IPCom GmbH & Company KG v HTC Europe Company Ltd and Others Nokia Corporation (Opponent to Amendment Application)
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss,Mr Justice Birss |
| Judgment Date | 24 April 2015 |
| Neutral Citation | [2015] EWHC 1034 (Pat) |
| Docket Number | Case No: HP 2011 000001 |
| Date | 24 April 2015 |
| Court | Chancery Division (Patents Court) |
[2015] EWHC 1034 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Birss
Case No: HP 2011 000001
HC 11 C 02064
and
Iain Purvis QC and Brian Nicholson (instructed by Bristows) for the Claimant
Adrian Speck QC and James Abrahams (instructed by Hogan Lovells) for the Defendants
Nokia did not appear and were not represented
Hearing dates: 10th, 11th, 13th March 2015
Approved Judgment
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.
| Topic | Paragraph |
| Introduction | 1 |
| The issues | 8 |
| The witnesses | 14 |
| The skilled addressee or team | 21 |
| Common general knowledge | 22 |
| The patent | 30 |
| The language of the specification and the claims | 43 |
| Construction – the law | 47 |
| Construction – points not in dispute | 51 |
| Construction and infringement – the issues | 52 |
| "as a bit pattern" | 60 |
| "the access class bit" | 98 |
| Infringement by classes B — G | 116 |
| Essentiality | 121 |
| Added matter | 122 |
| Allowability of the amendment | 128 |
| Clarity | 128 |
| Discretion | 130 |
| Conclusion | 133 |
| Annex 1 What took place before the EPO on 7 th March 2013 | |
| Annex 2 Other decisions – Germany and Italy | |
| Annex 3 Diagrams X5 and X6 |
Introduction
This action relates to European Patent (UK) 1 841 268 ("Access of a mobile station to a random access channel in dependence of its user class"). The patent claims priority from a German filing on 8 th March 1999. It is a divisional. The patent was granted on 17 th March 2010. Originally part of the portfolio of Robert Bosch GmbH, today the patent belongs to IPCom.
The defendants can be referred to together as HTC. HTC manufacture and sell telecommunications equipment, including mobile phones. IPCom contends that the patent is essential to the relevant UMTS mobile telecommunications standard and is infringed by certain HTC mobile phones (the phones in class A). If these phones do infringe then it is also agreed that the patent is essential to the UMTS standard. HTC deny infringement. HTC also seek a declaration of non-infringement relating to other types of phone (classes B to G). HTC contend that if the claim is to be construed in such a way that the class A phones infringe then the claim must be invalid for added matter. There are also points on amendment.
The background to this dispute is lengthy and complicated. The subject matter of this patent was first litigated in the UK in an action between Nokia and IPCom about the parent patent (EP 1 186 189). That trial was heard in late 2009 and came before Floyd J (as he then was). He revoked the parent patent ( [2009] EWHC 3482 (Pat)). That judgment was upheld on appeal ( [2011] EWCA Civ 6). However that was not the end of the matter because by then this divisional patent had been granted. It came before Floyd J, again in a trial between Nokia and IPCom, in April 2011. He held the patent was valid in an amended form and was infringed: [2011] EWHC 1470 (Pat) (and see [2011] EWHC 1871 (Pat) on essentiality). That judgment was upheld on appeal on 10 th May 2012 ( [2012] EWCA Civ 567). However that was not the end of the matter either because the patent is also subject to opposition proceedings in the EPO. In a decision dated 18 th May 2012 the Opposition Division of the EPO decided that the patent in its form as granted was invalid for added matter (Art 123(2) EPC) and revoked it. A proposed amendment was refused because it would extend the scope (Art 123(3) EPC). On 7 th March 2013 the EPO Technical Board of Appeal heard the appeal from the Opposition Division. That was not the end of the matter. In the course of the hearing itself IPCom filed a new "main request" (in other words it amended the claim). The Board of Appeal decided (decision T 1282/12) that the new main request satisfied Arts 123(2) and 123(3) and remitted the case back to the first instance for the Opposition Division to further examine the new claim. The Opposition Division has now upheld the validity of the patent with the claim in the form of the main request and the case is now pending again before the Board of Appeal.
