Wednesday 23 October 2013

No stay where EPO proceedings start over again

Ipcom GMBH & Co KG v HTC Europe Co Ltd and others [2013] EWHC 2880 (Ch) is a Patents Court, England and Wales, decision of Mr Justice Roth, going back to 26 September but not yet on BAILII.  This note is drawn from a short explanation of this decision on the Lawtel subscription-only service. It invites once again the question whether the traditional court system, meshed in with the grant-and-opposition mechanisms of the European Patent Office (EPO), are really suited to the sort of complex litigation that is needed where internationally-granted and often technical standard-oriented patents are concerned.

These proceedings concerned litigation in respect of IPCom's mobile telephony patent for a means of controlling access to the ‘Random Access Channel’ or ‘RACH’ between mobile phones and a network base station.  IPCom sued the three defendants (collectively referred to as HTC) for patent infringement; HTC counterclaimed that the patent was invalid and argued that, even if it was valid, they weren't infringing it because they were using ‘workarounds’ that did not infringe.

The patent, in the form subject to IPCom's existing claim, was held valid by the Patents Court back in 2011 in Nokia Oyj (Nokia Corporation) v IPCom GmbH & Co KG[2011] EWHC 1470 (Pat) following which HTC applied to adjourn the trial of technical issues of invalidity and infringement pending the final determination of validity proceedings currently pending before the European Patent Office's Technical Board of Appeal (TBA).  In May 2012 the Patents Court heard this application by HTC and granted it, though limiting it to the period up to the decision of the TBA on the appeal against the Opposition Division’s revocation of the European patent.

The TBA subsequently held that the patent was valid with an amended claim and remitted the case to the Opposition Division to consider some other grounds of opposition. At this juncture, IPCom applied for an ‘unless’ order to enforce directions given by a judge on 25 September 2012 for inspection of parts of the source codes which enabled or governed access to the RACH. The chips were supplied to HTC by third parties, including Qualcomm and Intel, who were responsible for the software and the relevant source codes.

HTC sought a further stay and the third parties applied to vary or discharge the relevant provision in that order. In these proceedings Roth J thus had to decide (i) whether there ought to be a further stay of the proceedings until the final resolution of the case in the EPO and (ii) whether the order should be varied to restrict the inspection of the security codes, particularly in the light of concerns expressed by the third parties about the very high degree of commercial confidentiality that attached to the source codes.

Roth J refused to order a further stay, but did vary the order.  In his view:

* a further stay would involve waiting for two levels of decision in the EPO. Accordingly, the potential total delay resulting from the stay sought was very long indeed.

* Justification for the order for inspection remained and the court was not prepared to discharge it on substantive grounds. However, account was taken of concerns expressed by the third parties about the very high degree of commercial confidentiality that attached to the source codes. Having heard argument regarding the scope of the confidentiality club of which the third parties were members, Roth J was minded to restrict the order so as to allow access to just one or two nominated experts who would each provide a written undertaking of confidentiality to the court, as well as to identified individuals in IPCom’s external English team.

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