The Patent Review 2013/14: Invalid claim to priority: HTC Corporation v Gemalto S.A.

15 April 2015

Neil Jenkins, Audrey Horton

HTC Corporation v Gemalto S.A. [2014] EWCA Civ 1335, Court of Appeal

Gemalto's two patents related to computers and their programming, specifically the use of high level programming language with a microcontroller. The Judge had concluded that the 865 patent was not infringed by the HTC devices (a variety of smartphones and a tablet computer) and that only claim 3 (and its dependent claims) survived the attack on its validity. The Judge had also concluded that the 062 patent was wholly invalid.

Gemalto appealed against the decision that the 865 patent was not infringed by the HTC devices. HTC cross-appealed against the decision that claim 3 of the 865 patent was valid.

The appeal turned on the construction of the term "microcontroller having a set of resource constraints and comprising a memory". The Judge had held that the normal way in which the term was used in the art and also the way in which the term was used in the 865 patent required there to be a chip having some memory on it. The Court of Appeal in fact adopted an even narrower construction of the term holding that it required all of the memory to be on the chip as a result of which they too like the Judge held that it was not infringed by the HTC devices. The appeal was therefore dismissed.

On the cross-appeal, the issue turned on whether the priority document disclosed "a converter for post-processing the compiled form into a minimized form". It was conceded by Gemalto that if claim 3 was not entitled to claim priority then it was invalid over the disclosure in an intervening publication.

The Court of Appeal emphasised that although the question to be determined when considering a claim to priority was "what was disclosed to the skilled person not what was made obvious to him by the priority document for example in the light of the common general knowledge", this did not mean that the priority document should be read in a vacuum. The knowledge and background of the skilled person should be taken into account in deciding what the priority document discloses.

The priority document itself disclosed a particular method of compacting the application program, namely namespace mapping. The question was whether this disclosure was sufficient to support a claim which was wide enough to encompass all compaction methods.

The Judge had held that if the skilled team who were given the priority document "decided to reduce the size of the application for time and space efficiency using techniques apart from the namespace map [they] would not think that they were doing anything different from the principles of general application the inventors of the priority document have taught". The Court of Appeal agreed with him rejecting Gemalto's criticisms of his reasoning and as a result the cross-appeal was also dismissed.