NOKIA, NO PROBLEM; NAM GOES FOR MANGOES?

Nokia, no problem

Right: no problem for Nokia, perhaps, but InterDigital feels that a rash of similar actions is likely to be afoot.

The IPKat spotted this big Court of Appeal for England and Wales decision (Lords Justices Waller, Carnwath and Jacob) on BAILII yesterday, in Nokia Corporation v InterDigital Technology Corporation [2006] EWCA Civ 1618. This was InterDigital's appeal from the ruling of Mr Justice Pumfrey (noted here by the IPKat) in which he refused either to set aside proceedings brought by Nokia or to give summary judgment against that company.

The background is a little messy. Interdigital licensed its patents to Nokia, who subsequently commenced proceedings seeking declarations that some of InterDigital's patents were not needed for compliance with the internationally-agreed 3G standard for mobile phones. InterDigital was not happy about this, arguing both that (i) Pumfrey J erred in exercising his discretion to allow the action to proceed at all, (ii) the appropriate remedy for Nokia was a normal bog-standard declaration of non-infringement under the Patents Act 1977 section 71 and that (iii) Nokia had either no right at all, or an insufficient claim of right, to seek a declaratory jurisdiction.

The Court of Appeal, for whom Jacob LJ delivered the principal judgment, dismissed InterDigital's appeal, taking the following positions:

* A court would usually decline to grant a declaration in favour of a party against whom no claim had been formulated - after all, there wasn't much point in doing so. This case was however an exception because Pumfrey J had been in a unique position to exercise discretion, given his knowledge of the case and his ability to form an authoritative opinion of its merits;

* A declaration of non-infringement under section 71 was inappropriate where what was sort was a set of declarations that a bunch of patents was not essential for anyone wanting to comply with the 3G standard;

*The "no claim of right" argument was commercially unrealistic. Nokia had a real and blatant commercial interest getting its declarations and the mere threat of possible competition law proceedings or the encouragement of further similar claims for declarations in relation to similar standards were not sufficiently cogent reasons for declining jurisdiction - particularly since the courts had ample case management powers for dealing with such eventualities.

The IPKat heartily agrees both with the decision and with the observation of Jacob LJ that the fact that 3G technology standards are global does not preclude a single national court from exercising jurisdiction in respect of the matter before it. He said (at para.19):

"Nokia have a manifest and real commercial interest in a decision of the kind sought. They are "technically infringing" if they are wrong. True it is that any decision will be a decision only for this jurisdiction (though with likely commercial repercussions beyond it, particularly in Europe where the principles of determination of the scope of a patent, which are supposed to be the same, are in practice increasingly converging). Mr Watson asked forensically why should this Court be the forum for deciding what is a world wide question? The answer is that it is not. No Court could do that but that is not a reason for a Court deciding matters within its jurisdiction and that is all that is sought here".

Merpel says, but surely checking to see what patents you actually need to take licences for when signing up for your 3G entitlement to print money goes against the spirit of cross-licensing that fuelled the patent portfolio arms race in the first place?


Nam goes for mangoes?

The IPKat is happy to report the accession by the Socialist Republic of Viet Nam to the International Convention for the Protection of New Varieties of Plants (as amended, mutated or genetically modified from time to time). The Convention will enter into force on 24 December 2006.