Introduction

The case of Garmin (Europe) Ltd v Koninklijke Philips NV ([2019] EWHC 107 (Ch)) adjudicated in the England and Wales High Court (Chancery Division) revolves around patent validity concerning GPS-based athletic performance monitoring devices, commonly known as fitness trackers or APMDs (Athletic Performance Monitoring Devices). Garmin, the claimant, sought a declaration of invalidity against Philips' patent EP(UK)1,076,806B1, titled "Athlete's GPS-based performance monitor." The core issues encompassed allegations of patent invalidity based on obviousness, exclusion of subject matter, insufficiency, and potential infringement across 73 Garmin products.

Summary of the Judgment

Justice Henry Carr delivered the judgment, meticulously assessing each claim under contention:

• Claim 30A: Found to be obvious at the priority date and declared invalid.
• Claim CA1: Introduced recommendations to adjust effort levels based on performance data; also deemed obvious and invalid.
• Claim CA2: Incorporated an audio entertainment system with automatic volume dimming during feedback presentations; deemed inventive and valid.
• Claim CA3: Combined features from CA1 and CA2; also found to be inventive and valid.
• Claim 30B: Narrowest claim, further combining additional features; declared inventive and valid.

Moreover, the court delved into complex issues such as collocation, where multiple inventions are bundled together, and the exclusion of certain subject matters like the presentation of information. The judgment affirmed that while some claims lacked inventive step, others introduced genuinely novel technical contributions.

Analysis

Precedents Cited

The judgment referenced several pivotal cases and legal principles that significantly influenced its reasoning:

• Sabaf SPA v MFI Furniture Centres Ltd [2005] RPC 10: Addressed the concept of collocation, emphasizing that multiple inventions bundled together must form a single inventive concept to be patentable.
• Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33: Discussed the definition of the "skilled person" in patent law, particularly avoiding hindsight bias.
• KCI Licensing v Smith and Nephew [2010] EWHC 1487 (Pat) and Terrell on Patents: Provided foundational principles on common general knowledge and the exclusion of subject matter.
• HTC Corp v Yozmot [2010] EWHC 786 (Pat): Reinforced that technical contributions must solve a technical problem and not merely present information.

Legal Reasoning

The court's legal reasoning was methodical, grounded in statutory provisions and established case law:

• Common General Knowledge: The court scrutinized what constitutes common general knowledge in the field, distinguishing it from mere public knowledge. It emphasized that common general knowledge comprises information part of the "mental equipment" of the skilled person, essential for understanding and applying the patent.
• Inventive Step and Obviousness: The judgment assessed whether the claimed inventions were obvious to a person skilled in the art at the priority date. For claims deemed obvious, the patent was invalidated.
• Excluded Subject Matter: The court analyzed whether the claims fell under exclusions, such as the presentation of information. It concluded that inventive technical solutions mitigating such exclusions were valid.
• Collocation: The judgment denied Garmin's collocation argument, asserting that the combined features of the claims formed a single inventive concept rather than a mere aggregation of separate inventions.
• Presentation of Information: By interpreting how information was presented (e.g., audio feedback with automatic volume dimming), the court determined whether the presentation constituted a technical contribution, thus avoiding exclusion.

Impact

This judgment holds significant implications for patent law, especially concerning technological integrations and the presentation of information within patented inventions:

• Clarification on Technical Contributions: It reinforces that technical contributions can arise from innovative combinations of features or methods of presenting information.
• Guidance on Exclusions: The decision offers clarity on navigating exclusions related to information presentation, determining when such presentations transcend mere abstract information and contribute technically.
• Influence on Future APMDs: Manufacturers of athletic performance monitoring devices will need to carefully assess the technical novelty and inventive steps in their integrations of GPS technology with other functionalities like audio feedback systems.
• Precedent on Collocation: The rejection of collocation arguments for combinations forming a single inventive concept provides guidance on how patents should be structured and defended in multifaceted technological fields.

Complex Concepts Simplified

Conclusion

The judgment in Garmin (Europe) Ltd v Koninklijke Philips NV underscores the nuanced interplay between inventive step, common general knowledge, and the exclusions in patent law. While certain integrations of GPS technology in APMDs were deemed obvious and thus invalid, the innovative combination of audio entertainment with automatic volume dimming during performance feedback presented a technical solution that qualified as inventive. This differentiation highlights the importance of how features are implemented technically rather than their mere presence.

Moreover, the court's dismissal of the collocation argument clarifies that proprietary systems combining multiple functionalities can still be patentable if they form a cohesive technical concept. The decision serves as a guiding benchmark for future patent assessments, particularly in technologically evolving fields where integration of multiple systems or functionalities is common.

Ultimately, this judgment reinforces the principle that patents must not only introduce new features but also demonstrate an inventive step that contributes technically beyond the aggregation of existing knowledge.