Ipcom Gmbh & Company KG (A Company Incorporated Under the Laws of the Federal Republic of Germany) v (1) Vodafone Group Plc
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell,Mr Recorder Douglas Campbell |
| Judgment Date | 28 January 2020 |
| Neutral Citation | [2020] EWHC 132 (Pat) |
| Date | 28 January 2020 |
| Court | Chancery Division (Patents Court) |
| Docket Number | Claim Nos. HP-2018-000030 / HP-2018-000031 |
[2020] EWHC 132 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Recorder Douglas Campbell QC
(Sitting as a Judge of the Patents Court)
Claim Nos. HP-2018-000030 / HP-2018-000031
Dr. Brian Nicholson QC and Dr. Adam Gamsa (instructed by Bristows LLP) appeared for the Claimant.
Mr. Thomas Mitcheson QC and Dr. Stuart Baran (instructed by Hogan Lovells International LLP) appeared for the Defendants.
Hearing dates: 19–21, 27–28 November 2019
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.
RECORDER Douglas Campbell QC.
Mr Recorder Douglas Campbell QC:
Introduction
The Claimant (“IPCom”) is the proprietor of a portfolio of telecommunications patents which it acquired from Robert Bosch in 2007. This action concerns EP(UK) 2, 579, 666 B1 (‘666, or “the Patent”) which is entitled “Allocation of access rights for a telecommunications channel to subscriber stations of the telecommunications network”.
The Defendants are part of the same group of companies. Originally there was a plea of joint tortfeasance, but the parties have now agreed that this issue will be determined at a later date. I will refer to the Defendants simply as “Vodafone” without distinguishing between them.
The Patent is part of the same patent family as EP(UK) 1, 841, 268 (‘268, or as IPCom calls it, “100A”) which has been extensively litigated in the United Kingdom, and which has been found to be both valid and essential to the 3G (UMTS) mobile phone standard. For instance I was referred to 3 cases where ‘268 was considered: Nokia v IPCom [2011] EWHC 1470 (Pat), Floyd J; the unsuccessful appeal from that decision, Nokia v IPCom [2012] EWCA Civ 567; and IPCom v HTC [2015] EWHC 1034 (Pat), Birss J. These were all cases about 3G mobile handsets. The present action is about Vodafone's network infrastructure equipment for 4G.
The claim form was issued on 26 October 2018 and served on 22 February 2019, alleging infringement of ‘666 by Vodafone's 4G systems and also infringement of another patent, EP 2 378 735 (‘735), by Vodafone's 3G systems. On 20 March 2019 IPCom issued an application seeking expedition. The upshot of that application was that on 13 May 2019, Birss J ordered that the issue of infringement in relation to ‘666 should be heard as an expedited trial (“trial A”). That is the trial before me. The issue of infringement in relation to ‘735 will be heard later (“trial B”), then there will be a further trial on FRAND issues after that.
A key part of the reason for expediting the present trial was that the ‘666 patent will expire on 15 February 2020, and IPCom wanted a trial before then in order to obtain an injunction. However on 8 November 2019 Vodafone served an amended Product and Process Description (“PPD”) and also further evidence relating to their allegedly infringing network infrastructure. This was referred to in argument as the “fundamental redesign” and its details are said to be confidential. The significance is that, as IPCom accepts, acts done in relation to the fundamentally redesigned system do not infringe ‘666 when it is operating in 4G. IPCom nevertheless considers that acts done in relation to this system can potentially infringe ‘666 for other reasons, as well as infringing other patents.
It was against that background that on 13 November 2019 IPCom applied for its own expedited trial to be adjourned until after expiry of the patent, and for permission to amend its case so as to introduce new allegations of infringement, new patents, and a new claim to a post-expiry injunction. I refused that application on 18 November 2019, the first day of the trial window: see [2019] EWHC 3323 (Pat).
The Patent is also the subject of a pending EPO opposition. For instance the EPO opposition division gave its preliminary opinion on 17 January 2019, and an oral hearing took place in September 2019. In order to meet certain points made in the EPO preliminary opinion, IPCom filed an application on 20 May 2019 pursuant to s 75 of the Patents Act 1977 for unconditional amendment to the claims as granted. It did so in order for this Court to consider such claims, even though the EPO proceedings would not be completed before this trial. At the oral hearing in the EPO, IPCom then had to offer still further amendments to the Patent in order for it to be maintained by the EPO in amended form. IPCom subsequently filed a further application to amend pursuant to s75 on 10 October 2019 for the same reasons as before (ie so that this Court should consider such claims), but only in the event that its first application to amend failed. The first set of amended claims was referred to at trial as the “unconditionally amended claims”, and the second set was referred to as the “conditionally amended claims”.
