IPCom GmbH & Company KG v Vodafone Group Plc
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Asplin LJ,Lewison LJ |
| Judgment Date | 19 February 2021 |
| Neutral Citation | [2021] EWCA Civ 205 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case Nos: A3/2020/0910, 0991 |
| Date | 19 February 2021 |
[2021] EWCA Civ 205
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS, INTELLECTUAL PROPERTY LIST (ChD), PATENTS COURT
Mr Recorder Douglas Campbell QC
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Lewison
Lady Justice Asplin
and
Lord Justice Arnold
Case Nos: A3/2020/0910, 0991
and
Brian Nicholson QC and Adam Gamsa (instructed by Bristows LLP) for the Claimant
Thomas Mitcheson QC and Stuart Baran (instructed by Hogan Lovells International LLP) for the Defendants
Michael Silverleaf QC and Azeem Suterwalla (instructed by Government Legal Department) for the Intervener
Hearing dates: 26–28 January 2021
Approved Judgment
Contents
| Topic | Paragraphs |
| Introduction | 1–6 |
| The skilled person | 7 |
| Common general knowledge | 8–22 |
| The Patent | 23–42 |
| The conditionally amended claims | 43–46 |
| The inventive concept | 47–52 |
| Construction of the claims | 53–73 |
| Extension of protection | 74–80 |
| Essentiality and infringement | 81–119 |
| Crown use | 120–173 |
| De minimis | 174–185 |
| Obviousness | 186–205 |
| Form of declaration | 206–209 |
| Disposition | 210 |
Introduction
The Claimant (“IPCom”) is the proprietor of European Patent (UK) No. 2 579 666 entitled “Allocation of access rights for a telecommunications channel to subscriber stations of a telecommunications network” (“the Patent”). The Patent is among a portfolio of mobile phone patents which IPCom acquired from Robert Bosch GmbH. It is a divisional patent of which both the parent and another divisional have previously been litigated in this country. The Patent has a priority date of 8 March 1999, and it expired on 15 February 2020. IPCom contends that the Patent was essential to operating access control in accordance with an optional part of the LTE (4G) standard and that the Defendants (“Vodafone”) infringed the Patent prior to a re-design implemented by Vodafone shortly before trial. Vodafone contend that the Patent was invalid and dispute infringement.
The Patent is subject to pending opposition proceedings before the European Patent Office. As result of the EPO proceedings, IPCom made two applications to amend the claims of the Patent, the first unconditionally and the second conditionally. At trial the first set of amended claims was referred to as the “unconditionally amended claims” and the second set as the “conditionally amended claims”.
Mr Recorder Douglas Campbell QC sitting as a Judge of the High Court held, for the reasons given in his judgment dated 28 January 2020 [2020] EWHC 132 (Pat), that the unconditional amendments were impermissible on the ground of added matter, but that the conditionally amended claims were valid. He held that some of Vodafone's allegedly infringing acts infringed, but that others did not, in some cases having regard to his construction of the claims and in other cases because Vodafone had a defence of Crown use.
Both parties have appealed against the judge's consequential order dated 8 April 2020 with permission granted in part by the judge and in part by Floyd LJ. IPCom does not challenge the judge's conclusion that the unconditional amendments were impermissible, but does challenge the judge's construction of one of the conditionally amended claims which underpinned his conclusion of non-infringement in some cases and his conclusion that Vodafone had a defence of Crown use in others. Vodafone challenge the judge's construction of the conditionally amended claims which underpinned his findings of infringement, a finding of infringement by equivalents and his conclusion that the conditionally amended claims were valid. In addition, Vodafone contend that any infringement was de minimis. Finally, Vodafone challenge the form of a declaration as to essentiality which the judge made.
The Secretary of State for Defence (“SSD”) has intervened in IPCom's appeal with permission granted by Lewison LJ in order to challenge the judge's conclusion on Crown use, and in particular his interpretation of section 55(1) of the Patents Act 1977. Although the intervention is made by SSD because the Ministry of Defence is most likely to be affected by the judge's decision, counsel for SSD explained that other interested departments had been consulted and supported SSD's position.
