HTC Corporation v Gemalto S.A.

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeMr Justice Birss
Judgment Date10 July 2013
Neutral Citation[2013] EWHC 1876 (Pat)
Docket NumberCase No: HC11C01177 and HC11C01178

[2013] EWHC 1876 (Pat)

IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT

Rolls Building

7 Rolls Buildings

Fetter Lane

London EC4A 1NL

Before:

Mr Justice Birss

Case No: HC11C01177 and HC11C01178

Between:
HTC Corporation
Claimant
and
Gemalto S.A.
Defendant
and between:
HTC Corporation
Claimant
and
Gemalto N.V.
Defendant

Michael Tappin QC and Ben Longstaff (instructed by Powell Gilbert LLP) for the Claimant

James Mellor QC, Guy BurkillQC and Miles Copeland (instructed by S. J. Berwin LLP) for the Defendant

Hearing dates: 24th, 25th, 26th, 29th, 30th April, 1st, 2nd, 3rd, 8th, 9th, 10th May

Mr Justice Birss

Topic

Paragraphs

Introduction

1

865: The issues

4

865: Background

7

865: Witnesses

25

865: Person skilled in the art

34

865: Common general knowledge of the skilled addressee

37

865: The patent

51

865: Claim construction

57

(i) microcontroller

60

(ii) having a set of resource constraints

104

(v) claim 8

112

865: Priority

126

Priority – the law

127

Priority entitlement

130

Substantive priority

150

Priority — conclusions

195

865: Obviousness at the filing date

196

Skilled person and common general knowledge

206

Claim 1

207

Claim 8

214

Claims 15 and 18

221

865: Novelty at the priority date

223

The Caron article

227

Pasman

242

865: Obviousness at the priority date

246

Common general knowledge alone

266

The Caron article

283

Pasman

288

171 Application

289

865: Patentable subject matter

294

865: Infringement

303

Section 60(2) of the 1977 Act

334

The 9062 patent

344

9062: Background

347

9062: The witnesses

353

9062: The person skilled in the art

360

9062: Common general knowledge

361

9062: The patent

367

9062: Claim construction

376

9062: Novelty

390

9062: Obviousness

421

9062: Infringement

444

Conclusion

447

Introduction

1

This is a patent action concerning two patents, EP (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller") and EP (UK) 0 829 062 ("Smart Card Reader"). The patents belong to Gemalto (in fact the 865 patent belongs to Gemalto S.A. and the 9062 patent belongs to Gemalto N.V. but nothing turns on the distinction.) The proceedings began as actions for revocation of both patents by HTC. By counterclaim, Gemalto contends that the patents are infringed by certain HTC smart phones. The cases concerning the two patents are distinct but it was convenient to hear them together because they both involve the same general area of technology. The technology relates to what are sometimes called smart cards or chip cards.

2

For HTC the legal representation was the same throughout: Michael Tappin QC, leading Ben Longstaff instructed by Powell Gilbert. For Gemalto the legal team working on the '865 patent was James Mellor QC leading Miles Copeland instructed by S.J. Berwin whereas for the '9062 patent Gemalto were represented by Guy Burkill QC leading Miles Copeland instructed by S.J. Berwin.

3

This judgment concerns the issues of validity and infringement of both patents. HTC also relies on Gemalto's declaration to the European Telecommunications Standards Institute (ETSI) in relation to the grant of a so-called FRAND licence (a licence on Fair Reasonable And Non-Discriminatory terms) under the 865 patent and the 9062 patent as limiting any relief to a monetary sum equivalent to a FRAND royalty. That question was stayed by paragraph 5 of the order of Arnold J dated 31 st July 2012 pending judgment on the validity and infringement issues.

865

– The issues

4

The application for the 865 patent was filed on 22 nd October 1997 claiming priority from an application filed on 25 th October 1996. The claim to priority is disputed and is addressed below. The 865 patent was granted on 14 th August 2002.

5

Gemalto contends that claims 1, 3, 8, 9, 15 and 18 of the 865 patent are independently valid. All these claims save for claim 9 are alleged to be infringed by HTC's sales of the devices in issue. Part of the issue of infringement involves s60(2) of the 1977 Act. All the claims include the term "microcontroller" and a key argument is whether the HTC devices have microcontrollers at all.

