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

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

The burden of proving lack of good faith and reasonable skill and knowledge (GFRSK) in framing the patent specification lies with Nokia, the party alleging it. The amended section 63(2) of the Patents Act 1977 requires the court to consider GFRSK as a discretionary factor, not as an absolute bar to relief. Nokia's request for further information from IPCom is justified and must be answered unless privilege is clearly established, as the allegations made cross the threshold for requiring a response.

Parties
Claimant: Nokia Oyj (Nokia Corporation); Defendant: IPCom GmbH & Co KG
Jurisdiction
England and Wales
Judgment Date
26 October 2011
Procedural Posture
Patent Infringement and Validity Proceedings / Post Trial Judgment on Financial Relief and Procedural Directions
Outcome
Order for IPCom to answer Nokia's request for information; further directions to be given for final disposal of the section 63(2) issue.
Legal Topics
Partial Validity of Patents, Section 63(2) Patents Act 1977, Good Faith and Reasonable Skill in Patent Drafting, Damages and Financial Relief in Patent Cases, Procedural Directions
Intellectual Property Law Patent Law Partial Validity of Patents Section 63(2) Patents Act 1977 Good Faith and Reasonable Skill in Patent Drafting Damages and Financial Relief in Patent Cases Procedural Directions

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Parties

Nokia Oyj (Nokia Corporation)

Claimant

IPCom GmbH & Co KG

Defendant

Procedural Posture

Patent Infringement and Validity Proceedings / Post Trial Judgment on Financial Relief and Procedural Directions

Legal Issues

  1. 1 Whether financial relief to IPCom should be restricted under section 63(2) of the Patents Act 1977 due to lack of good faith and reasonable skill and knowledge (GFRSK) in framing the patent specification
  2. 2 Who bears the burden of proof regarding lack of GFRSK under the amended section 63(2)
  3. 3 Whether Nokia is entitled to further information from IPCom regarding the knowledge of the patent drafter

Ratio Decidendi

The burden of proving lack of good faith and reasonable skill and knowledge (GFRSK) in framing the patent specification lies with Nokia, the party alleging it. The amended section 63(2) of the Patents Act 1977 requires the court to consider GFRSK as a discretionary factor, not as an absolute bar to relief. Nokia's request for further information from IPCom is justified and must be answered unless privilege is clearly established, as the allegations made cross the threshold for requiring a response.

Court Disposition

Order for IPCom to answer Nokia's request for information; further directions to be given for final disposal of the section 63(2) issue.

Orders

  • IPCom to answer Nokia's request for information regarding the knowledge of the patent drafter.
  • Further directions to be given to enable final disposal of the section 63(2) issue.