Mmi Research Ltd v Cellxion Ltd and Others

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeSir Robin Jacob
Judgment Date24 January 2012
Neutral Citation[2012] EWCA Civ 7
Docket NumberCase No: A3/2011/0756 and 0793

[2012] EWCA Civ 7

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION (PATENTS COURT)

MR JUSTICE FLOYD

[2009] EWHC 418 (Pat) and [2011] EWHC 426 (Pat)

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

Lord Justice Elias

Lord Justice Kitchin

and

Sir Robin Jacob

Case No: A3/2011/0756 and 0793

Between:
Mmi Research Ltd
Claimant/Respondent
and
(1) Cellxion LTD
(2) Cellxion Networks LLC
(3) Mark Brumpton
(4) Datong Electronics PLC
(5) Rohde & Schwarz Gmbh & Co KG
(6) Anthony Timson
Appellants/Defendants

Mr Alastair Wilson QC and Mr Simon Malynicz (instructed by Addleshaw Goddard LLP) for the Appellants/Defendants

Mr Martin Howe QC and Mr Henry Ward (instructed by Charles Russell LLP) for the Claimant/Respondent

Hearing dates: 22 nd and 23 rd November 2011

Sir Robin Jacob
1

This is the judgment of the Court to which we have all contributed.

2

We have before us two appeals from judgments of Floyd J which were called "the main judgment" ( [2009] EWHC 418 (Pat)) and "the remitted issues judgment" ( [2011] EWHC 426 (Pat)). The latter involved the consideration of fresh evidence which, it was alleged, undermined the Judge's original decision.

3

By the main judgment Floyd J held that EP (UK) 1 051 053 was valid and infringed. By the remitted issues judgment he held that the patent was valid and was unaffected by the fresh evidence.

4

The patent is for so-called "IMSI catchers". These are devices used by the police and security services to discover the mobile phone numbers of suspected criminals or terrorists. Every mobile phone has an "IMSI" associated with its SIM card, which is its permanent identity number. It used to be thought that the IMSI of the mobile phone could not be identified. Security services and police have a strong interest in being able to discover it; they can then track the phone and keep tabs on the owner as he moves from place to place.

5

For the purposes of understanding this appeal, it is sufficient to draw attention to two particular features of the IMSI catcher claimed in the patent. The first is that it involves the creation of a false base station. Mobile phones in a particular area will transmit information to a base station which operates as a transmitter and a receiver to and from the phones. The IMSI catcher uses a false base station which is constructed in a manner which leads the phone to believe that it is genuine, and thereby to communicate with it. It is accepted that this was an ingenious and potentially patentable idea but it was in the public domain before the priority date (3 May 1999).

6

The second feature is the way in which the fake base station causes a mobile phone speedily to transmit to it. In the normal way phones only link to a base station periodically. The IMSI catcher of the patent works so successfully because it is able quickly to capture the IMSI of the mobile phone. A mobile phone will send a signal when it moves from what is termed one location area code ("LAC") to another. The country is split into different LACs with a number of base stations located in each LAC. Usually transmission will occur because the phone has physically transferred from one area to another, and when it enters a new LAC it will send a signal to the nearest or most powerful base station. The trick here is to cause the phone to believe that it has moved into a new LAC and therefore communicate with the false base station and deliver up its IMSI. This is achieved by giving the fake base station a different LAC to that of the area where the mobile phone is located.

7

Essentially, the principal issue in this case is whether the idea of providing a different LAC to catch the IMSI was obvious or not, given that the principle of the fake base station was known.

8

The patent stands in the name of Rohde & Schwarz ("R&S"), who are named as 5 th defendants but who played no active part in the proceedings. The claimant, MMI, is an exclusive licensee under the patent. For the purposes of the present judgment it is not necessary to distinguish between the various defendants save in relation to the question of the personal liability of the sixth defendant, Mr Timson. We therefore refer to them (other than R&S) together as CellXion.

9

The Judge set out the detail of the specification at [8–15]. For brevity and because we do not think this case has any general interest, we need not repeat it here.

