National decision - Partial priority

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) (BAILII) 

Key point

• In this UK decision, a question was whether the claims had priority in view of the requirement of "same invention", because the claims were a generalization from the priority document. 
• This decision is also discussed in recent decision T 557/13 referring the questions about partial priority to the Enlarged Board in G1/15:

15.2.2 In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) of 10 July 2013, concerning European Patent (UK) 0 932 865, the judge noted with reference to G 2/98 (Reasons, 6.7), that "although one can sympathise with the desire for a limited number", it was questionable whether there was "any principled basis for such a requirement". The "need for clearly defined alternative subject-matters" was expressly accepted "if a single claim is to be given partial or multiple priorities" (paragraph 160).
In effect (paragraph 195), claim 1 comprising features defined with respect to a "high level language", was not found to be (even partially) entitled to priority, since "Java" was the only programming language disclosed in the priority document. However, claim 3, dependent on claim 1 and limited by reference to "Java", was found to enjoy priority.

This post has been kept in stock for some time. 

Summary
OJ 2015, Sp. 2. 

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

On the requirement of the "same invention", Birss J referred to Kitchin LJ's summary of the law inMedImmune Ltd v Novartis Pharmaceuticals Ltd [2012] EWCA Civ 1234 (see above in this chapter) and Floyd J's summary of the court's task in Samsung Electronics Co. Ltd v Apple Retail UK Ltd [2013] EWHC 467 (Pat) (see above in this chapter). In Birss J's judgment, the test for priority was not a novelty test or an infringement test.
It had more substance and was less formal than that (Samsung). It was certainly not an obviousness test (Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat)). In relation to enablement it was clearly not or at least not only an added matter test. Enablement was certainly one of the requirements for a successful claim to priority, both in the sense that what is specifically disclosed must actually be enabled (Asahi Kasei Kogyo KK's Application [1991]RPC 485) and also in the sense described in Biogen v Medeva [1997] RPC 1, in which the claim in question was adjudged to have lost priority because it covered other ways of achieving the goal which owed nothing to the principle disclosed.

The English authorities showed that entitlement to priority is a different question from the other familiar elements of patent validity: sufficiency of disclosure, novelty, inventive step and added matter. It was its own test which arose in its own context and with its own policy considerations. It contained aspects common to other areas. The test for enablement must be the same as in other contexts and the test for disclosure (clearly and unambiguously derivable, explicitly or implicitly) must be the same whether one was looking at a priority document for priority or an application for added matter. However, as between priority and added matter, one was looking at the disclosure for a different purpose.

The test for the same invention was not satisfied by claim 1 of the patent, which was not limited to application source programs written in Java, but expressly encompassed application source programs written in any high level language. However, the disclosure of the priority document, both expressly and by implication, was clear: the invention involved and required the use of Java.

For the combination of claim 1 and claim 3 (limited to Java), the judge found that the skilled reader would derive from the disclosure of the priority document the idea of compacting in general with a namespace map as an example, rather than only the specific idea of using a namespace map. The priority was therefore valid.

[...]

On appeal (HTC Corporation v Gemalto SA [2014] EWCA Civ 1335 of 22 October 2014), the priority of claim 3 was again in issue. The Court of Appeal upheld the finding of the trial judge. According to Floyd LJ, the question of what a document disclosed to a skilled person took account of the knowledge and background of that person. The document only had one meaning because it was only the relevant skilled person's understanding which was relevant. What was not permissible was to go further than eliciting the explicit or implicit disclosure and take account of what a document might lead a skilled person to do or try, or what it might prompt him to think of.