Meanwhile these proceedings began on 16 th April 2012. The overall dispute involves FRAND questions and technical questions. In August 2012 this trial (the technical trial) was stayed pending the appeal in the EPO from the Opposition Division's decision in May 2012. Directions were given for the FRAND dispute between HTC and IPCom to be tried along with what was then to be a FRAND trial between Nokia and IPCom. Following the March 2013 decision of the EPO Board of Appeal, in May 2013 the FRAND trial was vacated and the preparation for this technical trial recommenced. In November 2013 this technical trial was relisted to be heard in March 2015.
IPCom has applied to amend this patent (the EP (UK)) to put the claims in the same form as they were allowed by the EPO Board of Appeal. This bears some explanation.
Owing to the suspensive effect of appeals in the EPO (Art 106(1)) as far as the EPO is concerned the patent in fact remains in its form as granted but that is a temporary state of affairs. By taking the course it has in the EPO, IPCom has given up the granted claims. The only outcomes from the EPO which are now possible under EPO procedure are that the patent is allowed in an amended form or revoked. Whichever course the EPO process takes will have a corresponding effect in the UK. However until the EPO process is complete, as I have said, as far as the EPO is concerned the patent has not been amended as compared to its granted state. Thus in order for this dispute to be decided on the basis of the claims actually live before the EPO and which IPCom wants, the patentee has applied to amend.
Neither side disputes the detailed reasoning of Floyd J or the Court of Appeal in the judgments concerning this patent. Thus although at one stage HTC challenged the validity of the patent on a wider range of grounds, before me the only issues which arise are consequential on the changes to the granted claim brought about by the amendment IPCom seeks to make.
The issues
As granted the patent had two claims but there is no need to focus on claim 2. Claim 1 as granted, translated into English and broken down as it was considered by Floyd J, is in this form:
Mobile station for operation in a UMTS mobile radio network
in which multiple user classes are distinguished
characterised in that the mobile station is arranged
to read a user class from a SIM card
to receive access threshold value bits and access class information over a broadcast control channel
to determine an access threshold value from the access threshold value bits
to use the access class information relevant for the user class to determine whether
the mobile station is permitted to access a random access channel, for example RACH, independent of the received access threshold value bits
or whether the access permission for the random access channel, for example RACH, is determined on the basis of an evaluation of the access threshold value.
Floyd J directed that the claim should be amended so as to insert the words " by comparison of the access threshold value with a random number or pseudo random number" at the end of the claim (see judgment paragraph 153 and see the form set out by the Court of Appeal at judgment paragraph 44). That is the form of the claim in the UK designation of the patent today.
IPCom's application is to amend the patent so that it has a single claim the form of which can be seen as follows:
Mobile station (5, 10, 15, 20) for operation in a UMTS mobile radio network in which multiple user classes (35, 40) are distinguished, in which information signals with access authorization data are transmitted to the mobile station, wherein the access authorization data are transmitted as a bit pattern, characterised in that the mobile station (5, 10, 15, 20) is arranged:
— to read a user class (35, 40) from a SIM card (75),
— to receive the access authorization data, which have access threshold value bits (S3, S2, Sl, S0) and access class information bits (Z0, Z1, Z2, Z3) over a broadcast control channel (25)
— to determine an access threshold value (S) from the access threshold value bits (S3, S2, S1, S0), if the access authorization for the random access channel is determined on the basis of an access threshold value evaluation
— to use by means of the access class information bit (Z0, Z1, Z2, Z3) relevant for the user class (35, 40) to determine whether the mobile station (5, 10, 15, 20) is permitted to access a random access channel, for example RACH, independent of the received access threshold value bits (S3, S2, S1, S0), or whether the access permission authorization for the random access channel, for example RACH, is to be determined on the basis of an evaluation of the access threshold value, and is arranged to compare by comparison of the access threshold value (S) with a random number or pseudo random number (R) as the access threshold value evaluation, and is arranged to access the random access channel dependent on the determination using the access class bit, either independent of the received access threshold value bits (S3, S2 S1, S0) or dependent on the result of the comparison.
This is the same as the form of the main request accepted by the Board of Appeal in its decision. The underlining and striking out depict...
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