10

The only relevant claim is claim 1 which reads:

"Method for identifying a mobile telephone (MS) in a public digital cellular mobile telephony network,

a virtual base station (VBTS) with a test mobile telephone (TMS) connected thereto being operated in spatial proximity to the mobile telephone (MS),

the network base station (BTS1), assigned to the selected location, having the highest power being used to ascertain, through a cell monitoring by means of the test mobile telephone (TMS), the list (BA) of all base stations adjacent to the location,

there being selected therefrom a base station (BTS2), which is adjacent to the base station (BTS1) of highest power assigned to the selected location,

and the virtual base station (VBTS) being then operated on its channel frequency (BCCH) with a power which, at the mobile telephone (MS), is greater than that of the network base station (BTS1) associated with the location,

and with an area code which differs from the area code (LAC) associated with the location."

11

The Judge set out the common general knowledge of the person skilled in the art at [24–46]. Again we do not set it all out here. Neither side challenged any of this, save that Mr Wilson QC submitted the Judge should have made it clearer than he did that the knowledge of mobile phone testing equipment which he set out at [37–39] would have been known to the "person skilled in the art" concerned with the problem of designing an IMSI catcher at the priority date.

12

Before the Judge the defendants took a mass of points. A group of these related to a prior use of the R&S GA-900 machine and its manuals. It was contended that these were novelty destroying in that they made the invention available to the public. It was not disputed that sales of the GA-900 took place and did so before the priority date. But it was said that (a) it was not proved that an inspection of the machines would reveal how they worked and (b) that in any event the sales and disclosures were under a seal of confidence. The Judge so held.

13

Following the main judgment an application was made to the Court of Appeal to admit fresh evidence concerning the prior sales of the GA-900. This was admitted and particular, tightly defined, issues were remitted to the Judge to determine. Those formed the subject of the remitted issues judgment. Thus both the main judgment and the remitted issues judgment were concerned with the allegation of lack of novelty by reason of the prior sales of the GA-900. We turn to that issue first.

Anticipation by prior use or disclosure

Introduction

14

At the original trial CellXion relied upon the sale by R&S of the GA-900 machine and its instruction manuals before the priority date to security services around the world. It was common ground that the method of operation of the GA-900 fell within claim 1 of the patent. The issues before the Judge were therefore whether the GA-900 or its instruction manuals were supplied; whether such supply was without a fetter of confidence; and whether such supply amounted to a disclosure of claim 1.

15

The Judge found that supplies of the GA-900 were made to the Australian Government and to a person identified only as "B" before the priority date. However, he also found that the circumstances of the supply were such as to impose on the Australian Government and on "B" an obligation of confidence in relation to any information derivable from the machine as to how it worked. As for the GA-900 manuals, the judge found that if they were supplied, then they were impressed with an obligation of confidence too.

16

The Judge also addressed the question as to whether the supply of the machine amounted to a disclosure of the invention in any event. He concluded that it had not been established that it did. He put it thus:

"96. The question of what the prior sale was capable of revealing to the skilled person was not a matter addressed in the evidence at all. I do not think it would be right for me to conclude without evidence that the relevant features of the method of operation according to the Patent would be apparent to the purchaser of the GA-900 from the machine or its instruction manual."

17

CellXion claimed to have been supplied, after the main judgment, by an anonymous source with a brown envelope containing a file in English ("the English File") and a manual in Italian (the "Italian Manual"). The English File also contained a certificate of compliance with a sales order and a floppy disk. These contained dated materials which led CellXion to believe they must have been supplied before the priority date together with GA-900 machines, and that a recipient would have had no difficulty in understanding from them precisely how the machines worked. Armed with this new material they made an application to this Court (Jacob LJ and Kitchin J) for permission to appeal and for permission to adduce further evidence.

18

This Court decided ( [2009] EWCA Civ 1120) to admit the new evidence and to remit the matter to the Patents Court to try the new issues it raised. Jacob LJ described the nature of the new material in these terms at [4] and [5]:

"4. Two files (and we have seen the originals) are the...

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