IPCOM GMBH & Company KG v HTC Europe Company Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Kitchin,Lord Justice Longmore |
| Judgment Date | 28 February 2017 |
| Neutral Citation | [2017] EWCA Civ 90 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3 2015 1954 |
| Date | 28 February 2017 |
[2017] EWCA Civ 90
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
The Hon Mr Justice Birss
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Longmore
Lord Justice Kitchin
and
Lord Justice Floyd
Case No: A3 2015 1954
Iain Purvis QC and Brian Nicholson (instructed by Bristows LLP) for the Appellant
Adrian Speck QC and James Abrahams QC (instructed by Hogan Lovells International LLP) for the Respondents
Hearing dates: 24–26 January 2017
IPCom appeals, with the permission of the judge, from the decision of Birss J dated 24 April 2015 finding that European Patent (UK) 1 841 268 ("the patent" or "the patent in suit") was valid (in an amended form) but not infringed by the respondents' (collectively "HTC's") mobile phones. The appeal raises some short points on construction and infringement. In addition, HTC contend that, if IPCom's construction were to be accepted, then the patent would be invalid for disclosing added matter, and the amendments to the claim which the judge allowed should have been rejected on discretionary grounds.
The patent was granted on 17 March 2010. The application for the patent was divided out of the application for European Patent 1 186 189 ("the parent patent"). Proceedings in relation to the parent patent between Nokia and IPCom came before me at first instance in late 2009 and resulted in the parent patent being revoked (see [2009] EWHC 3482 (Pat)). That judgment was subsequently upheld in this court (see [2011] EWCA Civ 6), and an attempt by IPCom to limit the claims was rejected as being made too late. By then, however the (divisional) patent in suit had been granted. The patent in suit came before me, again in a trial between Nokia and IPCom, in April 2011. I held that the patent was valid in an amended form, and infringed by certain of Nokia's UMTS phones, but not others (see [2011] EWHC 1470 (Pat)). An appeal against that judgment was subsequently dismissed by this court ( [2012] EWCA Civ 567). The patent was, however, also the subject of opposition proceedings in the EPO. By a decision dated 18 May 2012 the Opposition Division ("OD") held that the patent as granted was invalid on the ground of added matter, and revoked it. On 7 March 2013 the Technical Board of Appeal ("TBA") found that a proposed amended claim (an "auxiliary request" in EPO-speak) overcame the objection of added matter and remitted the case back to the OD to determine the remaining issues in the opposition (see decision T1282/12). Subsequently the OD upheld the validity of the patent with the claim in the form approved by the TBA. The case is now pending before the TBA again, notwithstanding that it is now some three years since the decision at first instance. We were told that a date for the oral proceedings has not yet been set.
The present proceedings began on 16 April 2012, but in August 2012 the trial was stayed pending the appeal in the EPO from the OD's decision of 18 May 2012. Following the decision of the TBA of 7 March 2013, preparations for trial recommenced. The trial came before Birss J over three days in March 2015. IPCom applied in the proceedings to amend the principal claim of the patent to bring it into line with that approved by the TBA. As the judge explained, because of the suspensive effect of appeals in the EPO, as far as the EPO is concerned, the patent remained in its form as granted. The claim amendments approved by the TBA have not yet taken effect.
Neither side disputes the findings or reasoning in the prior decisions concerning the patent in this jurisdiction. The issues before the judge and on this appeal arise exclusively from the changes to the granted claim brought about by the amendments which IPCom seeks to make. HTC contend that the effect of the amendments is to prevent the HTC mobiles from being an infringement of the patent and that the patent is no longer essential to the UMTS standard (a concept which I explain below). IPCom contends to the contrary.
The language of the patent
The patent was published in German. The requirement, formerly imposed by section 77(6) of the Patents Act 1977, that a European Patent (UK) published in French or German was not to have effect in the UK unless a translation of the specification into English had been filed at the Patent Office and the prescribed fee paid, ceased to have effect on the coming into force of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents ("the London Agreement"), that is to say on 1 May 2008. Accordingly, no translation of the patent into English needed to be filed at the Patent Office, and none was in fact filed.
