England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Rolls Building, London, EC4A 1NL
		21 December 2011

Approved Further Judgment – section 63(2)

Mr Justice Floyd :

1. I handed down judgment in this action and counterclaim on 16^th June 2011. I held that the patent in suit, European Patent (UK) No 1 841 268 ("the patent" or "268") had been infringed by two Nokia devices referred to as the A1 and A2.
2. On 26^th October 2011 I handed down a judgment ("the October judgment") dealing with the application of section 63(2) of the Patents Act 1977 to this case. I decided that the burden of establishing the lack of good faith or reasonable skill and knowledge ("GFRSK") referred to in that section lay on the party alleging it, that is to say Nokia. Nevertheless I held that, as Nokia's allegation passed the striking out test, I would not reach a final decision on the issues until IPCom had provided a proper answer to Nokia's request for information, something which IPCom had, up to that point, declined to do on the grounds of privilege.
3. On receipt of the draft of the October judgment, IPCom provided a further response to the request for information. When the judgment was handed down, IPCom pressed me to decide the issue under section 63(2) without further interim steps. Nokia resisted that approach, indicating that they had had inadequate time to consider the response and they intended to make a further unspecified application in relation to it. I decided that the proportionate approach was to allow each side to make further submissions in writing with a view to my deciding the matter on paper, without a further hearing.
4. In the event each side has availed itself of the opportunity to file further submissions. Nokia's are dated 8^th November 2011 and IPCom's are dated 15^th November 2011. Although the directions given on 26^th October 2011 did not provide for further evidence, each set of submissions was accompanied by a witness statement. Nokia's witness statement came from Mr Richard Vary, an in-house lawyer at Nokia. IPCom's statement comes from Dr Myles Jelf, the solicitor at Bristows, who act for IPCom in this litigation. Neither side objected to the admission of the further evidence, although they criticised its contents. I consider that I should now proceed to decide the matter.
5. Lest it be thought that I commend the procedure just described as a model of how the issue under section 63(2) should be decided, let me say emphatically that I do not. If the issue is one which a party contends will need to be the subject of requests for information and disclosure, that party should ensure that appropriate directions are given at the outset, and a trial date given which can realistically accommodate those steps. In the present case the matter was allowed to come on for trial before the request for information had been answered, and without any request for disclosure ever having been made. Each side blames the other for this. Proportionality demands that I do my best now to settle the question on the basis of the materials now available.
6. In the October judgment I explained the added matter attack and the amendment at [3] as follows:

"The added matter attack which succeeded was concerned with the removal from the claim of a requirement that "the access threshold value (S) [is] compared with a random number or with a pseudo-random number (R)"… This feature was replaced with a requirement that access to the RACH be based on an "evaluation" of the access threshold value, without any reference to a random or pseudo-random number. The amendment which I allowed at the trial simply put the random number comparison feature back in."

7. I explained what was known about the prosecution history at [4] to [8] of the October judgment as follows:

"[4] The original applicant for the group of patents to which 268 belongs was Robert Bosch GmbH. Herr Frohwitter was Robert Bosch's patent attorney. In 2007 Bosch's patent portfolio was assigned to IPCom, a German limited partnership of which Herr Frohwitter was and is a director. 268 was a divisional application at that stage, and included the random number comparison feature, as had the parent application which gave birth to it. Subsequent prosecution was by IPCom, and, presumably, under the direction of Herr Frohwitter.

[5] The claims without the random number comparison feature were filed at the EPO on 19^th June 2009. The new claims were accompanied by a chart which showed where it was asserted that there was basis in the parent application for the new claims. The chart did not specifically attempt to justify the removal of the random number comparison feature.

[6] Third party observations, a procedure for a third party to comment on claims during prosecution at the EPO, were filed by Nokia in September 2009. Nokia's observations included a specific objection to the removal of the random number comparison from the claims.

