Ipcom Gmbh & Company Kg v HTC Europe Company Ltd and Others Qualcomm Incorporated (Third Party Applicant) Intel Corporation and Another (Third Party Applicants)
| Jurisdiction | England & Wales |
| Judge | Mr Justice Roth |
| Judgment Date | 26 September 2013 |
| Neutral Citation | [2013] EWHC 2880 (Ch) |
| Docket Number | Case No: HC11C02064 |
| Court | Chancery Division |
| Date | 26 September 2013 |
And on the Application Filed Against the Parties By:
And on the Application Filed Against the Parties By:
[2013] EWHC 2880 (Ch)
Mr Justice Roth
Case No: HC11C02064
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Brian Nicholson (instructed by Bristows LLP) for the Claimant
Mr James Abrahams (instructed by Hogan Lovells International LLP) for the Defendants
Mr Robert Onslow (instructed by Linklaters LLP) for the Third Party Applicants, Intel Corp and Intel Mobile Communications GmbH
Mr Robert Onslow (instructed by Hogan Lovells International LLP) for the Third Party Applicant, Qualcomm Inc
Hearing dates: 12 13 June 2013
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.
Introduction
This is the latest skirmish in protracted and bitterly contested litigation concerning a patent used in mobile phones. The patent at issue is EP (UK) 1 841 1268 ("the Patent"), and is thus the UK designation of a European patent. It essentially concerns a means of controlling access to the Random Access Channel or RACH between mobile phones and a network base station.
The claimant ("IPCom") is the patentee. The three defendants, between whom for present purposes it is unnecessary to distinguish and to whom I shall refer compendiously as "HTC", are sued for infringement but counterclaim alleging that the Patent is invalid. They contend that in any event they are now using 'workarounds' or variants that do not involve infringement of the Patent.
This judgment addresses three contested applications before the court. HTC applied to have the trial of the so-called "technical issues" of invalidity, essentiality and infringement, adjourned until the final determination of proceedings to determine the validity of the European patent currently pending before the European Patent Office ("the EPO"). IPCom applied for an "unless" order to enforce directions given by Norris J on 25 September 2012 for inspection of parts of the source codes which enable or govern access to the RACH ("the Norris Order"). The source code relates to the modifications to the chips in the products which HTC contends have been made so as to avoid infringement. Those chips are supplied to HTC by the third party applicants ("Qualcomm" and "Intel") who are responsible for the software and the relevant source codes. Qualcomm and Intel have issued applications seeking to vary or discharge this provision in the Norris Order.
Since the trial of the technical issues was fixed to commence in a trial window commencing on 9 December, the applications were obviously urgent. I therefore announced at the conclusion of the argument that I would not adjourn the trial, and would not discharge the obligation on HTC to give inspection of the source codes but would vary the terms of the Norris Order so as to confine disclosure to a tightly drawn confidentiality ring. This judgment sets out my reasons for those decisions.
Background
To understand the basis of these applications, it is necessary to summarise the rather involved procedural history of the proceedings concerning the Patent. In doing so, I draw on my previous judgment in this case determining an earlier application for a stay, to which I shall have to return. As I there observed, the issues confronting the court result largely from the problem caused by the European patent regime that permits concurrent proceedings concerning validity or revocation of a patent before the EPO and national courts.
The Patent, in the form subject to the existing claim, was held to be valid by Floyd J in a judgment delivered on 16 June 2011 in proceedings brought by Nokia against IPCom: [2011] EWHC 1470 (Pat). In doing so, Floyd J rejected challenges to the validity of the Patent on grounds of novelty and obviousness. However, he granted a declaration of non-infringement regarding certain types of devices: see at [204]-[207] of his judgment. By subsequent decision on 8 July 2011, Floyd J declared (and this was not really in issue), that the Patent was essential to the Universal Mobile Telecommunications System ("UMTS") standard.
Floyd J's decision in the Nokia proceedings was upheld by the Court of Appeal on 10 May 2012, and the Supreme Court subsequently refused permission to appeal.
