Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg

Factual and Procedural Background

The judgment concerns European Patent (UK) No 1 841 268 ("the patent" or "268") found to have been infringed by two devices of the Defendant. The Plaintiff's patent was challenged on validity grounds including lack of inventive step, insufficiency, and added matter. All validity challenges were rejected except one added matter attack, which succeeded. The Plaintiff was allowed to amend the patent specification by reinstating a feature involving comparison with a random or pseudo-random number, which had been removed from the claim. The patent originally belonged to Company A and was later assigned to the Plaintiff, who prosecuted the patent including the amendment. The Defendant raised objections during prosecution, specifically about the removal of the random number comparison feature. The Defendant contended at a subsequent hearing that financial relief to the Plaintiff should be limited or refused under section 63(2) of the Patents Act 1977 due to alleged lack of good faith and reasonable skill and knowledge (GFRSK) in framing the patent specification. The court directed further proceedings to resolve this issue, involving pleadings and evidence, though no disclosure orders were sought. The Plaintiff declined to answer a request for information citing privilege, leading to further procedural directions.

Legal Issues Presented

1. Whether financial relief awarded to the Plaintiff under the patent infringement finding should be restricted under section 63(2) of the Patents Act 1977 due to the patent specification not being framed in good faith and with reasonable skill and knowledge (GFRSK).
2. Who bears the burden of proof regarding the allegation of lack of GFRSK in framing the patent specification.
3. Whether the Defendant is entitled to further information from the Plaintiff about the knowledge and skill involved in drafting the patent specification.

Arguments of the Parties

Defendant's Arguments

• The removal of the random number comparison feature and its replacement with a broader claim lacked GFRSK.
• The deleted feature was described as an advantage of the invention, and the deletion was deliberate to broaden protection improperly.
• The individuals responsible at the Plaintiff's side deliberately broadened the patent scope contrary to Article 123(2) EPC.
• No reasonable patent attorney could have believed the deletion was permissible without contravening Article 123(2).
• The Defendant requested further information about the knowledge of the patent draughtsman to support their allegations.

Plaintiff's Arguments

• The Defendant failed to establish a prima facie case of lack of GFRSK.
• It was reasonable to claim based on the "evaluation of the access threshold value" embodiment.
• The grant of the patent by the European Patent Office despite the Defendant’s third party observations supports the reasonableness of the claim.
• The Plaintiff did not address the knowledge or thought processes of the patent draughtsman in detail.
• The Plaintiff declined to provide further information citing privilege over communications, asserting that knowledge itself is not privileged.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Smith Kline & French Laboratories Limited v Evans [1989] FSR 561	Public interest in prompt amendment of patents to ensure reliability of patent scope.	Used to illustrate the importance of good faith and reasonable skill in patent drafting and the public interest in prompt correction of patents.
Unilin v Beheer [Court of Appeal]	Interpretation of section 63(2) unamended; reasonable skill does not extend to irrelevant matters for EPC compliance.	Referenced to note that the amended section 63(2) addresses some issues raised, such as the right to an account of profits and the absence of a requirement for defendant reliance.
Codex v Racal-Milgo [1983] RPC 369	Distinction between damages and account of profits under patent infringement remedies.	Used to explain that the amended section 63(2) now includes accounts of profits explicitly.
Three Rivers District Council v Bank of England (No 3) [2003] 2 AC 1	Test for whether a case is bound to fail at an early procedural stage, considering the prospect of evidence becoming available.	Applied to assess the Defendant’s entitlement to further information and whether the Plaintiff’s pleading crossed the threshold for requiring an answer.
McDonald's Corporation v Steel [1995] 3 AER 615	Principle relating to the burden of proof and cross-examination in defamation cases.	Referenced regarding the requirement for a proper basis for allegations of dishonesty in pleadings and the evidential burden on the party raising such allegations.

Court's Reasoning and Analysis

The court examined the statutory framework of section 63(1) and (2) of the Patents Act 1977, focusing on the amended subsection (2) which requires the court to "take account of" factors including whether the patent specification was framed with GFRSK when awarding damages or other relief. The court contrasted the amended provision with its previous form, noting that GFRSK is no longer an absolute precondition to relief but a factor to consider. The court concluded that the burden of proving lack of GFRSK lies with the Defendant, who raised the issue, as it constitutes a charge of negligence and bad faith. The court rejected the Plaintiff’s privilege objection as a complete bar to providing information about knowledge relevant to the GFRSK issue, stating that knowledge itself is not privileged even if communications may be. The court found the Defendant’s pleading sufficiently detailed to require a substantive answer, not warranting striking out. The court emphasized that the amended section 63(2) does not impose a mandatory sanction for lack of GFRSK but allows a graduated, discretionary approach considering the relevance of such lack to the relief sought. Finally, the court decided that the Defendant is entitled to an answer to their request for information before a final decision on the GFRSK issue and the quantum of relief is made.

Holding and Implications

The court ordered the Plaintiff to answer the Defendant's request for information concerning the knowledge and skill involved in drafting the patent specification. The court indicated that this step is necessary before making a final determination on the issue of whether the patent specification lacked good faith and reasonable skill and knowledge (GFRSK) under section 63(2) of the Patents Act 1977, which could affect the scope of financial relief awarded.

The holding is that the burden of proving lack of GFRSK lies with the Defendant, and the Plaintiff must provide further information to enable proper assessment of this issue.

The decision does not set new precedent beyond clarifying the burden of proof and procedural entitlement to information in such disputes. It preserves a discretionary approach to relief under the amended statutory provision, emphasizing relevance of GFRSK to the relief sought rather than absolute bars. The direct effect is that the case will proceed with further factual inquiry before final relief is determined.