[7] The counterclaim for infringement in the present proceedings was served in June 2010. IPCom made its conditional application to amend, by reinstating the random number comparison feature, unprompted by any very specific complaint from Nokia, in December 2010.

[8] Nokia rely on the fact that the random number comparison feature was apparently regarded by IPCom [and] its predecessors as important, except for a short period between June 2009 and December 2010 when they sought to get by without it. They say this is an unusual feature of any prosecution, which itself requires explanation from IPCom."

8. I summarised the parties' pleaded cases on GFRSK at [10] – [12] in the October judgment as follows:

"[10] Nokia's statement of case pleads that the removal of the random number comparison feature and its replacement with a mere evaluation of the access threshold value lacked GFRSK. They rely on the fact that, at [0005] in the application, the random number comparison was stated to be the advantage of the invention. They allege that Herr Gigerich and Herr Frohwhitter of IPCom deliberately deleted the feature for the purpose and with the intention that it would be wide enough to catch implementations without random number comparison. They go on to assert that "on no view did the deleted feature satisfy the requirements" of Article 123(2). Accordingly, Nokia allege that Herr Gigerich and Herr Frohwhitter made a deliberate decision to broaden the scope of protection of 268 knowing that such was contrary to Article 123(2). They also assert that no reasonable patent practitioner could believe that the deleted feature could be deleted in this case without contravening Article 123(2).

[11] IPCom's statement of case in response asserts that Nokia's statement of case fails to advance any proper prima facie case of lack of GFRSK. It contends that it is entirely reasonable to put forward a claim based on the second embodiment in the patent which is characterised by the phrase "evaluation of the access threshold value". In support of the fact that a reasonable patent attorney could put forward such a claim, they rely on a number of matters, the principal one of which is the decision of the EPO to grant the patent in the face of this specific objection having been raised by way of third party observations from Nokia.

[12] IPCom's response accordingly focuses only on the claim itself. It does not condescend to any detail as to the knowledge or thought processes of IPCom or the patent draughtsman."

9. Finally I recorded a submission by Mr Purvis QC for IPCom at [36]:

"Mr Purvis submitted that this was a case where the court could conclude that there should be no reduction of relief even if there were a finding of lack of GFRSK. Accordingly, he submitted, the court already had adequate material on which to dispose of the issue. He submitted in substance that there was no nexus in the present case between any potential lack of GFRSK and any loss to Nokia. That submission may turn out to be justified and, in its turn, to justify awarding IPCom full relief. But it would not be right to pre-judge that issue, particularly in its impact on a discretionary remedy such as costs, before the court is fully in possession of the facts and in a position to make a finding about GFRSK."

IPCom's further information

10. IPCom's response to the request for further information occasionally uses expressions such as "it can be assumed that" or "it can be taken that" or "it can be inferred that". These statements need to be treated with care, as they are simply submissions. If the matters sought to be inferred were entirely against IPCom's interest, then they could be treated as admissions. But in some cases they are relied upon to assist IPCom. In that case it is not correct to take them into account as facts, although the inferences may in the end be proper ones to draw.
11. Stripped of these instances, the further information explains:

i) That Mr Frohwitter was the only person at IPCom who was formally responsible for the instruction of the actual draftsman of the patent.

ii) The individual within Frohwitter Intellectual Property Counsellors responsible for the drafting of the patent was Jan Gigerich.

iii) The individual within df-mp responsible for the drafting of the patent was David Molnia.

iv) Mr Frohwitter is German attorney at law, holds a degree in mechanical and electronic engineering, and has extensive experience in patent litigation.

v) IPCom accept that Mr Frohwitter had the knowledge ordinarily to be expected of someone with his qualifications and experience.

vi) Messrs. Gigerich and Molnia had the knowledge of European patent law ordinarily to be expected of someone with their qualifications and experience.

vii) Messrs Gigerich and Molnia had the technical knowledge to be expected of persons engaged to draft such a document.