However, Nokia had advanced also 'non-technical' defences to IPCom's claim for an injunction, contending that it was entitled to a licence on the basis of competition law or alternatively the effect of acts and agreements made by Bosch prior to assignment of the Patent to IPCom. The trial of those non-technical defences had been stayed pending the technical trial. Because of those non-technical defences, Floyd J declined to grant an injunction following his determination of validity, but gave directions for further pleadings on the non-technical issues.
On 18 May 2012, the Nokia case came before me on an application by IPCom to strike out or obtain summary judgment dismissing Nokia's non-technical defences to IPCom's claim for an injunction. However, it was clear from the parties' submissions that, irrespective of those arguments, IPCom was prepared to grant a licence of the Patent to Nokia on FRAND terms and Nokia was prepared to take such a licence from IPCom. But Nokia and IPCom were not in agreement as to what the terms of such a licence should be, and the rate of royalty was of course also relevant to damages for past use.
Therefore, the course which the court adopted was to direct a trial to determine the FRAND terms and the question of damages to be held in the summer term of 2013 ("the FRAND trial"). There would be no injunction in the meantime. By adopting that course it was not necessary to explore the various other non-technical defences, whether on that summary judgment application or, if it had been dismissed, at a substantive trial.
The present proceedings were commenced by IPCom against HTC on 17 June 2011, the day after Floyd J delivered his judgment upholding the Patent in the Nokia case. HTC is of course not bound by the judgment in the Nokia case, and as I observed at the outset, it has similarly contended that the Patent is invalid. A trial which it was understood was confined to the issues of validity and infringement (the 'technical trial') was fixed to commence in February 2013.
HTC also raised 'non-technical' defences to the claim to an injunction, similar to those advanced by Nokia. However, IPCom made clear that, as with Nokia, it was prepared to grant a licence to HTC on FRAND terms. Following the hearing regarding the non-technical defences in the Nokia case, IPCom and HTC sensibly agreed that they too should proceed to a trial as to the FRAND terms for a licence to HTC and that this trial should also encompass the principles to be applied to any award of damages. As with Nokia, it was on that basis unnecessary to have a trial of the 'non-technical' issues.
In parallel with these developments in the English litigation, the underlying European patent was under opposition before the EPO. On 25 April 2012, the Opposition Division held that the Patent was invalid by reason of added matter. 1 As is customary, it therefore did not consider the other grounds of opposition. IPCom appealed to the EPO's Technical Board of Appeal (the "TBA").
In May 2012, I heard an application by HTC to stay the technical trial until the determination of the appeal to the TBA. In that hearing, HTC offered in support of its application an undertaking that it would thereafter in its current and future ranges use only one of the variants in respect of which Floyd J had issued a declaration of non-infringement in the Nokia case ("the approved variants"). Although there could be no guarantee that the TBA would expedite the hearing of the appeal, I agreed to write to the TBA requesting that it determine the appeal under its accelerated procedure and I granted the application for a stay. 2
Furthermore, notwithstanding the undertaking, IPCom expressed concern as to whether the devices supplied by HTC would indeed conform to the approved variants. Accordingly, while otherwise adjourning the technical trial, I ordered HTC to serve a product and process description ("PPD") pursuant to the Practice Direction to CPR Part 63, "so that IPCom will have a verified statement as to precisely what HTC say they are doing" (judgment at [38]). The order gave IPCom liberty to apply for specific disclosure on the basis that the PPD served is inadequate.
However, no adjournment was sought as regards a FRAND trial. The Patent at issue is of course the same as in the Nokia case and FRAND terms by definition are of general application. Since the FRAND trial in the Nokia case was due to be heard in July 2013, IPCom and HTC agreed that it was desirable for their FRAND trial to be heard together with the Nokia FRAND trial. Subsequently, an order was made in those terms.
HTC served PPDs pursuant to my order but IPCom did not regard them as adequate and applied for further disclosure. On 25 September 2012, Norris J, while refusing to grant the wide-ranging disclosure sought by IPCom, ordered disclosure of the relevant parts of the source codes for two of the devices used by HTC. It will be necessary to consider his reasons for doing so below. He also directed that the trial of the technical issues with a time estimate...
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