Nokia OYJ (Nokia Corporation) (Claimant/ Appellant) v IPcom GMBH & Company KG (Defendant/ Respondent)

JurisdictionEngland & Wales
JudgeLord Justice Kitchin,Lord Justice Etherton,Lord Justice Laws
Judgment Date10 May 2012
Neutral Citation[2012] EWCA Civ 567
Docket NumberCase No: A3/2011/2018 & 2018(Y)
CourtCourt of Appeal (Civil Division)
Date10 May 2012
Between:
Nokia OYJ (Nokia Corporation)
Claimant/ Appellant
and
IPcom GMBH & Co KG
Defendant/ Respondent

[2012] EWCA Civ 567

Before:

Lord Justice Laws

Lord Justice Etherton

and

Lord Justice Kitchin

Case No: A3/2011/2018 & 2018(Y)

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION (PATENTS COURT)

The Hon Mr Justice Floyd

[2011] EWHC 1470 (Pat)

Royal Courts of Justice

Strand, London, WC2A 2LL

Richard Meade QC and James Abrahams (instructed by Bird & Bird LLP) for the Claimant/Appellant

Iain Purvis QC and Brian Nicholson (instructed by Bristows) for the Defendant/Respondent

Hearing dates: 27/28/29 February 2012

Lord Justice Kitchin

Introduction

1

This is an appeal by Nokia from the judgment of Floyd J of 16 June 2011 whereby he held IPCom's European Patent (UK) 1 841 268 ("the patent" or "the 268 patent") partially valid and infringed by certain Nokia mobile phone devices referred to as the A1 and the A2. He found that certain other Nokia devices did not infringe. He also gave IPCom permission to amend the patent to cure its partial invalidity.

2

By this appeal, Nokia challenges the finding of the judge that the patent was valid in its amended form, and his finding that it was infringed by the Nokia A2 device.

3

Nokia is a well known designer and manufacturer of mobile phones. IPCom is the owner of the telecommunication patent portfolio developed by Robert Bosch GmbH ("Bosch"). In the 1990s, Bosch invested very substantial sums in research into mobile telecommunication technology which led to what has now become IPCom's patent portfolio.

4

This is the latest round in a long running dispute between the parties. The patent was divided out of another of IPCom's patents, European Patent (UK) 1 186 189 ("the 189 patent"). The 189 patent was revoked by Floyd J following a judgment dated 18 January 2010 ("the 189 judgment") in other proceedings between the parties. An appeal against the judge's refusal to permit IPCom to amend the 189 patent was unsuccessful.

5

Nokia brings this appeal with the permission of the judge, save in respect of the issue of obviousness over the common general knowledge. As to that, by order dated 1 November 2011, I adjourned the application by Nokia for permission to appeal to the hearing of the substantive appeal. We heard full argument on the point from Mr Richard Meade QC on behalf of Nokia and from Mr Iain Purvis QC on behalf of IPCom and I think it is therefore appropriate formally to grant permission and address the issue on the merits.

6

The issues on this appeal are therefore:

i) Is the patent invalid for added matter?

ii) Is the patent invalid for obviousness over the common general knowledge?

iii) Is the patent invalid for obviousness over the prior art mobile telephone system called GSM/GPRS?

iv) Is the patent invalid for obviousness over a document called Farsta?

v) Is the patent invalid for insufficiency?

vi) Does the Nokia A2 device infringe the patent?

Technical background and common general knowledge

7

The judge identified the skilled addressee of the patent as an engineer or team of engineers concerned with developing mobile phones for use in the UMTS mobile telecommunications standard, and in particular with developing systems for controlling access to an uplink channel, that is to say, from mobile phone to base station, called the random access channel or RACH. This is a shared channel which is used by all the mobiles in a base station's cell to ask the network, via the base station, for a dedicated channel when they want to make a call, receive a call or use one of the other available facilities such as internet browsing.

8

The RACH can accommodate some degree of simultaneous access attempts but, should demand become too great, user signals may collide with each other with the result that only some and, on occasions, hardly any, will manage to get through. This competition for the RACH is called "contention" and when two or more users block each other, this is called a "collision".

9

The skilled addressee would have known that one of the ways of dealing with contention on the RACH is to limit the mobiles' attempts to request access to it. This is done by the base station broadcasting to the mobiles in its cell rules for RACH access. This it does on a channel called the broadcast control channel or BCCH. Two well known sets of rules for limiting access to the RACH are the "lottery" and "access classes". They were described by the judge in his 189 judgment in these terms:

"Contention on a shared channel

194. Where the uplink from a mobile station is a shared random access channel, 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"

195. One well known way of restricting access to the channel involved 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

197. 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 system.

Transmission capacity

198. Bandwidth is a scarce resource in any mobile telephone system. Designers of such systems would try to arrange matters so as to minimise the amount of data that had 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."

10

As the judge explained, the skilled addressee would also have known of the various mobile telecommunications standards including, specifically, GSM, GSM/GPRS and IS-95. GSM used class barring. GSM/GPRS and IS-95 used both class barring and the lottery but combined them in different ways. In GSM/GPRS, the second generation or "2G" modification of GSM, there was first, class barring and second, survivors of the class barring could be subjected to the lottery.

11

By the date of the application for the patent the UMTS standard was in contemplation. This is a third generation or "3G" system.

12

The judge summarised the common general knowledge in relation to UMTS in these terms at [10]:

"UMTS is a code division multiple access system (CDMA). The details of CDMA do not matter for present purposes except in very limited respects. One aspect of CDMA is that of frequency sharing between channels. This means that there is at least the potential for channels to interfere with each other. Interference is a function of the load carried by the channel. A second point is that it was envisaged at the priority date that, in UMTS, the use of the RACH would not be restricted to the sending of channel requests. It would also be used to send small data packets. Thirdly, it was clear that UMTS would offer multiple services, including voice and at least one type of data service. These are points which are relied on by Nokia to suggest that a random access scheme for UMTS required more in the way of flexibility than was necessary for earlier schemes."

The disclosure of the application

13

At the hearing of the appeal, Nokia quite properly focused on the disclosure of the application, this being the basis for their various added matter objections. For convenience, the parties used a translation of the priority document for the 268 patent which, as we were told, is in the same form as the application as filed, WO 00/54534.

14

The application is entitled "Method for allocating access rights to a telecommunications channel to subscriber stations of a telecommunications network and to a subscriber station". It then provides a description of the "prior art" which includes, at paragraph [0002], reference to an earlier German patent application which used class barring but did not use a lottery.

15

There follows a description of the "Advantages of the invention". The first paragraph, [0005], mirrors claim 1 of the application and, as the judge held at [24], would be achieved by the lottery-based approach to access which was common general knowledge at the date of the patent. The paragraph concludes:

"This access control uses a minimum of transmission capacity for transmitting the information signals, since it is effected merely by transmitting the access threshold value."

This, Mr Meade submitted, conveys to the skilled reader that an important aspect of the invention is the provision of a system which saves transmission capacity, a recurring theme throughout the application.

16

Paragraph [0006] continues:

"The measures cited in the subclaims permit advantageous developments of and improvements to the method specified in the...

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