viii) IPCom, whether itself or through its patent attorneys did not know that the random distribution feature was an essential feature of the patent, nor do they accept that that is so.

ix) The reasons for prosecuting the claims in the form in which they are granted is claimed to be privileged. IPCom say they have no access to the thought processes of their patent attorneys save through privileged communications.

x) It was compulsory to amend the claims in view of the fact that the claims of the patent were identical to those of the parent application.

xi) The skill used in drafting the claims was that of Messrs Gigerich and Molnia.

xii) The state of knowledge of IPCom about whether the deleted feature was being removed from the claims was limited to what it was told through communications with its patent attorneys and is claimed to be privileged. Likewise their awareness of whether the claims were being broadened and the reasons for removing the deleted feature.

xiii) The decision to draft the amended claims in the form they took was taken by Messrs Gigerich and Molnia.

xiv) It is admitted that random distribution was a feature of the second exemplary embodiment in the patent.

xv) In response to the question "Did IPCom consider whether the removal of the features contravened Article 123(2) EPC", IPCom rely on a number of things which they say "can be taken", and rely on privilege, but do not volunteer any facts.

xvi) As to the conclusions reached about added matter, IPCom also rely on privilege.

The further evidence

12. When the October judgment was handed down, counsel for Nokia had submitted that "at the time when the key feature was deleted – the Frohwitter firm was acting, so there is no question of Mr Frohwitter not being in complete control…" IPCom's counsel interjected that Mr Frohwitter was not involved in the drafting. He later explained that he was saying no more than was contained in the pleadings already before the court, namely that Mr Gigerich actually drafted the patent. Nevertheless, the further evidence of Mr Vary provided by Nokia addresses the question of the extent of Mr Frohwitter's involvement in drafting patents in what has become the IPCom portfolio, as well as Bosch's and IPCom's attitude to broad claims. Mr Vary relies on the following:

i) Mr Frohwitter led a group responsible for drafting amendments to the parent patent in the litigation in Germany between the parties about that patent. This drafting was done in breaks in a hearing in that litigation before the Federal Patent Court.

ii) Mr Frohwitter has stated to Mr Vary that the reason he knows the IP portfolio of patents so well is because he prosecuted much of it. The conversation took place during a break in the hearing of Nokia's nullity case against the 098 patent.

iii) In another of these outside court conversations, Mr Frohwitter has said that its patents are intentionally prosecuted in a broad form so that they can be narrowed down by amendment or by divisional application or to better fit an allegation of infringement. Nokia should not be surprised if the patents were found invalid as granted when a patent is narrowed before the courts. It was a strength of the portfolio.

iv) IPCom have made a similar statement to a journalist, Sven Grundberg of Dow Jones on 16^th June 2011 in which he said:

"So far, probably 10 or 12 patents have come to judgment. None has been found finally invalid. It is known, that the Bosch patent claims are typically drafted very broadly. In such proceedings initiated by Nokia, we redraft such claims, make them more narrow and make them also much easier to read on the standards. So the reality is, that the patents, like the 100A become much stronger."

13. The "100A" patent is IPCom's internal number for the 268 patent.
14. IPCom's further witness statement from Dr Jelf, of their English solicitors, is ostensibly filed to rebut what are described as allegations of dishonesty and professional misconduct made by Nokia in Nokia's further written submissions. In fact he gives evidence about the following matters:

i) The 268 patent was a divisional of the 189 patent which came before the court in the previous action and was filed in identical form to its parent. It therefore had to be amended.

ii) Mr Frohwitter was the person at IPCom who was responsible for the instruction of the actual draftsman of the 268 patent. The patent was actually drafted by Jan Gigerich and David Molnia, patent attorneys at Frohwitter Intellectual Property and df-mp.

iii) The claims which are now the subject of the GFRSK attack, i.e. those with the random distribution feature deleted, did not exist until IPCom's attorneys drafted them and it "would not have been possible for IPCom to have formed any view as to, or have any knowledge about, the validity of those claims before that time".

