Commscope Technologies LLC v Solid Technologies, Inc.
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mellor |
| Judgment Date | 01 April 2022 |
| Neutral Citation | [2022] EWHC 769 (Pat) |
| Docket Number | Case No: HP-2020-000017 |
| Court | Chancery Division (Patents Court) |
[2022] EWHC 769 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Mr Justice Mellor
Case No: HP-2020-000017
James Abrahams QC and Ben Longstaff (instructed by Powell Gilbert LLP) for the Claimant
Hugo Cuddigan QC and Edward Cronan (instructed by Jones Day) for the Defendant
Hearing dates: 7 th–9 th & 14 th December 2021
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE HON Mr Justice Mellor
| INTRODUCTION | 2 |
| The issues for decision | 3 |
| The Expert Witnesses | 4 |
| The skilled person | 5 |
| Technical background | 6 |
| Cellular wireless communication | 6 |
| RF signals | 8 |
| Modulation of radio carriers | 9 |
| Frequency shifting | 11 |
| Modulation and frequency shifting in more detail | 11 |
| Sampling theory | 14 |
| Digital representation of samples | 15 |
| Processing of digital samples | 17 |
| Distributed antenna systems | 20 |
| Common General Knowledge | 22 |
| CGK points in dispute | 22 |
| Network architectures | 23 |
| The LGCell DAS product | 25 |
| Techniques for handling overflow | 29 |
| Digitisation capacity/bandwidth capacity for ADCs | 30 |
| THE PATENT | 31 |
| Issues of Construction | 40 |
| (i) ‘to communicative couple’/ ‘communicatively coupled’ | 40 |
| (ii) ‘comprising’/ ‘comprise’ | 40 |
| (iii) ‘an original forward-path analogue radio frequency signal’ / ‘an analog-to-digital converter to convert the original forward-path analogue radio frequency signal’ | 40 |
| (iv) ‘a digital-to-analogue converter to convert the summed reverse-path digital samples to a reconstructed reverse-path analogue radio frequency signal’ | 41 |
| (v) ‘a respective original reverse-path analogue radio frequency signal comprising a reverse-path radio frequency spectrum’ | 41 |
| VALIDITY | 42 |
| Legal principles | 42 |
| THE PRIOR ART | 43 |
| What does Oh disclose to the skilled person? | 52 |
| Does Oh anticipate claim 1 of EP850? | 56 |
| Was claim 1 of EP850 obvious over Oh? | 56 |
| Was claim 7 of EP850 obvious over Oh? | 57 |
| INFRINGEMENT | 59 |
| CONCLUSIONS ON EP850 | 59 |
| THE APPLICATION TO AMEND EP626 | 60 |
| Jurisdiction | 61 |
INTRODUCTION
This is the trial of a patent action concerned with distributed antenna systems or DAS for short. A DAS is used in a cellular wireless communication system (in the forward or downlink direction) to distribute radio frequency (“ RF”) signals transmitted from a base station into areas where the signal has been significantly attenuated so that e.g. mobile devices in such areas can continue to operate effectively. A DAS is bi-directional, so (in the reverse or uplink direction) it is used to gather wireless signals from e.g. mobile devices and transmit them back to the base station.
DAS were known, but the patent with which this judgment is principally concerned, EP(UK) 2 290 850 (‘EP850’) provides a digital DAS, in the sense that the internal handling of the analogue RF signals is digitised.
The issues for decision
Originally, the Claimant (‘CommScope’) sued the Defendant (‘SOLiD’) for infringement of two patents: EP850 and EP(UK) 1 570 626 (‘EP626’), SOLiD counterclaimed for invalidity, and CommScope reacted by applying to amend each of the patents.
The action for infringement of EP626 and the corresponding counterclaim to invalidate it have been settled on terms, leaving outstanding CommScope's application to amend EP626 which I have to discuss later, and the claims in relation to EP850. Those have narrowed in that:
i) CommScope has abandoned its conditional application to amend EP850;
ii) CommScope agrees that the trial can focus on claims 1 and 7 of EP850, both apparatus claims. These are the only claims said to be independently valid.
