InterDigital Technology Corporation and Others v Lenovo Group Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Birss,Lord Justice Warby,Lady Justice Falk |
| Judgment Date | 19 January 2023 |
| Neutral Citation | [2023] EWCA Civ 34 |
| Docket Number | Case No: CA-2021-003431 |
| Court | Court of Appeal (Civil Division) |
[2023] EWCA Civ 34
Lord Justice Birss
Lord Justice Warby
and
Lady Justice Falk
Case No: CA-2021-003431
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
HHJ Hacon (sitting as a High Court Judge)
Case no. HP-2019-000032
Royal Courts of Justice
Strand, London, WC2A 2LL
Thomas Hinchliffe KC and Jeremy Heald, (instructed by Kirkland & Ellis International LLP) for the Appellants
Douglas Campbell KC and Joe Delaney (instructed by Gowling WLG) for the Respondents
Hearing dates: 14 & 15 December 2022
Approved Judgment
This judgment was handed down remotely at 10.30am on [date] by circulation to the parties or their representatives by e-mail and by release to the National Archives
(see eg https://www.bailii.org/ew/cases/EWCA/Civ/2022/1169.html).
This appeal relates to patent EP (UK) 2 485 558 entitled “Method and apparatus for providing and utilizing a non-contention-based channel in a wireless communications system” and claiming priority from January 2006. The patent belongs to the respondents (“InterDigital”), who contend it is essential to the 4G/LTE standard. The patent forms part of a portfolio of InterDigital patents said to be essential to various telecoms standards (so called Standard Essential Patents or SEPs). In the proceedings InterDigital contend that the appellants (“Lenovo”) infringe the patents and ought to take a FRAND licence under the portfolio. The overall dispute was managed into a series of technical trials dealing with individual patents and a separate FRAND trial to identify the licence terms. The validity and essentiality of this patent was addressed in the judgment of HHJ Hacon sitting as a judge of the Patents Court dated 29 July 2021 ( [2021] EWHC 2152 (Pat)) following a trial in March 2021. The trial was the first technical trial.
Lenovo argued that the patent was invalid on grounds of lack of novelty, obviousness, insufficiency and (in relation to a proposed claim amendment) added matter. Two items of prior art were relied on, a PCT Application published as WO 2004/016007 (“Laroia”) and a technical working document written by engineers from Samsung which was submitted in the standardisation process. It is T-Doc no. R2-052409 (“Samsung”). Laroia was relied on for lack of novelty and obviousness and Samsung for obviousness alone. InterDigital denied invalidity and argued that the patent was essential to the standard. The judge decided that the patent was essential and rejected all the various challenges to validity. The amendment would have added matter, but was not necessary. The only case pursued on appeal is obviousness over Samsung.
Permission to appeal was given by Arnold LJ, who remarked in doing so that although he was satisfied Lenovo's grounds had a real as opposed to fanciful prospect of success, nevertheless they faced an uphill task on this appeal.
The only (now) relevant claim of the patent is claim 1. Broken down into suitable integers, it is as follows:
[1A] A method implemented by a wireless transmit/receive unit, WTRU (120), the method comprising the steps of
[1B] receiving a first allocation from an evolved Node B, eNB (110), wherein the first allocation is an allocation of a non-contention based NCB uplink control channel,
[1C] the first allocation comprises a configuration for transmitting scheduling requests over the NCB uplink control channel, and the configuration indicates a periodicity allocated to the WTRU for transmitting scheduling requests on the NCB uplink control channel and indicates which sub-carrier resource of the NCB uplink control channel are to be used by the WTRU for transmitting the scheduling requests;
[1D] transmitting (710) a scheduling request over the NCB uplink control channel in accordance with the first allocation, wherein the transmitted scheduling request comprises a transmission burst, and presence of the transmission burst on NCB uplink channel resources assigned to the WTRU by the first allocation is indicative of a request for uplink transmission resources by the WTRU;
[1E] monitoring (710) a downlink control channel;
[1F] detecting (720) that a transmission on the downlink control channel is intended for the WTRU based on a WTRU identifier indicated in the transmission on the downlink control channel, wherein the transmission on the downlink control channel comprises a second allocation, the second allocation being an allocation of an uplink shared channel; and
[1G] transmitting (730) data over the uplink shared channel in accordance with the second allocation.