iv) The new proposed claims were presented to IPCom by way of advice in a communication from its patent attorneys. Any further discussion of the form of claims would have been in consultation with patent attorneys. It is not therefore possible to separate what is privileged from IPCom's knowledge.

v) Mr Molnia of df-mp was involved in the drafting despite the fact that he did not become the representative agent of IPCom at the EPO until 28^th December 2009 (some time after filing of the new claims on 19 June 2009).

vi) Dr Jelf sought his clients' instructions before signing the statement of truth on IPCom's further information.

vii) The claims of the patent without the limitation to random distribution are still being defended before the EPO, where the Opposition division has indicated its provisional view that the term "evaluation" in the application does not result in unallowable broadening of the claims. The opposition proceedings are brought by Nokia, Deutsche Telekom, Ericsson, HTC and Vodafone, all of whom apparently relied on this objection.

The parties' submissions

15. Nokia submits that IPCom has failed to respond properly to the request for information. Accordingly it submits that the claim for damages should be struck out for failing to comply with the court's direction. Alternatively they submit that I should conclude on the available material that the patent was not drafted with GFRSK.
16. IPCom submit that the allegations of lack of GFRSK should be dismissed. Alternatively they renew their submission about lack of nexus recorded above at [9].

Striking out

17. There was no dispute that the court has jurisdiction to strike out a part of a claim if satisfied that a party is in breach of its orders: see CPR 3.4(2)(c). IPCom contend that they have complied with the order save to the extent that compliance would require them to trespass on privileged material. In their further submissions Nokia say that there has been deliberate disobedience to the order.
18. Firstly, Nokia contend that IPCom has obscured Mr Frohwitter's role. I cannot accept that submission. It seems to me that it is clear that Mr Frohwitter accepts overall responsibility for giving the instructions to the draftsman, but that the actual drafting work was done by Messrs Gigerich and Molnia. For the purposes of the issue I have to decide, it seems to me that IPCom's response is adequate. The answer is not thrown in doubt by Mr Vary's accounts of what has happened in conversations at hearings about other patents, or the fact that Mr Frohwitter may have performed drafting work while at Bosch, or the fact that he knows these patents well.
19. Secondly, Nokia say that it is clear that Mr Molnia had no involvement in the drafting, and his inclusion is a "red herring". However, as Dr Jelf has explained, that submission is based on the date on which Mr Molnia's firm was placed on the register at the EPO. The submission is therefore made on a false factual premise.
20. Thirdly, Nokia challenge IPCom's reliance on privilege. Nokia accept that communications between IPCom and its attorneys about the prosecution of the patent were privileged. They maintain, however, that IPCom's knowledge of facts cannot be privileged. That is undoubtedly correct as a principle so broadly stated. Yet the complaint here is not about knowledge of some external fact which has a bearing on the issue of GFRSK. The complaint is about a potential legal objection to the breadth of a claim. Normally it would not be legitimate to ask the client of a lawyer why he came to a particular legal conclusion, because the answer would almost inevitably require a waiver of privilege in the communication. The only way he could have a view on the subject would be because of what his lawyer had communicated to him.
21. The present case can be differentiated on the basis that Mr Frohwitter and his company were not a typical lay client. Mr Frohwitter was plainly capable of coming to a conclusion on an issue such as this independently of external advice. Hence it is not necessarily the case that an answer to such questions as these would involve any reference to or reliance on privileged communications. However, any answer which was given as to IPCom's knowledge or view would inevitably raise the question of whether that knowledge or view was communicated to the actual draftsman, a matter in which IPCom can properly claim privilege. What is more, IPCom's position is that its only source of knowledge on these matters was its privileged communications from its patent attorneys.
22. Perhaps the most pertinent questions asked by Nokia are "Did IPCom consider whether the removal of the [feature complained of] would contravene Article 123(2)" and a supplementary question about the conclusions reached and the reasons for coming to that conclusion. Whilst IPCom could in theory answer a question about its own independent view, that would be of no relevance unless one knows (which one is not entitled to) whether and if so in what form that view was communicated to the attorneys drafting the patent. If its view was based on communications from the attorneys, those are privileged as well.
23. I do not consider therefore that IPCom's answer is a breach of the order to answer the request for information. It was obviously not the purpose of the request to draw out irrelevant matter, or matter which is the subject of privilege.
24. Fourthly, Nokia complain that IPCom state that they did not know that the deleted feature was essential, contrary to the findings implicit in the main judgment. I cannot see how this can be a failure to answer the question.
25. Fifthly, Nokia complain about the answer given to the enquiry about whether IPCom were aware that the deleted feature was being removed from the claims. IPCom's answer was that its knowledge was limited to what it was told by its attorneys. Again I cannot see why this is not an answer to the question. The details of such communications are privileged.
26. Although I have not dealt individually with each complaint, I have said enough to make clear that I do not accept that IPCom's response was a failure to comply with the court's order. It follows that I see no basis for striking out the claim to damages and costs, and reject the first of Nokia's submissions.

