In Mölnlycke Health Care AB v BSN Medical Ltd [2009] EWHC 3370, Mr Justice Floyd rejected an application by BSN Medical Ltd to stay proceedings brought by Mölnlycke Health Care AB (MAB) and its exclusive United Kingdom licensee, Mölnlycke Health Care Ltd (MUK), to await a determination of co-pending proceedings in the Stockholm District Court. The judge held that the interests of a licensor and licensee were different sufficiently for them not to qualify as identical parties for the purposes of Article 27(1) of the Brussels Regulation (44/01/EC).

Floyd J held that, following The Tatry [1999] QB 515, it was clear that in order for Article 27 of the Brussels Regulation to apply, there must be identity of parties and of cause of action. In The Tatry, it was held that identity was not destroyed by the mere fact of there being separate legal entities, but that the issue of whether parties were identical might depend on whether there was such a degree of identity between the interests of the entities that a judgment given against one of them would have the force of res judicata as against the other.

Whilst noting that "on a rather high level" the interests of the Mölnlycke parties in the two actions were identical and indissociable, i.e., they shared an interest in preventing the infringement of the UK rights, Floyd J accepted the submissions of MUK that MUK had, by the acquisition of its exclusive licence, acquired the right to protect its UK business from damage. Further, there was no counterclaim for infringement in Sweden and no mechanism for an additional party to counterclaim, since a counterclaim was only allowed if it were "arising from the same contract or facts on which the original claim was based". Treating MUK as the same party as MAB would deprive MUK of a right to damages that was distinct from any possessed by MAB.

Floyd J also refused the application by MAB and MUK for an interim injunction on the normal “Cyanamid principles”. He held that there was a serious issue to be tried and that the balance of convenience was distributed fairly evenly between the parties. However, Mölnlycke had compelling evidence in April 2009 of BSN's plans to launch its product in September 2009. In Floyd’s view, to delay commencement of proceedings until the actual launch was not the behaviour of parties who need urgent protection against infringement.

GSM Recommendations: Obviousness

In Nokia GmbH v IPCom GmbH & Co KG; IPCom GmbH v Nokia UK Ltd [2009] EWHC 3482 (Pat), Mr Justice Floyd considered the prior art and common general knowledge of skilled persons in the field of developing mobile phones for the use in the global system for mobile communications (GSM). The judge concluded that the patents were invalid for obviousness in light of the GSM recommendations. However, had they been valid, Nokia would have infringed the patents.

BACKGROUND

These proceedings concerned two patents registered in the name of IPCom GmbH & Co KG (IPCom). When licensing negotiations between Nokia and IPCom broke down, IPCom sued Nokia for infringement of both patents. Nokia responded by commencing revocation actions in the United Kingdom against 15 of IPCom's patents, two of which are the subject of the judgment and relate to cellular mobile phone technology.

The first patent (the 808 patent) was concerned with the way in which the mobile phone synchronises itself with the transmissions it receives from the base station. The second patent (the 189 patent) was concerned with management of the right of the mobile phone to connect to the network. Both patents were addressed to an engineer or team of engineers who are concerned with developing mobile phones for use in the GSM, and in particular, the functionality required to cause the mobile phones to synchronize to the network.

VALIDITY OF THE 808 PATENT

Obviousness

Applying the four-step test of the Court of Appeal decision in Pozzoli v BDMO [2007] EWCA Civ 588, Floyd J stated that it was convenient to consider the disclosure of the GSM recommendations and then see how far the skilled team would be carried if it was seeking to implement the GSM with its common knowledge. He came to the conclusion that everything in the claims, with the exception of data preprocessing, would be obvious to the skilled person seeking to implement the recommendations.

As there was nothing in the GSM about data pre-processing, Floyd J dealt with this separately. He found that the data preprocessing as claimed was also an obvious step to take, in light of what was obvious in the GSM, together with the common general knowledge that related to data pre-processing.

VALIDITY OF THE 189 PATENT

Floyd J decided that the specifications in the 189 patent must be read in light of the GSM recommendation 04.08, which is part of the description of the General Packet Radio Service (GPRS).

Floyd J held that Claim 1 of the 189 patent lacked novelty over the GPRS and that Claim 2, which was a method according to Claim 1, was also anticipated by the GPRS. Overall, there was a lack of inventive step over the GPRS and Floyd J stated that in fact, the GPRS could do more.

INFRINGEMENT Floyd J held that had the 808 Patent and 189 Patent been valid, they would both have been infringed by Nokia.

COMMENT

The obviousness attack in this case was based on the premise that the skilled team would combine relevant extracts from the GSM recommendations if it was designing a synchronisation scheme for the GSM. The judge accepted that the recommendations are very extensive documents and no skilled team could be expected to have or keep even a tiny fraction of their contents in its collective head, although they would know where to find the information which was readily available