HTC Corporation v Nokia Corporation

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeThe Hon Mr Justice Arnold,Mr Justice Arnold
Judgment Date30 October 2013
Neutral Citation[2013] EWHC 3247 (Pat)
Docket NumberCase No: HC12A02048, HC12C02909
Date30 October 2013

[2013] EWHC 3247 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

The Hon Mr Justice Arnold

Case No: HC12A02048, HC12C02909

Between:
HTC Corporation
Claimant
and
Nokia Corporation
Defendant

Guy Burkill QC, Brian Nicholson and Alexander Milner (instructed by Hogan Lovells International LLP) for the Claimant

Michael Tappin QC, Nicholas Saunders and Miles Copeland (instructed by Bird & Bird LLP) for the Defendant

Approved Judgment without Confidential Annexes

Hearing dates: 7–11 October 2013

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 Arnold Mr Justice Arnold

Contents

Topic

Paragraphs

Introduction

1

The witnesses

2–8

Technical experts

2–5

Experts on US law

6–8

Technical background

9–48

Mobile telephone networks

10

Transceivers

11

Modulation

12–14

IQ modulators

15–16

Low-pass filters

17–18

Anti-aliasing filters

19

Transmit chain architecture

20–23

Filtering prior to modulation

24

Transistors

25–35

Current mirrors

36–38

Gilbert cells

39–44

Gilbert cells with current mirrors

45–48

The Patent

49–69

The claims

70–71

The person skilled in the art

72–73

Common general knowledge

74–75

Construction

76–86

Claims 1: general points

77

A modulator

78–81

A modulator using a Gilbert cell, the modulator comprising

82

A switching arrangement for coupling a carrier wave to the modulator

83

A driver arrangement to couple an information signal to the modulator

84

At least one low-pass filter arrangement located between the pair of transistors

85

To filter the information signal to the modulator before the information signal is mixed with the carrier wave

86

The prior art

87–112

Itakura

87–104

Tan

105–112

Novelty

113–119

Novelty of claim 1 over Itakura

114–118

Novelty of claim 6 over Itakura

119

Obviousness

120–136

The law

120–121

Obviousness of claim 1

122–135

Obviousness of claims 6 and 7

136

Infringement

137–147

HTC's licence defence

148–188

Summary of conclusions

189

Annex 1

Confidential Annex 2

Confidential Annex 3

Introduction

1

The Defendant ("Nokia") contends that the Claimant ("HTC") has infringed European Patent (UK) No. 0 998 024 entitled "Modulator structure for a transmitter and a mobile station" ("the Patent"). HTC denies infringement both on the ground that the accused products do not fall within the claims and on the ground that they are licensed. As explained below, discussion of the non-infringement defences is complicated by confidentiality considerations. HTC also contends that the Patent is invalid on the grounds that the claims lack novelty or are obvious over US Patent No. 5,469,092 ("Itakura"), alternatively are obvious over International Patent Application No. WO 97/42554 ("Tan"). There is no challenge to the Patent's claimed priority date of 30 October 1998.

The witnesses

Technical experts

2

Nokia's technical expert was Professor Bram Nauta. Prof Nauta is head of the Integrated Circuit (IC) Design group at the University of Twente in the Netherlands. Prof Nauta obtained an MSc in Electrical Engineering from the University of Twente in 1987 and a PhD in analogue CMOS filters for very high frequencies from the same university in 1991. From 1991 until 1998 he worked in the Mixed-Signal Circuits and Systems Department at Philips Research. In 1998 he took up his current position. He has sat on the editorial board of two Institute of Electrical and Electronic Engineers publications, is a member of two Technical Program Committees for industry conferences and has twice won an outstanding paper award.

3

Despite the handicap of giving evidence in English which was good but not perfect, Prof Nauta was an impressive witness. He had complete command of the subject matter and was able to explain and support what he had written in his reports with very few qualifications. Counsel for HTC relied on the fact that it turned out that Prof Nauta had no personal experience of working on Gilbert cell modulators in 1998. As Prof Nauta made clear, however, he was familiar with such circuits and did have experience of high speed circuits generally.

