Nokia Oyj (Nokia Corporation) (a company incorporated under the laws of Finland) v Ipcom Gmbh & Company KG (a company incorporated under the laws of Germany)
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Floyd |
| Judgment Date | 16 June 2011 |
| Neutral Citation | [2011] EWHC 1470 (Pat) |
| Docket Number | Case No: HC10 C01233 |
| Court | Chancery Division (Patents Court) |
| Date | 16 June 2011 |
[2011] EWHC 1470 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Hon Mr Justice Floyd
Case No: HC10 C01233
Richard Meade QC and James Abrahams (instructed by Bird & Bird LLP) for the Claimant
Iain Purvis QC and Brian Nicholson (instructed by Bristows) for the Defendant
Hearing dates: 11 th–15 th, 18 th–20 th April 2011
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.
| Paragraph numbers | |
| Introduction and Background | 1–5 |
| The Skilled Addressee or Team | 6–7 |
| The Common General Knowledge | 8–10 |
| Expert witnesses | 11–21 |
| The 268 Patent | 22–42 |
| The Claim in Issue | 43 |
| Construction | 44–55 |
| The Prior Art & Obviousness Attacks | 56–124 |
| Added Matter | 125–169 |
| Insufficiency | 170–176 |
| Infringement | 177–203 |
| Declaration of Non Infringement | 204–207 |
| Compliance | 208–212 |
| Summary Judgment | 213 |
| Conclusion | 214 |
Introduction and background
The claimant, Nokia Corporation, seeks revocation of European Patent (UK) No. 1 841 268 ("the patent" or "268") which belongs to the defendant IPCom. This action is yet another stage in the litigation which is pending in a number of jurisdictions in relation to the mobile telephony patent portfolio which IPCom purchased from Robert Bosch GmbH.
268 is a patent which was divided out of European Patent No. 1 186 189 ("the parent patent"). The parent patent was one of the patents in issue in an earlier action between substantially the present parties on which I gave judgment in January 2010: [2009] EWHC 3482 (Pat). I held the parent patent invalid, and refused (on procedural grounds) IPCom's attempts to introduce claim-narrowing amendments, one before and one after judgment. There was no appeal against the finding of invalidity, although there was an appeal against the decisions not to allow amendments. Those appeals were dismissed: [2011] EWCA Civ 6. The claims of 268 resemble those which IPCom were trying to get into the parent action by amendment: but no procedural objection was taken before me on this ground. As counsel submitted to the Court of Appeal in the parent appeal (see judgment at [113]):
"We agree that we have to lop the tentacles of the Hydra one at a time or sometimes two at a time. That is what happens when you are facing somebody with a large patent portfolio. What we object to is every tentacle re-growing after we lop it off."
In response to the action for revocation, IPCom has made a conditional application to amend the 268 patent. In addition, by counterclaim, IPCom alleges infringement of 268 in respect of a number of mobile phones sold by Nokia. Nokia denies infringement.
Nokia also seeks declarations of non-infringement in relation to a series of further mobile phones. IPCom advanced no positive case in relation to these phones, but seeks a declaration for itself that the relevant Nokia phones are not "compliant" with the UMTS standard. Nokia applied for summary judgment in its declaratory action. That application was adjourned to the trial and is before me as well. In consequence of all this, IPCom opened the case and called its evidence first.
Like the parent patent, 268 is concerned with managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station. Mr Iain Purvis QC and Mr Brian Nicholson argued the case for IPCom. Mr Richard Meade QC and Mr James Abrahams argued the case for Nokia.
The skilled addressee or team
The 268 patent is addressed to an engineer or team of engineers concerned with developing mobile phones for use in the UMTS mobile telecommunications standard, and in particular in developing systems for control of access to the random access channel (RACH). In my judgment on the parent patent I explained that those working on the GSM standard project were engineers of the highest calibre: see [37]. The same clearly applies to those involved in the UMTS project.
There is no dispute that the skilled addressee would have available the various standards such as GSM, GSM/GPRS and IS-95 and the current state of the UMTS recommendations. These are very extensive documents, and no skilled team could be expected to have or keep even a tiny fraction of their contents in its collective head. But the skilled team would know where in these documents to find information relevant to the task in hand.
The common general knowledge
Mobile telecommunications networks are complex structures. The general nature of such networks has been described in a number of judgments, and I do not need to repeat that exercise here. This case is concerned with how one controls access by the mobiles to a random access radio channel or RACH between the mobile and the base station (the "uplink"). In the parent case I said this about the technical background to the 189 patent. It is useful to set it out here as well:
Contention on a shared channel
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"
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
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
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.
I should add something about UMTS, as claim 1 is limited to a mobile for use in a UMTS network. UMTS is a third generation mobile telecommunications standard. At the priority date of and at the date of application for the patent, the standard was not complete: there were gaps in the specification of the standard.
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.
Expert witnesses
The evidence on each side was limited to a single expert witness. IPCom called Peter Gould. He is a telecommunications consultant. He has written books and chapters on GSM and cdmaOne (which became the IS-95 standard). These are the two prior art mobile phone standards relied on by Nokia to invalidate the 268 patent. Mr Gould has also taught course modules on GSM and cdmaOne. In addition he has been involved in presenting a training course on UMTS, in giving other papers and writing a book chapter on it. Mr Gould gave evidence in the case concerning the parent patent, although not on the parent patent itself.
Nokia criticised Mr Gould's expertise. They said he had no practical experience of designing systems. He merely read about them and explained them to others. Nokia also hinted that, as he had given evidence for IPCom before, Mr Gould had become a bit of an IPCom man.
I will deal with the second part of that criticism first. In my judgment Mr Gould's evidence was given throughout with the utmost integrity and in a genuine desire to assist the court. I reject the suggestion that he was partisan, or was seeking to advance IPCom's case at the expense of giving helpful evidence. As to the first part, it is correct, as Mr Gould readily acknowledged, that he has little in the way of practical design experience. That is a factor which I should bear in...
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