Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg [2012] EWCA Civ 567 (10 May 2012)

Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg [2012] EWCA Civ 567 (10 May 2012)

The Court held that the patent as amended did not add matter beyond the application as filed. The 13 bit embodiment was directly and unambiguously disclosed as an independent embodiment. The amendments did not constitute an impermissible intermediate generalisation. The patent was not invalid for added matter or for obviousness over the cited prior art. The finding of infringement by the Nokia A2 device was upheld.

Citation
[2012] EWCA Civ 567
Parties
Claimant/appellant: Nokia OYJ (Nokia Corporation); Defendant/respondent: IPCom GMBH & Co KG
Jurisdiction
England and Wales
Judgment Date
10 May 2012
Procedural Posture
Patent Appeal / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Added Matter Under Article 123(2) EPC, Obviousness, Patent Infringement, Intermediate Generalisation, Patent Amendment
Intellectual Property Patents Added Matter Under Article 123(2) EPC Obviousness Patent Infringement Intermediate Generalisation Patent Amendment

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 11 Party arguments 2
Sign in to unlock

Parties

Nokia OYJ (Nokia Corporation)

Claimant/appellant

IPCom GMBH & Co KG

Defendant/respondent

Procedural Posture

Patent Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the patent is invalid for added matter under Article 123(2) EPC
  2. 2 Whether the patent is invalid for obviousness over common general knowledge
  3. 3 Whether the patent is invalid for obviousness over GSM/GPRS prior art

Ratio Decidendi

The Court held that the patent as amended did not add matter beyond the application as filed. The 13 bit embodiment was directly and unambiguously disclosed as an independent embodiment. The amendments did not constitute an impermissible intermediate generalisation. The patent was not invalid for added matter or for obviousness over the cited prior art. The finding of infringement by the Nokia A2 device was upheld.

Court Disposition

Appeal dismissed

Orders

  • Permission to appeal on obviousness over common general knowledge formally granted and issue addressed on merits
  • Patent held partially valid and infringed by Nokia A2 device