6

In relation to validity, HTC contends that claims 1, 3, 8, 9, 15 and 18 are not entitled to the claimed priority date (October 1996) but only to the filing date (October 1997). Any claim which is only entitled to the filing date is alleged to be obvious over an intervening publication called Cyberflex. Any claim which is entitled to the priority date is said to lack novelty over two items of prior art, a paper by Caron and a paper by Pasman. Moreover any claim entitled to the priority date is said to be obvious. Four starting points for obviousness are relied on: common general knowledge alone, Caron, Pasman and a patent application called '171. HTC also contends that all claims are unpatentable subject matter contrary to s1 (2) of the 1977 Act (Art 52 EPC) since they are to computer programs as such. HTC had an insufficiency plea but it was not pursued.

865

Background

7

This action is concerned with programming computers. Computers have a number of elements: the central processing unit (CPU) which performs the computations, the memory and the input/output hardware to communicate with the outside world. Modern computers are implemented on silicon chips. A microprocessor chip is the chip which carries the CPU. In some systems the microprocessor chip may be connected by a system bus to other components such as memory chips and input/output devices to make a working computer. Other chips may have some memory and I/O devices on the same piece of silicon as the CPU. Inevitably, since space is limited, the amount of memory which can be fitted on the same chip as the CPU is limited. As technology has advanced, it has been possible to cram more and more circuitry onto a single piece of silicon. Thus the CPUs have become much more powerful over time and the amount of memory which can be made available has increased.

8

There are various different kinds of computer memory. Random Access Memory or RAM is a memory used by a computer to store intermediate results which can be accessed relatively quickly. The memory is volatile in that the contents are lost when power is removed. Read Only Memory or ROM is a type of memory which generally cannot be modified and is used to store programs or data what are not intended to change after manufacture. ROM is non-volatile, i.e. it retains data even when the power is off. Variants on ROM are PROM, EPROM and EEPROM. PROM is Programmable ROM, a form of non-volatile memory in which the contents are set by a user but once set cannot be changed. EPROM is Erasable Programmable ROM, one example of which was a form of PROM in which the data could all be erased in one go using ultraviolet light. EEPROM is Electrically Erasable PROM, a non-volatile memory which can be erased and reprogrammed repeatedly, albeit much more slowly than RAM. Although the letters in the term ROM originally meant "read only", the term ROM as it is used in EEPROM is really referring to the non-volatile nature of the memory. FLASH memory is a kind of EEPROM.

9

Many processors also have registers. These are a limited number of volatile memory slots within the CPU itself offering very fast temporary storage for values being processed. They are really part of the CPU itself.

10

Another kind of memory arising in this case is cache memory. Cache is used in computer architecture to reduce the access time for reading and/or writing data. The principle works by placing into the cache memory a temporary copy of some of the data from the system's main memory, that is the data which is currently being processed. The data can be the instructions to be performed or data to be manipulated. The data in cache is never unique because it is only ever a copy of data already in other memory in the system. Cache memories are faster and generally more costly than other kinds. They are located physically close to the CPU to speed up access times.

11

A distinction which arises in this case is between general purpose computers, such as a desktop or laptop computer, and embedded systems, such as the dedicated computer which controls a washing machine. Both contain computer chips. Often in an embedded system there will be a single silicon chip which carries the CPU and all the memory and other functional elements necessary. By contrast a desktop or laptop computer will usually have a processor chip and separate memory chips and other things.

12

The claims refer to a "microcontroller". There is no doubt a microcontroller is a kind of computer but beyond that the parties did not agree what the word meant and I will address that in the section on construction.

13

Computers are programmable. Each computer has an instruction set, a predefined set of instructions which the processor understands and can execute. Once given a program containing such instructions, the computer can perform the instructions sequentially. Typically the instructions are of one of three types. An instruction can be to perform an operation on a value, to access memory to store or retrieve information or instructions, or to jump to another location in the program if required to do so. The values the instruction is to operate upon are called operands. In the instruction " add A to B", A and B are the operands.

14

The instruction set of any processor is defined in binary code, and programs expressed in this form are known as machine code (or native code). Instructions in machine code are represented by numbers or opcodes, with each instruction having a unique opcode. In order to...

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