Before proceeding further I would like to pay tribute both to the judge's careful judgment, which dealt concisely with a large number of issues, and to the high quality of the submissions we received on the appeal.
The skilled person
It is common ground that the Patent is addressed to an engineer (or a team of engineers) concerned with developing mobile phones for use in the UMTS (3G) mobile telecommunications standard, and in particular developing systems for the control of access to the random access channel (RACH). There is no dispute that the skilled person would be, as the judge put it, “very skilled indeed”, and in particular would know where to find relevant information in the various standards.
Common general knowledge
There was little dispute before the judge as to the skilled person's common general knowledge as at the priority date. I reproduce the judge's account in slightly abbreviated form below.
Contention on a shared channel
Where the uplink from a mobile station (such as a mobile phone) is a shared RACH, there is a danger of collision between users' signals, allowing stronger signals through and preventing weaker ones. This competition is called “contention”. It can be tackled in numerous ways. One set of ways in which the problem is tackled is by restricting access to the channel.
The “lottery”
One well known way of restricting access to the channel involves a form of lottery. “Lottery” is not a term of art, but is a convenient term to provide an analogy for what is done. Each mobile station generates for itself a random number and compares it with a value sent by the network. A “win” can be defined as generating a random number greater than or equal to the transmitted value. So, for example, the possible transmitted numbers could be 1 to 10, and the random numbers could be 1 to 9. If the base station transmits a 10, no mobile will get onto the channel, but if it transmits a lower number than 10 an increasing proportion of mobiles can get on. At busy times the access can be throttled back to prevent collision. At very low usage times the transmitted value could be 1, and all mobiles would get access.
Access classes
Systems in which certain classes of user (user classes or access classes) could be restricted from access were also well known. For example class barring, under which a mobile of a particular class would be barred from access absolutely, was a feature of the GSM/GPRS (2.5G) system. This is explained below.
Transmission capacity
Bandwidth is a scarce resource in any mobile telephone system. Designers of such systems try to arrange matters so as to minimise the amount of data that has to be sent routinely. One common general knowledge way of limiting the amount of data to be sent is the use of single bit flags, which alert the mobile to the fact that data is coming. This allows the network only to send the data when the flag is set.
Class barring in GSM/GPRS
Section 3.3.1.1.1 of GSM 04.08 specifies the method for determining whether the mobile in question is granted permission to access the network. It explains that each user is allocated to an access class. The allocated access class is stored on the SIM. There are 10 normal access classes, access classes 0 to 9. These are randomly allocated based on the last digit of the International Mobile Subscriber Identifier number (the “IMSI”), which is essentially a SIM Card identifier. There are approximately equal numbers of users in each of access classes 0 to 9. In addition, some special users are also allocated to additional special access classes 11 to 15. GSM 02.11 (now TS 100 921) defines the special access classes as being for the following high priority users:
i) access class 15 for PLMN staff (“PLMN” stands for Public Land Mobile Network and is just the network operator);
ii) access class 14 for the emergency services;
iii) access class 13 for public utilities (e.g. water/gas suppliers);
iv) access class 12 for the security services; and
v) access class 11 for PLMN use (for example, for test mobiles while setting up a cell).
Section 3.3.1.1.1 of GSM 04.08 states that the system can instruct mobiles in particular access classes not to make access attempts by sending a list of “authorised” access classes. This allows the load on the access channel to be varied between 100% and 0% in steps of roughly 10%. When the load on the access channel is controlled, some user classes will be able to access the system, whereas other user classes will be denied any access to the system. The system is referred to as “class barring”.
In GSM, class barring was a relatively crude concept: either everyone in a given class was barred, or nobody. If the class to which the mobile belonged was not barred, then the next step was to request network access.
Each access class was represented by a single bit (i.e. there were 15 in total, as well as an additional bit for access class 10 which is not relevant for these purposes). Even if the access class to which the...
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