Philips which produced valid claims.

Patent amendment

2

The main judgment mentions a problem caused by the manner in which Philips had put forward its amendments in this case as being an approach which was likely to lead to mistakes being made. I am bound to say that the nature of the dispute that I have heard this morning is yet more evidence that the approach that Philips took to amendment in this case was indeed one which risked mistakes being made.

3

After judgment Nintendo, rightly and fairly, pressed Philips' legal team for a full set of precisely what claims (and for that matter what amendments to the specification) Philips were contending were the appropriate amendments that should be made following the judgment. Mr. Nicholson referred to the correspondence which went on for just under a month. Eventually on 9th July Nintendo were provided with the amendments. Mr. Nicholson then tells me — and it is clear on the evidence that this happened — that various matters were raised by the legal team for Nintendo, identifying problems with the set of claims and the amendments which had been proposed by Philips. Those were points that were well taken.

4

Mr. Nicholson was sensitive to the suggestion that his clients were raising matters too late and were making what were called nit-picking remarks. There is no foundation in that sort of suggestion. In fairness to Mr. Hinchliffe, he did not really put it that way. But it is important to be clear that the matter of amending patent specifications is extremely important and it is a process in which detail matters and in which precision is of vital importance.

5

The points made by Nintendo after receiving the amendments from Philips were demonstrably good points since Philips abandoned a number of the elements of the amendments they put forward on 9th July and did not press them before me. In particular, I refer to the proposed amendments to claims 6, 8 and 9 which they had already abandoned before trial. They were in the set proposed on 9th July but are not now being proposed before me.

6

There is no need to go further through the history of this matter. I will deal with the claims and amendments as they are now.

7

The first point is this. The set of claim amendments which Philips submit should be allowed in relation to the '498 patent essentially involve claim 1 in the form of claim 1D; claims 2 and 3 in the forms of claims 2A and 3A and the remaining claims in the patent the same as granted, with no other difference. There is no renumbering needed. The descriptions of claims 1D, 2A and 3A are in the main judgment.

8

The first objection taken by Nintendo is that this set of claims, what one might call 1D, 2A and 3A, was not before the court at trial. I can sympathise with Nintendo since it is absolutely the case that Philips never wrote out that set of claims. Indeed I can also shoulder some of the blame since I was the one who had to take the trouble to write out exactly what it was that Philips wanted. In writing the main judgment I did wonder about writing out claims 2B, 2C, 2D and so forth. I decided that life was too short. It was clear that a set of claims consisting of 1D plus 2A and 3A was what Philips were after. I do not accept Mr. Nicholson's submission that that set of claims was not before the court at trial. It was clear that that was what Philips were seeking in the various conditional circumstances that might have arisen, and in fact did arise. Accordingly it is fair for Philips to seek to amend the patent in that way.

9

The next point I need to decide on '498 relates to a point on the specification. Before trial Philips did not propose any amendment to paragraph 14 of the '498 patent but it needs to be amended to deal with the added matter objection which had been made to claim 1. As drafted paragraph 14 is as follows:

"The first object is realized in that the system further comprises at least one localization beacon capable of emitting electromagnetic radiation for use to the digital signal processor and wherein the digital signal processor is arranged to recognize to where the pointing device is pointing but using information derived from the captured electromagnetic radiation".

10

In Philip's post trial proposals, paragraph 14 is to be amended this way:

"The first object is realized in that the system further comprises at least one localization beacon s capable of emitting electromagnetic radiation for use to the digital signal processor and wherein the digital signal processor is arranged to recognize to where the pointing device is pointing but using information derived from the captured electromagnetic radiation".

11

The point Mr Nicholson makes is that to be precise the paragraph ought to refer to " room localisation beacons" and not just "localisation beacons". Although it is a small point, in my judgment Mr. Nicholson is correct. The proper basis in the application refers to "room localisation beacons" and I can see no good reason why the word "room" should be absent. It is not clear to me that it would make any difference but it is at least capable of making a difference and it ought to be in there. I will therefore permit paragraph 14 to be amended as proposed provided the word "room" is inserted before the word "localisation".

12

The same amendment in the same form should be made to '650; that is at paragraph 10 of the '650 patent.

13

There were also other proposed amendments to the specification to do with claim numbering, but they have been abandoned by Philips, rightly, because they related to the claims 6, 8 and 9 amendments which have been abandoned as well. I think that deals with everything relation to '498.

14

A matter which I am not going to deal with at this stage is whether section 63(2) applies. Subject to section 63(2) the right thing to do is to permit Philips to make the amendments they seek in relation to '498 with the adjustments I have mentioned already. Subject to 63(2) I will permit Philips to make the amendments described already.

15

I now turn to deal with the '650 patent. The '650 patent raised a point on the specification, paragraph 10, which I have dealt with. The other important point is this. In relation to the '650 patent I found that claim 3 as granted was invalid. Accordingly, ordinarily you would expect that the claim should be deleted. However, Mr. Nicholson submits that the claim played a part in the true construction of claim 1 and the words "motion sensing means". Thus if claim 3 is removed there is a risk of changing the true interpretation of the patent.

16

The problem is that if I leave claim 3 in the patent then one has a patent which contains an invalid claim even though a claim in the form of claim 1 as proposed to be amended (which involves putting together claims 1 and 2 in a way which is otherwise entirely unobjectionable) would be valid. Nintendo recognise this and contend that therefore the patent should be revoked in its entirety.

17

Section 63(2) is concerned with partial validity. There one may be entitled to leave an invalid claim in a patent on the register in this sort of case. Even though a patent normally would be amended if it was found to contain both an invalid claim and a valid claim, a finding of partial validity may not mandate that a patent has to be amended in those circumstances.

18

Mr. Nicholson submits that since, before me, Philips do not seek to leave the patent with claim 3 in place under the partial validity jurisdiction, he submits that I should refuse the amendment relating to claim 3 and revoke the patent.

19

Mr. Hinchliffe, having heard what Mr. Nicholson says, states that his clients would be prepared to leave the patent with claim 3 in it, but his primary submission is that Mr. Nicholson's argument is wrong and the claim can be deleted and should be deleted since (a) it is invalid and (b) although it played a part in the finding on construction it was not the only factor to be considered.

20

As far as I know this is the first time a point like this has arisen. Neither counsel has been able to find a case like this. The case is one in which a claim which played a part in construction on what is sometimes known as the doctrine of claim differentiation, has been found to be invalid for a completely different reason. Therefore it would ordinarily be revoked, but that then raises the problem that Mr. Nicholson has raised about claim...

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