HTC Corporation v Gemalto SA [2014] EWCA Civ 1335 (22 October 2014)

James Mellor QC led Gemalto S.A.’s legal team in their appeal regarding construction of a claim in an allegedly infringed microcontroller patent (‘865’). Michael Tappin QC appeared as lead counsel for HTC.
At first instance, Birss J had held that 865 was partially invalid and HTC had not infringed. Applying the Kirin Amgen principles, Lord Justice Floyd held that a narrower construction of the term “microcontroller” in claim 1 of 865 was required. The use made in the prior art did not support a broad construction and the specification pointed to a narrow construction. “Microcontroller” therefore meant a single chip with a CPU and all memory resources on board. As such the HTC devices were not infringing.
Exercising the Medimmune principles, a disentitlement to priority attack on claim 3 of 865, which would have invalidated the patent if successful, failed. The priority document did provide sufficient disclosure to support the relevant claim in light of the “mental backdrop” that the skilled person would have when interpreting a priority document.
James Mellor QC was instructed by King & Wood Mallesons LLP.
Michael Tappin QC was instructed by Powell Gilbert LLP.