Patents: Nokia GmbH and Others v IPCom GmbH & Co. [2011] EWCA Civ 6 (20 Jan 2011)

This was an appeal against the following judgments of Mr Justice Floyd:

• Nokia GmbH v Ipcom GmbH & Co KG [2009] EWHC 3482 (Pat) (18 Jan 2010) ("the main judgment");
• [2009] EWHC 3034 (Pat) (20 Nov 2009) ("the first amendment judgment"); and
• [2010] EWHC 789 (Pat) (31 March 2009) ("the second amendment judgment").

The litigation concerned two patents which the trial judge described as follows:

"The two patents relate to cellular mobile phone technology. Broadly speaking, the first of the patents, European Patent (UK) No. 540 808 ("808"), is concerned with the way in which the mobile phone synchronises itself with the transmissions it receives from the base station. The second of the patents, European Patent (UK) No. 1 186 189 ("189"), is concerned with management of the right of the mobile phone to connect to the network."

In the appeal, Lord Justice Jacob referred to 808 as the "synch patent" and 189 as the "access rights patent". The owner of those patents, IPCom GmbH & Co ("IPCom") was described by his lordship as a "non-practising entity" - that is to say, "a patentee with no business of its own in products covered by the patents" or what some people call a "patent troll". IPCom had bought those patents as part of the patent portfolio of Robert Bosch GmbH. It threatened mobile telephone manufacturers including Nokia with infringement proceedings unless they paid what was believed to be a €12 billion ransom. When Nokia refused IPCom launched proceedings in Germany. Nokia retaliated with revocation applications here as well as in Germany.

In the main judgment Mr. Justice Floyd had held the patents to be invalid. However, he was of opinion that had they been valid they would have been infringed. The patentee challenged the revocation of the synch patent but not the revocation of the access rights grant. In the amendment proceedings the patentee sought to "limit", that is to say amend, both patents. The judge refused both applications - the first on the ground that the application had been made just before trial thereby raising a whole new set of issues and the second on the ground that it would have necessitated a new trial on issues that should have been determined in the main proceedings. Thus, the issues before the Court of Appeal were:

• whether the judge was right to revoke the patents;
• whether the patents would have been infringed; and
• whether the judge had been right to refuse limitation of the patents.

Their lordships heard the appeal on invalidity first and upheld the judgment of the court below. Having found the patents to be invalid it was unnecessary for the Court to reconsider whether the patents had been infringed. The Court also upheld the judge's refusal to amend the patents.

Only two points of law arise from this appeal. The first was whether Nokia should have brought these proceedings in England at all as there were similar proceedings between the same parties in Germany and for a time Italy. The second was whether the judge had been right to apply the decision of the Court of Appeal in Nikken Kosakusho Works and Another v Pioneer Trading Company and Another [2006] FSR 4, [2005] EWCA Civ 906

As to the choice of forum point, IPCom complained as follows:

"IPCom believes that Nokia has sought to involve IPCom in litigation at maximum cost in the UK instead of co-operating to resolve matters in a single jurisdiction."

With typical Pauline sarcasm, Lord Justice Jacob replied "Cet animal est très méchant: si on l'attaque il se défend." His lordship added:

"It of course may sometimes make commercial sense to agree to resolve matters in a single jurisdiction. But for one party to choose its jurisdiction first and then expect the other to agree it is another matter. It is rather like one football team challenging another after it has picked a home advantage, if not quite challenging someone to a duel but only after having made one's choice of weapons."

On the amendment point, IPCom had attacked Nikken on the grounds of inconsistency with Henderson v Henderson 3 Hare 100, incompatibility with art 138 of the European Patent Convention and non-compliance with the Enforcement Directive. Lord Justice Jacob was not impressed. In his view what IPCom sought to do here was quite contrary to a trend throughout Europe that a patentee should present its whole case at a single hearing. In his view, a limitation that would leave open the possibility of a second trial on validity would be an abuse of process.