Under section 80 of the Patents Act 1977, the authentic text of the patent is German. The amendments to the claims which Birss J allowed are in English. The parties are therefore agreed that the authentic specification of the patent is in German, but it has a set of English claims. We are told that the English claims are on the file at the Patent Office.
If the patent survives the opposition proceedings, the claims in German will take effect as the authentic text. If, on their proper interpretation in German they are narrower in scope than the English claims as amended, I would have thought that it would be the narrower claim which would have to be used for determining infringement. We did not hear detailed argument on this point. Rather it was assumed that this would be the position, and I will therefore assume it for the purposes of deciding this appeal.
Technical background
The UMTS mobile telecommunications standard is the background to a number of the issues in the case, not least because the claim of the patent is to a mobile " for operation in a UMTS mobile radio network". In cases concerned with such standards it is common for patentees to take a short cut to establishing infringement by apparatus which complies with the standard. Thus, they assert that the published requirements of the standard necessarily involve infringement of the patent. In the jargon, the patent is said to be "essential to the standard". If the patentee can establish that the patent is essential to the standard, it will follow that mobiles which claim to comply with the standard will, on the face of it, infringe. For that reason, in the present case, IPCom not only allege infringement, but also seek a declaration of essentiality. It also follows that the issues of infringement considered by the judge and to be considered on this appeal can be considered by reference to the UMTS standard.
The invention the subject of the patent is concerned with how one controls access by mobile telephones in a UMTS network to a random access radio channel ("RACH") between the mobile and the base station. In periods of heavy demand, there is a danger of collision between users' signals, allowing stronger signals through the channel at the expense of weaker ones. The problem is referred to as contention – or competition – between signals. The unsuccessful mobile can of course re-send its signal, but that would add to the congestion on the channel and possible overloading. One way in which the problem of contention is tackled is by restricting access by certain mobiles to the channel. A well-known means of restricting access involves a form of random number lottery. Each mobile generates for itself a random number and compares it with a value sent by the network. The mobile will be able to gain access if its random number is greater than or equal to the value sent by the network. The network can use its choice of this value to restrict or increase the percentage of mobiles which are able to gain access to the RACH. In this way a proportion of the mobiles are prevented from sending signals, thereby reducing the chances of contention between signals on the RACH.
Mobile networks can also assign each mobile to a particular access class which is embedded into the SIM card on the mobile. This provides the network with the capability to control what particular classes of mobile are able to do, including whether they can obtain access to the RACH.
The patent is also concerned with how the crucial elements of digital information necessary to control access to the RACH are sent over the network from the base station to the mobile. Engineers use the terms "logical channel" and "physical channel". To make system design easier, the different streams of communication to and from the terminal are considered to form different channels, where each channel has a different function. These channels are "logical" or "virtual" because they are simply distinct categorisations which the system makes of different parts of the data for management purposes. Physical channels are the channels which actually carry the data. A single physical channel may carry several logical channels by multiplexing.
The information necessary to control access to the RACH in UMTS is sent over the Broadcast Control Channel or BCCH. The BCCH is a one-way channel used by the network to send management information to the mobiles for a variety of purposes. The BCCH is a logical channel, not a physical channel.
Normally understood, a bit is a single binary digit. The skilled person would know that one needs a set of predefined rules to enable the relevant bits to be identified in a collection of bits. When more than one item of information is to be transmitted, the system needs to know how to identify what data represents which item of information. The judge explained two approaches to this question at paragraphs 25 and 26:
"25. One approach is to use...
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...RPC 207 and AP Racing Ltd v Alcon Components Ltd [2014] RPC 27. 331 Varian also rely on the recent judgment of the Court of Appeal in in IPCom v HTC [2017] EWCA Civ 90 at paragraphs 116–117 to the effect that if the claims are construed broadly because of the broad teaching which the skille......