We last reported on IPCom’s long-running patent litigation in relation to European (UK) patent 1841268 in June 2015. There have already been a number of decisions in connection with this patent from the UK and German courts and in parallel, Opposition proceedings before the European Patent Office. The UK litigation has already demonstrated how infringement proceedings can be affected by EPO Oppositions and this is further evidenced in the latest decision from the Court of Appeal in the UK, IPCom v HTC & Ors [2017] EWCA Civ 90.

In the earlier proceedings before the High Court, IPCom had amended the claims of the UK part of the European patent, largely to match the amended claims being considered in the EPO Opposition. The European Patent and EPO Opposition proceedings are in German, so IPCom’s amendment was based on an English translation. This amendment appeared to have influenced HTC’s positive result: Birss J held that the patent as amended was not essential to the Universal Mobile Telecommunications System (UMTS) standard and was not infringed by HTC. IPCom appealed this Decision. HTC cross-appealed, particularly with regard to the discretion to amend the patent and the validity of the amendments made.

The Court of Appeal upheld IPCom’s appeal, finding the patent with the amended claims valid and infringed. HTC’s cross-appeal was dismissed. In its Decision, the Court was persuaded by expert evidence on the interpretation of the claim wording, which was considered to have been overlooked in the High Court. Whilst the parallel proceedings in Germany and the EPO were discussed in the Court’s Decision, these do not appear to have had a significant influence on the outcome.

This Decision demonstrates that, although EPO Oppositions can have a significant bearing on infringement proceedings, there are limitations to their effect. In particular, the use of expert evidence in a UK Court to interpret claims, which is very rarely considered by the EPO, can have significant weight. Further difficulties in claim interpretation may also arise when the Opposition proceedings are not in English, as was the case for this Patent. The large backlog of cases at the EPO, especially within their Boards of Appeal, can cause more problems. At the time of writing, the Opposition in respect of IPCom’s patent is yet to be concluded.

Nevertheless, the low cost of EPO Oppositions and their central effect on the European Patent across all the countries in which it is in force, still makes them a valuable tool. It should be borne in mind that an Opposition can only be filed within nine months of the European Patent’s grant, so keeping track of patents in relevant sectors can be of great benefit.