In the jargon of the claim, the term “ wireless transmit/receive unit WTRU” can be understood simply as a reference to a mobile telephone or, in the parlance of some telecoms standards, a “UE” (user equipment). A “ Node B” is the base station in the cell, and the word “ evolved” tells the skilled reader that this claim is referring to the 4G/LTE system. At the relevant time the telecoms standard which was in practical use was 3G/UMTS, while the focus of the standardisation effort was on devising the next generation standard: 4G/LTE.
A “ scheduling request” is a request by the mobile for resources on which to transmit data on the uplink to the base station. The terms “uplink” and “downlink” refer respectively to the transmissions from mobile to base station and vice versa.
A “ non-contention based NCB uplink control channel” is a channel used by the mobile to send control signals (rather than user data) to the base station. Such control channels can be contention based or non-contention based. With a contention based channel, each mobile in the cell can transmit a signal to the base station using the same resource as the other mobiles. (The resource can be time, frequency and/or code.) Thus two mobiles may clash with each other, and as a result the signal from one (or both) may not be received by the base station. When a clash happens the solution is for the mobile(s) to wait for a random period of time and then try and transmit again. Since the period is random, hopefully the two will not clash a second time. With a non-contention based channel each mobile has a dedicated resource allocated to it on which it can send a control message to the base station, thereby avoiding a clash. The non-contention based arrangement is all very well in the sense that it avoids clashes and therefore can be a faster way of getting a message to the base station from the mobile's point of view, but it is resource intensive.
The claim is to a method in which both the mobile and the base station play a part. The base station controls the resources on the air link, which the mobile needs to use to transmit data. Feature 1B is the first step, whereby the mobile receives information from the base station which tells the mobile what resources it has been allocated on the NCB uplink control channel. Feature 1C provides more detail about this, explaining (i) that resources on the NCB uplink control channel are to be used by the mobile for making scheduling requests and (ii) that the allocation tells the mobile what time slots (a “ periodicity”) and what radio frequency(ies) (which “ sub-carrier”) it can use to transmit the requests.
The second step is feature 1D. The premise is that the mobile wishes to transmit data on the uplink and so needs to ask for resources on which to do so. It makes a scheduling request “ in accordance with the first allocation”, in other words by transmitting using the time slot(s) and radio frequency(ies) allocated to it. The request “ comprises a transmission burst” and the “ presence” of that transmission burst on the NCB uplink control channel “ is indicative of a request for uplink transmission resources”. Thus it is the presence of the signal itself which indicates that a request is being made. As the judge held (paragraph 100), further information may be contained within the burst, such as the amount of data to be sent and the priority requirement, but that is optional (patent paragraph [0037]). As the judge also held in paragraph 100, it is not enough if the base station could interpret the presence of the burst as being indicative of a scheduling request, the claim requires that the base station actually does interpret the burst in that way. For reasons which come later, this is an important point.
Feature 1E is the next step. It provides that the mobile monitors a channel on which control signals may be sent from the base station to the mobile (a downlink control channel). Then at feature 1F, the mobile detects that a message on the downlink control channel is directed to it, because the message contains a “ WTRU identifier”. This message gives a mobile a second allocation of resources. This time the resources are on an “ uplink shared channel”, in other words a channel on which resources are shared out by the base station between different mobiles to allow them to transmit user data on the uplink to the base station. The final feature 1G involves the mobile actually sending the data on the uplink shared channel.
The relevant prior art on this appeal is the Samsung document. It was part of the working papers for a meeting of a working group dealing with part of the effort to create what became the 4G/LTE standard. This was the 10–14 October 2005 meeting of 3GPP TSG RAN Working Group 2. It is not in dispute that the document was published before the meeting and forms part of the state of the art.
Before going further one item of common general knowledge is notable. In these systems the normal way information of any kind is conveyed from transmitter to receiver is by encoding all the...
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Interdigital Technology Corporation v Lenovo Group Ltd
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