IPCom has made it clear that it does not accept that any of these amendments are actually necessary, and that it intends to appeal the EPO Opposition Division decision once it receives the written reasons. IPCom also points out that whilst Vodafone has opposed both sets of amendments, Vodafone has not challenged the validity of each and every claim. For instance IPCom asserted the independent validity of unconditionally amended claims 5, 9 and 11 on 17 May 2019 and Vodafone served no evidence challenging them. This is probably because they were not alleged by IPCom to be infringed.
The upshot of the above is that the issues I have to decide are as follows:
a) Construction of the unconditionally amended claims.
b) Allowability of the unconditionally amended claims.
c) Construction of the conditionally amended claims.
d) Allowability of the conditionally amended claims.
e) Obviousness in the light of the prior art.
f) Essentiality of both sets of claims.
g) Vodafone's non-infringement arguments in relation to its real systems. This includes two less commonly run defences: one of Crown use pursuant to s 55 of the Patents Act 1977, and one that any infringement was de minimis.
h) Vodafone's counterclaim for declarations of non-infringement.
It will be seen that there were no material disputes as to either the identity of the skilled addressee or as to common general knowledge. This is probably because these matters were previously considered in the ‘268 cases and neither side sought to challenge the findings made therein.
The case has no shortage of abbreviations, some of which have commonly used synonyms. For instance 4G is the common name for LTE, 3G refers to UMTS, 2G refers to GSM, and 2.5G is used to refer to GSM/GPRS.
The witnesses
I heard oral evidence from one witness on each side, namely their respective experts. Dr Irvine appeared for IPCom and Mr Bishop appeared for Vodafone. Somewhat refreshingly, neither side directed any personal criticism at the witness for the opposite side. On the contrary, both sides accepted that both experts were personally doing their best to assist the Court. I agree. That said, Vodafone made several specific criticisms of the way in which Dr Irvine's evidence was given and IPCom criticised the way in which Mr Bishop had been instructed. I will therefore consider these criticisms.
Dr Irvine is a Reader in the Institute of Signal Processing at the Department of Electronic and Electrical Engineering at the University of Strathclyde. He has been a full time academic since 1994, but he has also worked on the design, configuration, and deployment of a private research 4G network on Orkney. Vodafone submitted as follows.
First, that Dr Irvine's own experience at the priority date was in resource management generally, and not in the grant of the particular access rights of the type with which the patent is concerned. I agree, but as Jacob LJ pointed out in Technip France SA's Patent [2004] RPC 46 the purpose of expert witnesses is to explain things, and for this purpose it does not matter whether they do or do not approximate to the skilled man. I found that Dr Irvine was good at explaining things.
Secondly, that Dr Irvine had “masses” of patent litigation experience generally, into double figures, and that he found it difficult to exclude his prior knowledge of the ‘268 patent in particular. I do not consider that anything turns on this. Vodafone did not show me any examples of any Court ever criticising Dr Irvine's evidence. Nor did Vodafone even tell me whether Dr Irvine was on the winning or losing side in any of these cases.
So far as his knowledge of the ‘268 patent was concerned, I can see why prior knowledge of a closely related patent might introduce an element of hindsight into the analysis of whether the ‘666 patent is obvious. However introducing hindsight would be more of a problem for a Defendant's witness (ie one relied upon in support of an attack on validity) than for a Claimant's witness. In any event I do not consider that Dr Irvine's evidence was tainted by hindsight.
Thirdly, Vodafone submitted that in his cross-examination, Dr Irvine appeared to be approaching his evidence on the basis that the uninventive skilled person would have a 2:2 degree. Vodafone submitted that this level was plainly too low and that Dr Irvine had thereby assessed inventive step by the wrong standard. Whilst this is not quite what Dr Irvine said, I agree that there is force in this criticism and I will therefore treat Dr Irvine's evidence on this topic with some caution.
Mr...
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