G2/21 decision – Plausibility
A decision has been made in respect of the G2/21 referral. We consider the referral and what the decision…
Garmin (Europe) Limited v Koninklijk Philips N.V., Patent Court, London, UK, 29 January 2018,  EWCH 107 (Ch)
In a case that provides an insight into certain issues surrounding patent protection where an existing technology in one field is adopted in another, Garmin have been successful in having Philips’ UK patent for an athlete’s GPS-based monitor largely revoked.
The case concerns GPS sports watches or fitness trackers which have become very popular in recent times, for both professional and recreational athletes. Philips’ patent, EP (UK) 1,076,806 B, was filed on 26 March 1999 with a priority date of 26 March 1998. At that time, portable GPS devices for navigation purposes and portable devices for monitoring athletic performance were both well known. However, Philips initially claimed that they were the first to combine the technologies in what they described as an invention that was “transformative in the field”.
The patent as granted had a main claim directed broadly to a portable performance monitor including a GPS receiver. The patent also had claims directed to developments of the basic monitor, including a monitor having audio headphones through which performance feedback can be provided aurally, and a radio providing audio input to the headphones which is muted during audible performance feedback. In addition to claiming the monitor itself, the patent claimed use of the monitor in a feedback system providing regular updates on the athlete’s performance where the system includes an external computer and which may include the internet.
Garmin brought a claim in the Patents Court for revocation of 2017. Philips counter-claimed for infringement, alleging that 73 of Garmin’s products infringed. Garmin did not dispute infringement but sought to have the patent revoked on several grounds, including lack of inventive step.
During the proceedings, Philips entered a number of conditional claim amendments. The second conditional amendment added the feature of a means for providing audio presentation of real-time performance information and an audio entertainment system for providing the athlete with music whilst exercising, which is reduced in volume during audio presentation of performance information.
In January 2019, Mr Justice Henry Carr handed down his decision, finding all the claims invalid for lack of inventive step except for the second conditional amendment which was found valid and infringed by some of Garmin’s products. The main prior art document relied upon was a paper by Schutz and Chambaz published in 1997 entitled “Could a satellite-based navigation system (GPS) be used to assess the physical activity of individuals on earth”. This paper discussed the results of a trial to determine whether GPS tracking could be used to accurately determine the velocity of an athlete walking, running and cycling. It determined that GPS could be used with acceptable accuracy and went on to discuss potential advantages and disadvantages of such a system
In assessing inventive step, the Judge categorised the patent an “ideas” patent in which its inventive contribution lies in the idea or concept claimed rather than the manner of implementation. If the idea is known or obvious, it cannot be patented. He found that although the “concept may be said to have given rise to a new industry”, the majority of the claims related to ideas that were not new or were obvious at the priority date.
As part of its case for invalidity, Garmin relied on a number of documents which they argued would have been found by a skilled person undertaking an analysis of existing products as part of a product development process and so formed part of the common general knowledge. In assessing these documents, the Judge drew a distinction between common general knowledge and information which it is obvious to obtain when faced with the problem to which the patent is addressed. Whilst the later could be taken into account when assessing inventive step, it did not form part of the common general knowledge.
Garmin also asserted that some of the claims in consideration, particularly some of the use claims, were no more than a collocation. That is to say the claims were to a combination of distinct technical features with no synergistic effect. Where a claim is to a collocation, it is enough to show that the individual features of the claim are obvious to prove that the combination of features does not involve an inventive step. The Judge rejected Garmin’s arguments in this respect. In relation to the second conditional amendment he found that the combination provided an integrated system, which cannot be divided into separate parts and that there was no division in the system which means the music player and the performance monitor behave separately.
Whilst Garmin were not successful in having the patent fully revoked, they have significantly limited its scope and so reduced their potential liability as only a few of their 73 products were thought to fall within the scope of surviving claim.
Although the majority of the claims were found invalid in view of the prior art, this case demonstrates that patent protection may be available in cases where known technologies from different fields are brought together. However, it is particularly important in such cases to file a patent application early in order to secure broad protection for the concept. Given that implementation is often straightforward once the concept has been proposed, even a passing reference to the possibility with limited information on its implementation may be sufficient to render a later filed patent invalid.
Given the current interest in wearable technology and the internet of things, similar issues are likely to arise in future patent disputes.
A copy of the judgment can be found here. For more information on patent protection, please contact one of our patent attorneys.