Nokia GMBH v Ipcom GMBH & Company Kg
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 18 January 2010 |
| Neutral Citation | [2010] EWHC 789 (Pat),[2009] EWHC 1017 (Pat),[2010] EWHC 3482 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case Nos: HC 08C02525 and HC 08C03143 |
| Date | 18 January 2010 |
[2009] EWHC 3482 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Before: The Hon Mr Justice Floyd
Case Nos: HC 08C02525 and HC 08C03143
Richard Meade QC and James Abrahams (instructed by Bird & Bird LLP) for Nokia GmbH, Nokia UK Limited and Nokia Oyj
Daniel Alexander QC and Brian Nicholson (instructed by Bristows) for IPCom GmbH & Co. KG.
Hearing dates: November 19–20, 23–27, 30 and December 1–3.
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.
Mr Justice Floyd :
Index
| paragraph | |
| Introduction | 1 |
| Expert Witnesses | 6 |
| Technical Background | 18 |
| The 808 Patent | 19 |
| The 808 patent—disclosure | 21 |
| Disclosure about initial synchronisation | 26 |
| Disclosure about normal synchronisation | 29 |
| Disclosure about lock-on synchronisation | 32 |
| The claims in issue | 35 |
| The skilled addressee and common general knowledge | 36 |
| Construction | 40 |
| Approach to construction | 40 |
| An entire scheme? | 42 |
| order of steps | 45 |
| “operates with the GSM method” | 46 |
| optional coarse synchronisation: 1.1 | 48 |
| “start of a frequency correction burst” (1.2) | 54 |
| “phase differencing”: 1.3 | 59 |
| “with” in step 2.1 | 65 |
| “frequency-correcting data pre-processing using a frequency correction value which is determined from up-to-date frequency measurements” (2.2) | 69 |
| “lock-on synchronization” (3) and “frequency synchronisation” (3.2) | 76 |
| Validity of the 808 Patent | 81 |
| Insufficiency- law | 81 |
| Insufficiency—facts | 85 |
| Obviousness—law | 107 |
| The prior art | 111 |
| The GSM recommendations | 115 |
| GSM 05.01 | 115 |
| GSM 05.02 | 117 |
| GSM 05.08 | 118 |
| GSM 05.10 | 120 |
| Obviousness in the light of GSM | 124 |
| (1) Initial synchronisation | 127 |
| (2) Normal synchronisation | 128 |
| Fine frame synchronisation | 131 |
| Fine frequency synchronisation | 137 |
| Using the same burst | 140 |
| Data pre-processing | 141 |
| (3) Lock-on synchronisation | 142 |
| Conclusion thus far | 150 |
| Data pre-processing | 152 |
| Data pre-processing over common general knowledge alone | 152 |
| Data pre-processing and Baier | 160 |
| Data pre-processing and D'Avella | 168 |
| Overall conclusion on obviousness | 175 |
| Infringement – claim 1 | 176 |
| “operates with the GSM method” | 177 |
| “coarse frequency synchronisation” (1.1) | 178 |
| “start of a frequency correction burst” (1.2) | 180 |
| “fine frequency synchronisation by phase differencing with regard to a frequency correction burst” (1.3) | 181 |
| order of steps 1.2 and 1.3 | 184 |
| fine frame with fine frequency in lock on (3.2) | 185 |
| Infringement—claim 9 | 186 |
| Conclusion on infringement | 189 |
| Essentiality | 190 |
| The 189 patent | 191 |
| Additional technical background for 189 | 194 |
| Contention on a shared channel | 194 |
| The “lottery” | 195 |
| Access classes | 197 |
| Transmission capacity | 198 |
| The 189 patent—disclosure | 199 |
| The claims and their interpretation | 228 |
| The prior art | 238 |
| GPRS: disclosure | 238 |
| Lack of novelty over GPRS | 244 |
| Claim 1 | 244 |
| Claim 2 | 249 |
| Other claims | 253 |
| Lack of inventive step over GPRS | 255 |
| Ericsson: disclosure | 260 |
| the (dis)/favoured users aspect | 264 |
| the contention/reservation aspect | 267 |
| Lack of novelty/obviousness over Ericsson | 271 |
| Obviousness over common general knowledge alone | 279 |
| Infringement by the Nokia N96 | 280 |
| Infringement – the New Device | 289 |
| Essentiality | 290 |
| Overall Conclusions | 291 |
| Technical Appendix | 293 |
Introduction
These proceedings concern two patents in the name of IPCom GmbH and Co KG (“IPCom”). IPCom sues Nokia UK Limited and Nokia Oyj (Nokia Corporation) for infringement of both patents. The proceedings are part of a larger battle between the parties. Licensing and infringement litigation commenced in Germany between a Nokia company and IPCom when licensing negotiations between the companies broke down. There is no need to distinguish between the various Nokia companies involved in these proceedings. I will refer to them collectively as “Nokia”.
