Mitsubishi Electric Corporation v Archos SA
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mellor |
| Judgment Date | 26 April 2021 |
| Neutral Citation | [2021] EWHC 1048 (Pat) |
| Date | 26 April 2021 |
| Docket Number | Case No: HP-2019-000014 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 1048 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY (ChD) PATENTS COURT
Royal Courts of Justice
Rolls Building, 7 Rolls Buildings
Fetter Lane
London EC4A 1NL
THE HON Mr Justice Mellor
Case No: HP-2019-000014
Adrian Speck QC and Michael Conway (instructed by Bird & Bird LLP) for the Claimants
Andrew Lykiardopoulos QC and Adam Gamsa (instructed by Taylor Wessing LLP) for the Fourth to Eighth Defendants
Andrew Lykiardopoulos QC and Isabel Jamal (instructed by Kirkland & Ellis International LLP) for the Ninth to Twelfth Defendants
Hearing dates: 9 th–12 th, 16 th–17 th March 2021
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.
THE HON Mr Justice Mellor
This judgment is organised as follows:
Introduction
| Topic | Page |
| Introduction | 3 |
| Summary of the issues | 4 |
| The Expert Witnesses | 4 |
| The Skilled Person or Team | 5 |
| Common General Knowledge | 5 |
| The Patent | 15 |
| The Claims | 22 |
| The proposed amendments | 22 |
| The alleged infringement | 24 |
| Claim Scope – relevant legal principles | 26 |
| The characterisation of the invention | 27 |
| The problem underlying the invention | 30 |
| The inventive concept | 30 |
| Claim scope – normal construction | 31 |
| length indicator | 31 |
| Analysis | 32 |
| Claim Scope — Equivalents | 35 |
| The Claimants' Application to Amend | 37 |
| The Prior Art | 38 |
| Conclusion | 39 |
This is my judgment following the first technical trial in these proceedings in which the Claimants seek to persuade the two sets of Defendants who remain to take licences of a pool of patents (‘the MCP Pool’) administered by the Second Claimant which are alleged to be essential to one or more telecoms standards. Originally the first technical trial was due to take place in December 2020 involving a different patent but that trial was settled and, as I understand it, the patent in question will play no further part in this action. This trial concerned EP 1,925,142 (EP142 or the Patent), of which the Second Claimant (Sisvel) is the registered proprietor. The First Claimant has no direct interest, although EP142 is part of the MCP Pool in which the First Claimant does have an interest.
EP142 is alleged to be essential to version 10.0.0 and all subsequent versions of TS36.322 of the 4 th generation 3GPP Long-Term Evolution (“LTE”) standard.
Summary of the issues
This case is about the signalling of structure in a digital signal. The digital signals in question are those created and received in 3G and 4G mobile telephone networks in level 2 of the OSI 7 layer model. The case turns on the meaning and scope of the term ‘length indicator’ in claim 1 of EP142.
Although the preferred embodiments in EP142 are written in the context of UMTS/3G, it is Sisvel's case, as mentioned above, that EP142 is essential to the LTE/4G standard. The Defendants deny essentiality, thereby denying infringement, but also run a series of squeeze arguments to the effect that if EP142 is essential to LTE, then EP142 is invalid on a variety of grounds.
Sisvel makes an unconditional application to amend by way of two requests – Request 1 and Request 2 – which Sisvel advances in the alternative. Sisvel says it makes the application to amend to forestall any argument that the claimed monopoly covers a regime that indicates only if a single SDU is a perfect fit, a point which I return to later.
EP142 is entitled ‘ Radio Link Control Unacknowledged Mode Header Optimization’ and has a priority date of 23 August 2005. As is often the case, the key to this action lies in assessing the scope of the claim at the correct level of generality and in the correct context. As is usual in patent cases, this judgment needs to set out a good deal of information in order to define the correct context for the claimed RLC UM header optimization, in the course of which the reader will have to pick up the numerous acronyms which encrust this art.
