Wii part ii - Partially valid patent remains unamended

The IPKat reported last month on the case of Philips v Nintendo, concerning Nintendo’s Wii console, which was held to infringe two patents, which themselves were held to be partially valid.  Not available on BAILII, but coming to the IPKat's attention via Lawtel, is an interesting follow-up decision which considers the issue of a partially valid patent.

This Kat has long mewsed on the rather idiosyncratic drafting of the Patents Act 1977, which deals with the issue of infringement of partially valid patents in Section 63, and of amendment of patents in infringement proceeding quite separately in Section 75, and ties them together only in Section 63(3) which states:

As a condition of relief under this section the court or the comptroller may direct that the specification of the patent shall be amended to its or his satisfaction upon an application made for that purpose under section 75 below, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined. 

Since the wording is not mandatory ("may direct"), it is clear that it is legally possible for a partially valid patent to remain unamended but unrevoked.  But followers of UK patent caselaw will be aware that this rarely happens.  But unusually, that is precisely what happened in this case.  So what was going on?

The case concerned the patent EP2093650, a divisional of EP1573498.  The previous judgment had held that claims 1 and 3 were invalid, but that claim 2 was valid.  Claims 2 and 3 were each dependent upon claim 1.

Merpel never relinquishes her Wii
Nintendo argued that allowing Philips to amend by deleting the invalid claim 3 would allow for a construction of claim 2 which would invalidate that claim.  In more detail, claim 2 specified a system as in claim 1 with a “motion sensing means”.  During proceedings in the earlier case claim 2 was held to be novel over the prior art, as this was to be interpreted as further motion sensing means (beyond using the camera in claim 1 which, on its own, would not have been novel).  However, deleting claim 3 would arguably leave a construction of claim 2 including reference to cameras, which would consequently invalidate the claim.   The question therefore to be decided was whether the patent could be left in a state of partial invalidity.  Nintendo argued that it should not, and that, because there was not an amendment available that would leave a valid patent, the patent should be revoked.

Philips pointed out that Section 63 gave the court discretion on the matter and that the court could leave the patent unamended with invalidities, and declare that claims 1 and 3 were invalid whilst claim 2 was valid.  Philips offered undertakings not to assert the invalid claims against others; not to assign the patent to another or to grant exclusive licences in respect of the invalid claims; to serve the comptroller general with information on the situation; and obtain an entry on the register expressing the position.

Philips referred to the 1993 case of Gerber v Lectra (which this Kat cannot find freely available online), but Nintendo pointed out that the EPC 2000 has occurred in the meantime, which has changed the rules on discretion for post-grant amendment (as reflected in Section 75(5) of the Patents Act - in general terms, this has resulted in the change that whereas previously the court could decline post-grant amendments for equitable reasons, now the patentee basically has the right to amend post-grant, in the same manner as at the EPO). The Court pointed out that the factual situation in Gerber was completely different, as the patent had expired 3 years earlier, and the patentee had undertaken not to assert the patent at all (not just the invalid claims).

As reported, the judgment held that the court normally required deletion or amendment of invalid claims, but it did have jurisdiction to leave a patent in a state of partial validity in truly exceptional circumstances.  The court accepted that, unusually, deletion of an invalid claim (claim 3) would alter the interpretation of a valid claim (claim 2), which went to the heart of whether the patent was valid or not.  The present case was deemed to be wholly exceptional, and revoking the patent was considered an unfair outcome.  Neither revocation nor maintaining a patent in force for 9 years with invalid claims was ideal, but in the end the court accepted the undertakings put forward by Philips, and opted to maintain the patent in partially valid form. It was ordered that the register should draw attention to the relevant judgments.

Wii part ii - Partially valid patent remains unamended Wii part ii - Partially valid patent remains unamended Reviewed by Darren Smyth on Monday, August 04, 2014 Rating: 5


  1. I'm surprised no amendment was possible to sort the situation out. This would not have happened at the EPO.

  2. I suppose these invalid unrevoked claims are 'ghost claims'. There but not there. A bit like unelected pending claims on a US application.

  3. Why could claim 1 not be amended to include the subject matter of claim 2 with with a disclaimer that the motion sensing means is not a camera?


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