Part of Nokia's response to the German action was to commence revocation actions in this country against some 15 IPCom patents. IPCom has countered with infringement proceedings here as well. This is the judgment following a trial of the issues of infringement, validity and “essentiality” only of these two patents. The hearing was treated as a conventional infringement action, with IPCom opening the case and calling its evidence first, although the evidence of both sides on the first patent was called before the evidence of both sides on the second. Further trials relating to infringement and validity of other patents are planned over the course of this year. They will be followed by a trial of licensing issues at a date yet further in the future.
The two patents relate to cellular mobile phone technology. Broadly speaking, the first of the patents, European Patent (UK) No. 540 808 (“808”), is concerned with the way in which the mobile phone synchronises itself with the transmissions it receives from the base station. The second of the patents, European Patent (UK) No. 1 186 189 (“189”), is concerned with management of the right of the mobile phone to connect to the network.
Nokia manufacture a large range of mobile phones. IPCom's original allegation of infringement was a fairly comprehensive one, but at an earlier case management hearing I gave directions to enable the issues to come to trial based on a representative phone or phones. IPCom alleges that the Nokia 6300 phone infringes the 808 patent and that the Nokia N96 phone infringes 189. Nokia say that both the patents are invalid.
Mr Daniel Alexander QC and Mr Brian Nicholson appeared for IPCom. Mr Richard Meade QC and Mr James Abrahams appeared for Nokia.
Expert Witnesses
Each side called one expert on each patent. Although Nokia served some factual evidence to establish publication of certain matters, no factual witnesses, in the end, needed to be called.
Nokia called Professor Eizenhöfer (808) and Dr Cooper (189). IPCom called Mr Gould (808) and Professor Darwazeh (189).
Professor Dr Alfons Eizenhöfer is a Professor at the University of Applied Science in Nürnberg, carrying out research and lecturing in mobile communications and data communication networks. Prior to that, he worked in industry at Philips Kommunikationsindustrie in Nürnberg on projects including development of pre-GSM trial systems, and also contributed to various GSM work groups.
I have previously described Professor Eizenhöfer as an impressive witness ( Qualcomm v Nokia [2008] EWHC 229 at [18]), but I endeavoured to approach his evidence in this case with an open mind. Mr Alexander submitted that I should qualify my conclusion in Qualcomm by saying that, in this case, he came over as an experienced expert witness making things sound a bit harder when the issue was insufficiency and a bit easier when the issue was obviousness. He also submitted that he was more heavily involved in standardisation than would be appropriate for the notional average skilled person, and that, as a patentee on a number of telecoms patents, he must be regarded as more inventive than such a person.
I think that to some extent Professor Eizenhöfer's written evidence may have overstated the case on insufficiency a little: but in cross examination he was ready to accept where this was so. It is right to point out that he is probably marginally more skilled than the notional addressee in terms of the standards and possibly generally. I have taken that into account in assessing his evidence, which is all Mr Alexander invited me to do.
Dr David Cooper is, and has been since 2006, a partner of Hillebrand and Partners (who specialise, among other things, in providing evidence for patent cases and with which Professor Eizenhöfer has also been connected). He has previously worked at a number of firms in the mobile telecommunications field, including NEC.
Mr Alexander submitted that Dr Cooper had become a “Nokia man”. He had been doing nothing but work on Nokia patent cases for the last two years. He submitted that he had worked too closely with Nokia's lawyers in the preparation of his report, allowing them, for example, to prepare claim charts. One of the claim charts prepared in relation to a publication no longer relied on by Nokia, NTT, had proceeded on a highly tendentious, to say the least, interpretation of the document. He said that Dr Cooper's evidence could not be regarded as his evidence alone insofar as it dealt with the disclosure of the prior art. He referred me to the decision of the United States District Court for the Northern District of California in Intermedics v Ventritex 139 FRD 384 (N. D.Cal 1991), a case in which the Court was being asked to make an order for disclosure of communications between lawyers and expert witness, for the proposition that the court is entitled to know who it is who is giving the evidence.
I think it is fair to say that Dr Cooper's evidence did on occasion seek to squeeze out of the disclosure of the prior art rather more than was there. The NTT evidence is the main example. I do not think that the conclusion he reached about that document was a fair one, and I am inclined to think it was arrived...
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