Mr Adrian Speck QC led Mr Michael Conway for Sisvel and Mr Andrew Lykiardopoulos QC led Mr Adam Gamsa for the Fourth to Eighth Defendants and Ms Isabel Jamal for the Ninth to Twelfth Defendants. I am grateful to Counsel and their solicitor teams for their assistance. The trial was heard as a fully remote trial on MS Teams, with electronic bundles on CaseLines, a convenient feature of which enables all participants to accept prompts to jump to a particular page, so that everyone looks at the correct passage in the bundle. The technology worked well.
The Expert Witnesses
Sisvel's expert witness was Dr Alastair Brydon and Mr Claude Royer was the expert called on behalf of the Defendants. Mr Royer gave his evidence from Canada, so certain of the trial days were set later to accommodate his time zone. In closing, such criticisms as were levelled at the experts were slight, perhaps because each side had extracted what they perceived they needed in cross-examination. Both experts gave their evidence in a straightforward and direct manner. There were times when each of them had a tendency to stick to the party line, slightly more so in the case of Mr Royer. However, none of this matters because of the nature of the issues in this case. I am very grateful to Dr Brydon and Mr Royer for their assistance. They were both good educators.
The Skilled Person or Team
The experts were agreed that the Patent would be of interest to a person or team working on the implementation of and/or development of telecommunications standards, with a focus on Layer 2 (the data link layer) including the RLC sub-layer. They also agreed that the person or team would be an engineer with typically a higher degree and/or several years' experience in industry.
There was, however, a mini-dispute as to the size and breadth of expertise of the Skilled Person or team, in particular as to their knowledge and/or experience with other wireless communications standards than UMTS. This dispute was concerned, as I understand it, primarily with the WiMAX prior art. It is not necessary for me to resolve that dispute since it does not affect anything I have to decide.
Common General Knowledge
At the PTR, I ordered the parties to produce a document setting out the agreed CGK together with a list of any CGK points in dispute. This they did and I am grateful for the work done on both sides to produce a very useful document.
What follows in paragraphs 14–65 below is the CGK as agreed between the parties, with some slight editing of my own. It includes references to some developments after the Priority Date (which were obviously not CGK) in order to illustrate the position as at August 2005. I add some further points of CGK at the end of this section.
Layers in wireless architecture
The architecture of wireless communications networks, including UMTS, is typically described as a “stack” of protocol “layers”. Each layer has a specific set of functions and each relies on other layers to perform its function.
The Open Systems Interconnection (“OSI”) model was developed by the International Standards Organisation. It describes the following seven layers that are typically present in a communications network in some form.
Figure 1: the OSI model showing the seven layers typically present in a communications network
| Layers |
| Layer 7 — Application |
| Layer 6 — Presentation |
| Layer 5 — Session |
| Layer 4 — Transport |
| Layer 3 — Network |
| Layer 2 — Data Link (RLC & MAC) |
| Layer 1 — Physical (PHY) |
Generally, the higher layers (5, 6 and 7) are primarily concerned with interacting with the user and implementing the applications that run over the network. The lower layers (1, 2, 3 and 4) are primarily concerned with the formatting, encoding and transmission of data over the network.
Further details of the functionality of layers 1, 2 and 3 are described in the context of UMTS below.
Packet based systems
In packet switching, there is no dedicated communication path between the sending and receiving device. Instead, data is broken down into packets and transmitted between network links that are shared by multiple competing communication sessions. Each packet has information that specifies the packet's destination and how the packet will be reassembled into a whole message when received at its destination. Packet switching is more efficient for communicating some types of data traffic because it allows many users to equally and flexibly share the same set of bandwidth resources. However, a drawback of packet switching is that when the network is busy packets can be delayed. This delay is termed “latency”. Too much latency results in poor service quality for certain applications, particularly where real-time interaction is required, for example in voice or video calling.
In third generation (“3G”) networks, the information to be transmitted is divided into a voice channel for voice calls and a data channel for other data to be transmitted over the network. The voice channel operates through circuit switching (i.e. a dedicated connection, like a traditional landline call), while the...
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