Thus, the bulk of this judgment is concerned with EP850, on which the issues I have to decide are:
i) Whether claim 1 of EP850 is anticipated by or obvious over the single piece of prior art pleaded, which is called Oh. Oh is a Korean patent application published on 5 August 1999, i.e. before the agreed priority date of EP850 of 19 July 2000.
ii) Whether claim 7 is obvious over Oh.
Resolution of those issues naturally depends on a proper identification of (a) the Skilled Person and (b) his or her Common General Knowledge, both of which were in issue.
Infringement remains formally in issue. SOLiD say that if claims 1 and 7 are construed as they say they should be, no issue of infringement arises. If claims 1 and 7 are construed narrowly, as CommScope contends, at the start of the trial there was a hint that there might be some non-infringement arguments, but none appeared.
The Grounds of Invalidity also contain a fairly standard insufficiency plea, to the effect that the patent is no more enabling than Oh. To the extent necessary, the squeeze seems to have had its effect so there is no need to say anything more about insufficiency.
As to Oh, there are two disputes. The first and principal dispute is whether the disclosure is limited to a multi-channel arrangement. The second and related dispute is whether the disclosure in Oh would be read by the Skilled Person as being designed for and limited to a specific telecoms standard that had been rolled out in South Korea around the time the document was filed and published. The standard is question was TTA-62, a Korean CDMA standard based on IS-95 (also known as ‘CDMAOne’).
Subject to those disputes, there are a number of issues as to the proper construction of various terms used in claim 1, some of which also appear in claim 7. At least some of the construction issues in turn depend on what was CGK. As is usual in a judgment in this type of case there is plenty of terminology. Documents in the case used both ‘analog’ and ‘analogue’. Generally I have used analog, but the two terms bear identical meanings. At the outset I define ADC as ‘analog-to-digital converter’ and DAC as ‘digital-to-analog converter’.
The Expert Witnesses
CommScope called Dr Anthony Acampora as its expert witness and SOLiD called Professor Alwyn Seeds. Between them the experts served a total of seven reports. The first report from each expert set out their views in the usual way, from which it became apparent that there were some disputes over what constituted CGK. Each expert responded in their second report. However, Dr Acampora's second report raised a fresh issue as to what was generally known about expansion units, so I gave permission at the PTR for service of a third report from Professor Seeds responding on that issue. Following the PTR, Dr Acampora served a third report giving further evidence on CGK and in relation to obviousness of claim 7, for which no permission had been given, but SOLiD did not resist the introduction of it. Finally, Dr Acampora served a fourth report to deal with certain points on the amendment of EP626 which were raised by the Comptroller.
There was a very marked contrast between the two experts. Dr Acampora was a poor witness. As SOLiD submitted, the technology in this case was not complicated. Dr Acampora plainly had a technical understanding of all the relevant technology. However, I was entirely satisfied from his cross-examination that he had no relevant practical experience in the field of DAS and therefore was not in a position to provide the Court with any meaningful evidence as to what was or was not CGK. In his oral evidence, Dr Acampora frequently gave very long answers which did not address the question put. As SOLiD submitted, he had a number of ‘red lines’ which he would not cross, even when he was unable to articulate any coherent reason for the position he adopted, and he had difficulty with adopting the correct role of an expert witness before the English Court.
In that regard, it was apparent from Dr Acampora's CV documents that he had given evidence on patent matters in the US many times, and on behalf of CommScope four times. I acknowledge that he gave evidence for SOLiD in one US case. However, in my view, Dr Acampora was one of those expert witnesses who, having significant experience of the US system, had significant difficulty adjusting to the rules applying to the giving of expert evidence in this Court. Overall, I concluded that Dr Acampora saw his role as an advocate for CommScope's case. Despite all that, Dr Acampora did make certain important concessions.
The contrast with Professor Seeds could hardly have been greater. Professor Seeds was working in the DAS field around the priority date. Despite the fact that he was himself highly qualified, experienced and inventive, I am satisfied that he took care to ensure that he considered the issues in this case from the perspective of the man of ordinary skill in the field who was uninventive i.e. the people who are actually going to do the legwork to create the products, as he put it, not research leaders. It was evident that his teaching of students and employing people in the DAS field assisted him to do that. In his oral evidence, he was careful, knowledgeable and cooperative, giving his evidence in an impartial fashion. In short, I found him to be a model expert witness. Wherever there was a conflict, I have preferred...
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