Damages limited in 3G case
- Author:
- James Nurton
- Publisher:
- Bloomsbury Professional
In IPCOM GmbH & Co Kg v HTC Europe Co Ltd & Ors [2020] EWHC 2941 (Pat), Mr Justice Birss ruled on the defendant’s application to strike out part of IPCom’s case in a damages enquiry. IPCom’s patent for an invention used in 3G mobile phones had been found valid and infringed by HTC’s phones. HTC developed a workaround, but nevertheless a number of its phones in the UK infringed the patent.
The damages inquiry is scheduled for May 2021 and IPCom claimed what the judge called ‘a very substantial sum’ based on a 0.5% royalty on all 2G, 3G and 4G phones sold by HTC worldwide. The claim comprised two elements:
(1) More than a million phones sold in the UK which infringed the patent (worth less than £2 million).
(2) Over a hundred million phones including the workaround phones, 2G only phones and phones never imported into the UK (worth hundreds of millions of pounds).
At the case management conference on 21 October, HTC claimed that damages were only due for the first category, and that the claim for the second category should be struck out. The judge agreed that the claim for overseas sales was not sustainable, saying that IPCom’s case failed on points of principle and law. Summarising, he said:
‘the central problem with IPCom's case based on its notional licence is that such a claim is based on claiming for sums due under that licence (one way or another) in respect of phones sold abroad, and the only way in which those sales could justify a payment to IPCom in a claim for damages for infringement of a UK patent is if those acts (i.e. the sales) were in some sense caused by the acts of infringement in the UK. But they were not, and IPCom does not attempt to suggest that they were. Therefore the claim should be struck out.’
Regarding the claim for non-infringing sales in the UK, the judge said this should be decided at trial: ‘I can see that if a UK portfolio approach is legitimate, it might (but might very well not, and depending on the facts) justify a claim for damages based on the workaround phones.’