HTC Corporation v Gemalto S.A.
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 10 July 2013 |
| Neutral Citation | [2013] EWHC 1876 (Pat) |
| Docket Number | Case No: HC11C01177 and HC11C01178 |
| Court | Chancery Division (Patents Court) |
| Date | 10 July 2013 |
[2013] EWHC 1876 (Pat)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Justice Birss
Case No: HC11C01177 and HC11C01178
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
| 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
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.
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.
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.
– The issues
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.
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.
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.
Background
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.
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.
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.
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.
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.
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.
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.
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...
To continue reading
Request your trial
-
Actavis Group PTC EHF (a company incorporated under the laws of the state of Iceland) v ICOS Corporation (a company incorporated under the laws of the state of Washington, USA); Actelion Pharmaceuticals Ltd (a company incorporated under the laws of the st
...claim 19 can be treated as two distinct claims depending on its dependencies in the same way as I treated a claim in HTC v Gemalto [2013] EWHC 1876 (Pat), paragraph 121. As a distinct issue, the claimants contend claim 19 is not entitled to priority in any event, irrespective of claim depen......
-
Koninklijke Philips Electronics N.v v Nintendo of Europe GmbH
...or may not place on his evidence. Patent cases are necessarily conducted ex post facto and I refer to what I said in HTC v Gemalto [2013] EWHC 1876 (Pat) at paragraphs 271–275. 27 Philips submitted that "the technical background section was developed with the patent in mind" as if this was ......
-
Idenix Pharmaceuticals, Inc. v Gilead Sciences, Inc. and Others
...substantive rights of that person, and not his compliance with legal formalities, that matter." 330 In HTC Corporation v Gemalto SA [2013] EWHC 1876 (Pat), [2014] RPC 9 at [134] Birss J expressed his agreement with the proposition that it was sufficient if the relevant person had acquired t......
-
Idenix Pharmaceuticals Inc. v Gilead Sciences Inc. and Others
...FSR 31 (at [50] to [54] and [69] to [71]) and secondly, to the decision of Birss J in HTC Corporation v Gemalto SA and Gemalto NV [2013] EWHC 1876 (Pat), [2014] RPC 9 at [134]. He then stated (at [419]) that he was not persuaded that his own decision in KCI was wrong. 264 The critical part ......