Lack of GFRSK?

27. At the core of Nokia's case is the suggestion that no reasonably competent patent attorney could have drafted a claim without the deleted feature reasonably believing it to be valid. It is convenient next, therefore to deal with that proposition.
28. I should say at once that I have no hesitation in rejecting that submission on the material now before me. The proposition is not supported, as it could have been, by any evidence of an expert patent attorney. Nokia place reliance on the fact that I have found that the deletion of the feature added matter. However, a finding that a feature adds matter is a long way away from a finding that no reasonable patent attorney could have honestly or without negligence have come to that view. My judgment is certainly not expressed in anything approaching those terms. The proposition that no reasonable patent attorney could have failed to see that the deletion of the feature added matter is inconsistent with the fact an examiner at the EPO has accepted the claims in the teeth of third party observations from Nokia raising this precise point. If that were not enough, the same point raised by five opponents has been rejected by the EPO, albeit on a provisional basis, in the opposition proceedings. The EPO is not known to apply a liberal approach to added matter. This is not the expected fate of claims which are so clearly and unarguably invalid.
29. It follows that the issue in the present case has to be approached on the basis that a reasonably competent patent attorney could put forward claims in the form in which they were before amendment and reasonably believe them to be valid. That finding is important in its own right, and not merely because it removes the cornerstone of Nokia's pleaded case. What it shows is that the validity of the claim in issue is not a question of fact of which IPCom could have had knowledge one way or the other, but is a question of judgment and opinion.
30. A further important consideration is that it is common ground that it is the duty of a patent attorney to obtain the widest coverage he can for his client, consistently with what can properly be advanced on the basis of known facts.
31. In my judgment it is impossible to conclude on the material before me that the claims in question were drafted without GFRSK. It is true that IPCom have not been as forthcoming as to the history of the prosecution as Nokia would like, but I have explained why I consider their response to the request to have been adequate. I do not think that Mr Vary's evidence takes the matter any further. Obtaining broad claims is not the same thing as obtaining invalid ones.
32. It follows that it is not necessary for me to express a view on IPCom's alternative submission on the lack of any nexus between the lack of GFRSK and the damages or costs. There may, for example, be a distinction between cases where there is a valid claim before amendment which is infringed by the defendant (and the amendment merely deletes other, invalid claims) and cases where the amendment is validating the only claims which are infringed. The former may not provide a sufficient nexus between a lack of GFRSK and damages; the defendant was always going to be an infringer. The latter may provide a nexus because the defendant was entitled to assume that the patent was invalid and that no damages would be payable. The point is of some importance, and for that reason I would prefer to leave it for decision in a case where it arises more directly.

Conclusion

33. In the circumstances I find that there was no lack of GFRSK. I will hear counsel on the form of order.