HTC v Nokia (UK) – no case for exhaustion….


The patent dispute between HTC and Nokia (which recently settled – days before the ITC was due to rule on the first two of Nokia’s complaints against HTC) generated some noteworthy English judgments which are worth a mention…

First, in October 2013, Mr Justice Arnold handed down a judgment (see here) that considered ‘non technical patent defences’ based on U.S. patent exhaustion and English implied licence issues asserted by HTC. Such non technical defences often arise in litigation involving multi-component devices (in this dispute smartphones) where a patentee licenses a component manufacturer abroad and an end device manufacturer purchases a component from the component manufacturer and incorporates it into its devices. Whilst the judgment is fact specific and complicated by confidentiality issues, Arnold J applies the English doctrine of implied licence in some detail and in particular highlights the distinction between: (i) a patentee, and (ii) a licensee selling a patented product abroad and the consequences of that distinction when the product is subsequently imported into the UK. If you are interested, a short case comment we wrote recently for the Journal of Intellectual Property Law & Practice discusses this case in more detail can be found here.

HTC’s licence defences ultimately failed and Nokia’s (non-essential) patent was upheld as valid and infringed. A second judgment from Arnold J followed on 3 December 2013 (see here) which addressed whether Nokia should be entitled to an injunction for that patent. For anyone interested in the availability of injunctive relief for patents as a general matter it is worth a read. He considers the leading English judgments on injunctive relief for patents and explains his view on how any perceived inconsistencies should be rectified, particularly in the light of the Enforcement Directive and TRIPS. Much of the current debate on injunctions is of course focused on SEPs. However, this judgment evidences the English Court’s considerable discretion as to whether to grant injunctive relief for any patent regardless of its essentiality (or lack of)…..

Helen Hopson