4

HTC's technical expert was James Crawford. Mr Crawford has been an independent technical consultant in the field of radio frequency (RF) systems design and frequency synthesis since 1990. He obtained a BSc in Electrical Engineering from the University of Nebraska in 1976 and an MSc in Quantum Electronics from the University of Southern California in 1979. He worked for Hughes Aircraft Company until 1985 and then a number of small, high-tech start-up companies before becoming an independent consultant. His experience since includes working as the lead RF systems architect for both a 900 MHz specialised mobile radio handheld product and 450 MHz commercial mobile phone in 1994–96 and as the RFIC system architect for a cellular telephone chipset in 1998. Nevertheless, it turned out that he had not worked on an RFIC modulator until 2005. Thus, like Prof Nauta, he did not correspond precisely to the skilled person; but, like Prof Nauta, he was nevertheless well qualified to give evidence in this case.

5

Mr Crawford did his best to assist the court in his oral evidence. Nevertheless, I found him a much less impressive witness than Prof Nauta. He was forced to retract certain points he had made in earlier reports in his seventh report, and to make further significant qualifications to his reports in cross-examination. Even where he did not retract or qualify his evidence, he was less able convincingly to support what he had written. Furthermore, it became apparent that he had been instructed in a manner which was calculated to induce hindsight. Initially he was provided with the Patent and some prior art. To begin with, he focussed on the Patent and wrote a critique of it which he accepted accentuated the negative over the positive. Only subsequently did he focus on the prior art, but even then he understood from his instructions that he was only to consider parts of Itakura. As a result, he only considered the document as a whole a couple of weeks before trial. This also led him to make an unedifying attempt during cross-examination to support his evidence by repeated references to Fig. 21 of Itakura, when no previous mention had been made of it by anyone (and it was not relied upon by counsel for HTC in closing submissions either).

Experts on US law

6

Nokia's expert on US law was Professor Timothy Holbrook. Prof Holbrook is Associate Dean of Faculty and Professor of Law at Emory University School of Law in Atlanta, Georgia. Prof Holbrook obtained his law degree in 1996 from Yale and then became a law clerk for the Hon. Glenn Archer at the US Court of Appeals for the Federal Circuit. He practised as a patent litigation attorney until 2000 before embarking on his academic career. His teaching focuses on intellectual property and in particular patent law. He has published extensively on matters of patent law, including in matters of the territorial reach of US patent law, and his publications have been cited favourably by the Federal Circuit and several federal district courts.

7

HTC's expert on US law was Professor Jason Schultz. Prof Schultz is Associate Professor of Clinical Law and Director of the Technology Law & Policy Clinic at New York University School of Law. Prof Schultz obtained a BA in Public Policy in 1993 and his law degree in 2000. He was an IP litigation associate for a firm in California for two years before becoming a staff attorney at the Electronic Frontier Foundation for four years. He then became an Assistant Clinical Professor of Law at the University of California, Berkeley before moving this summer to New York University.

8

Sensibly, the reports were served sequentially, with Prof Schultz's first report being served first. Equally sensibly, at my suggestion, the parties agreed to dispense with cross-examination of the experts.

Technical background

9

There is a considerable amount of technical background to this case which is set out in the reports of Mr Crawford and Prof Nauta. Much of this technical background is not only common ground, but is also quite detailed and not essential to an understanding of the issues between the parties. Accordingly, I shall concentrate on those aspects of the technical background which are directly relevant to the issues.

Mobile telephone networks

10

The invention described and claimed in the Patent is not limited to mobile telephone networks, but it is of particular application in such networks. The Patent refers to three mobile network standards: GSM (Global System for Mobile Communications), PCN (Personal Communication Network) and PCS (Personal Communication System). These are all digital networks in which the information to be transmitted is digital data. GSM and PCN are standards for second generation (2G) cellular networks. These supported multiple simultaneous users by dividing the radio frequency space into narrow frequency channels (Frequency Division Multiple Access or FDMA) and time slots (Time Division Multiple Access or TDMA). 2G mobile phones were commercially available in October 1998. At that time, work was underway on the third generation (3G) standard UMTS (Universal Mobile Telecommunications System), which supported multiple users by a code channel scheme called Wideband Code Division Multiple Access or WCDMA,...

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