Interdigital Technology Corporation v Lenovo Group Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 29 July 2021 |
| Neutral Citation | [2021] EWHC 2152 (Pat) |
| Docket Number | Case No: HP-2019-000032 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 2152 (Pat)
HIS HONOUR JUDGE Hacon
(Sitting as a High Court Judge)
Case No: HP-2019-000032
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Douglas Campbell QC, Joe Delaney and Maxwell Keay (instructed by Gowling WLG) for the Claimants
Thomas Hinchliffe QC, Jeremy Heald and Kyra Nezami (instructed by Kirkland & Ellis International LLP) for the Defendants
Hearing dates: 3–5 and 8–12 March 2021
Approved Judgment
HIS HONOUR JUDGE Hacon
Introduction
This is the first in a series of trials concerning five patents. They claim inventions in the field of 3G and 4G telecommunications technology and all are asserted to be standard essential patents. A FRAND trial and further technical trials are due to follow.
The present trial concerns European Patent (UK) No. 2 485 558 (“the Patent”). The invention is entitled “Method and apparatus for providing and utilizing a non-contention based channel in a wireless communication system”. It has a priority date of 31 January 2006. There is no challenge to priority.
The First Claimant is the owner of the Patent. All the claimants are members of the same group of companies and since I need not distinguish them, I will refer to them collectively as “InterDigital”.
The defendants are all members of the Lenovo group of companies and I will call them “Lenovo”.
InterDigital and Lenovo have since November 2009 been in discussions regarding the licensing of the Patent, together with other patents in InterDigital's portfolio. Since June 2010 offers of a worldwide licence on what InterDigital claims to have been FRAND terms have been made. An offer has also been made by InterDigital to license the patent on alternative terms, the details of which do not matter here. So far the negotiations have come to nothing.
InterDigital alleges that Lenovo is not a willing FRAND licensee or alternatively will not commit to accepting the burden of the FRAND licence offered and that accordingly Lenovo cannot enforce InterDigital's FRAND obligations. InterDigital further claims that Lenovo has imported 4G devices into the United Kingdom and has marketed those devices here, thereby infringing the Patent.
Lenovo rejects the proposition that InterDigital's offers of a licence are FRAND. Lenovo admits the importation and marketing of the devices alleged to infringe the Patent but denies that they infringe and counterclaims for a declaration that the Patent is invalid.
The Amended Grounds of Invalidity allege that the Patent is invalid for lack of novelty, lack of inventive step and insufficiency. There is a pleaded allegation of added matter but it was not pursued at trial.
InterDigital has made an application to amend the Patent, the application being conditional upon a finding that the claims as granted are invalid. Lenovo resists the application on the grounds that the claims as proposed to be amended give rise to objections of lack of clarity, added matter and lack of support.
The witnesses
Each side provided an expert witness. InterDigital's witness was Dr Jonathan Moss. Dr Moss is a telecommunications engineer, consultant, and a trainer at the University of Oxford. He has 22 years of experience in the design and operation of mobile telecommunications networks. From 1998 to 2003 Dr Moss worked at BT Labs and other telecom companies as a 3G network optimisation engineer. During this period he was a member of a working group at 3GPP, the umbrella name for a number of standards organisations which develop protocols for mobile telecommunications. Dr Moss has taught courses in 3G and later 4G technologies. He has earlier experience of appearing in the Patents Court as an expert witness.
Lenovo's expert was Professor Matthew Valenti. He is Professor of Computer Science and Electrical Engineering at West Virginia University and Chair of the Department of Computer Science and Electrical Engineering. Prof Valenti has over 25 years' experience in telecommunications, with an emphasis on wireless and cellular networks. He has appeared before as an expert witness in patent disputes before the US courts, the US Patent and Trademark Office and the International Trade Commission in Washington.
I found both Dr Moss and Prof Valenti to be exemplary expert witnesses. They were very well informed on the technology, as one would expect, giving clear answers to the questions put to them where they felt able to do so.
There was unchallenged written evidence from Neil Wiffen on behalf of InterDigital. Mr Wiffen is a telecommunications consultant who explained details of transmissions from mobile phone base stations in the UK which by the time of the trial were no longer contested.
The skilled person
It was agreed between the parties that the skilled person is an engineer in the field of mobile telecommunications with 2–3 years' experience. The engineer would have worked with 3G mobiles and by the priority date in January 2006 would have been aware that 4G, LTE, was in the process of being developed and standardised. LTE is the system implementing the fourth generation of mobile telecommunications technology, discussed more fully below. He or she would have been aware that the relevant standardisation was being carried out by 3GPP. They would have known that one of the key standards to be agreed was that governing the signalling between a base station and mobiles. The experts agreed that the skilled person would have attended at least some of the 3GPP meetings on LTE standardisation and would have known about the four technical reports published by January 2006 and that their contents offered the best guide to the development of LTE up to that time.
There was a minor difference between the experts as to the degree of attendance at 3GPP working groups, but I do not believe that it matters. Dr Moss had a concern that attendees at such meetings are typically inventive. Assuming that is right, the skilled person is an artificial construct and so any inventive capacity that might be expected of a real person with experience of 3GPP meetings is excluded from the mental makeup of the skilled person.
Technical background and the common general knowledge
There was no dispute about the law on the common general knowledge. There was little disagreement about its contents. In this section of the judgment I set out some technical background all of which, by common consent, formed part of the common general knowledge at the priority date.
UE
User Equipment or UE is a term commonly used in the industry to cover all devices which exploit a mobile telecommunications system – mobile phones, tablets, laptops and so on. The Patent uses a term of its own: “wireless transmit/receive unit” or WTRU which is defined to be broader still than UE although the greater breadth of devices covered makes no difference to the issues in this case. In this judgment I will use the prior art term since it is the one mostly used in the evidence: UE.
Cells – uplink and downlink
UE networks are organised into cells. At the heart of each cell is a base station. Communications passing from the phone to the base station are called the uplink or UL, communications from base station to the phone are called the downlink or DL. The base station is also in communication with the wider network. The user of a UE is liable to move in proximity from one cell to another, so a UE is capable of transferring its uplink and downlink from one base station to another.
Standardisation of technology
Cellular networks for UEs set up in the 1980s, since when there have been continuous improvements to the technology. A feature of these advances has been the establishment of industry standards which allow compatibility between products from different manufacturers and which thereby promote freedom of competition between alternative providers of the products to consumers. The progress of the technology over time can be measured by reference to the successive generations of standards, from 1G of the 1980s to 5G now.
These standards must be decided internationally, although this does not always mean global standardisation. For instance, the Universal Mobile Telecommunications System, or UMTS, a 3G system, was adopted in Europe and elsewhere, whereas North America used an alternative 3G standard called cdma2000.
Of particular relevance to this litigation is the successor to UMTS, a 4G system known as “Long Term Evolution” or LTE.
Layers
A conceptual framework known as the “Open Systems Interconnection Model” or OSI Model has been developed to distinguish and describe the functions of a wireless network. According to this model signals between the nodes of a system – the component parts which transmit and receive signals, typically a base station and UEs – are divided into seven conceptual layers. I need only discuss the first three.
Layer 1 is known as the physical layer. The physical layer of a component deals with the transmission and reception of raw data bits.
Layer 2 is the data link layer or DLL. This packages data into manageable blocks and corrects errors that may have occurred at the...
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InterDigital Technology Corporation and Others v Lenovo Group Ltd and Others
...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 2 Lenovo argued that the patent was invalid on grounds of lack of n......
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Interdigital Technology Corporation and Others v Lenovo Group Ltd and Others
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