Nokia Technologies OY v Oneplus Ltd Technology (Shenzhen) Company, Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 02 December 2022 |
| Neutral Citation | [2023] EWHC 23 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2021-000022 |
[2023] EWHC 23 (Pat)
Mr. Justice Meade
Case No: HP-2021-000022
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
The Rolls Building
Fetter Lane, London EC4A 1NL
Mr. Nicholas Saunders KC and Mr. Joe Delaney (instructed by Bird & Bird LLP) for the Claimants
Mr. Tom Hinchliffe KC and Mr. Jeremy Heald (instructed by Hogan Lovells International LLP) for the Defendants
Hearing dates: 22–25 November and 1–2 December 2022
| Introduction | 4 |
| Conduct of the trial | 4 |
| The issues | 4 |
| Decisions in other proceedings | 5 |
| The witnesses | 7 |
| Prof Purat | 7 |
| Dr Cooper | 8 |
| The skilled addressee | 9 |
| The common general knowledge | 10 |
| CGK – the law | 10 |
| Agreed CGK | 11 |
| A. Development of telecommunications standards | 11 |
| B. Status of the LTE standard at the Priority Date | 13 |
| C. LTE networks | 13 |
| D. LTE Random Access | 13 |
| E. LTE PRACH and preamble formats | 14 |
| F. Uplink time synchronisation | 14 |
| G. UE identification | 15 |
| H. Zadoff-Chu (ZC) Sequences | 15 |
| I. Cubic Metric (CM) | 17 |
| J. Known limitations re the assignment of random access preambles to cells | 18 |
| K. Network planning | 20 |
| L. RAN1 agreements re random access signalling and sequence allocation | 20 |
| M. Summary of CGK | 21 |
| Disputed CGK – circular interpretation of sequences | 22 |
| Disputed CGK – CM of QPSK as a threshold | 22 |
| RAN1/RAN4 liaison statement and response | 23 |
| Documents referencing the CM of QPSK | 24 |
| Other contexts | 26 |
| Tension with the patent | 27 |
| Disputed CGK – similarity of CM and Max N cs in consecutive sequences | 27 |
| Disputed CGK – ZTE and LGE | 28 |
| Events at RAN1 | 28 |
| Analysis | 30 |
| The Patent | 30 |
| Claim 1 | 34 |
| Anticipation by Woo | 35 |
| Legal principles | 35 |
| Basic test | 36 |
| Further points on unambiguous/unmistakeable | 36 |
| Role of expert evidence | 37 |
| Actual events, later documents | 37 |
| Significance of parts of Woo not having priority | 37 |
| Disclosure of Woo | 38 |
| The parties' arguments | 43 |
| Analysis | 45 |
| Wording of [0055] | 45 |
| The Figures | 46 |
| “Subsequent section” and “preceding section” | 46 |
| Step 1 repeated? | 47 |
| Technically meaningful result | 47 |
| Two meanings or one for [0055]? | 47 |
| The expert evidence generally | 48 |
| [0096] and [0097] | 48 |
| [0100]–[0101] | 48 |
| Covered v disclosed | 49 |
| Conclusion | 49 |
| Obviousness over ZTE with LGE | 49 |
| Nature of the attack | 49 |
| Obviousness – the law | 50 |
| Mosaicing | 50 |
| No a priori expectation when reading the prior art | 51 |
| Pozzoli | 51 |
| ZTE | 51 |
| What the skilled person would take from ZTE | 54 |
| Problems with ZTE? | 54 |
| Solution within ZTE | 55 |
| Journey from ZTE to LGE | 56 |
| LGE | 57 |
| Problems with LGE? | 57 |
| Combining ZTE and LGE | 58 |
| The cross-examination | 61 |
| Secondary evidence | 61 |
| Added matter | 63 |
| The law | 63 |
| Analysis | 64 |
| Excluded subject matter | 65 |
| The law | 65 |
| Oppo's first point – novelty only prior art | 72 |
| T489/14 | 73 |
| Analysis | 73 |
| Conclusions | 75 |
INTRODUCTION
This is a further trial in a global battle. The Claimants (“Nokia”) allege that the Defendants (together, “Oppo”) have infringed European Patent (UK) No. 2 981 103 B1 (“the Patent”) by the sale of certain mobile phones with 4G/LTE and 5G functionality.
In another trial in the battle, in a separate action, I held in a judgment of 9 November 2022 ( [2022] EWHC 2814 (Pat)) that a Nokia implementation patent was valid and infringed by Oppo. By contrast, this trial concerns a standards essential patent (SEP).
Oppo does not in general deny essentiality/infringement; a theoretically possible scenario, in which Nokia would have had to fall back on a dependent claim whose infringement by 5G functionality would depend on a construction issue, fell away. So this trial was really about validity. Oppo says that the Patent is invalid on multiple grounds.
CONDUCT OF THE TRIAL
The trial was conducted live in Court and there were no COVID issues.
At the parties' request, an amount of time for closing oral submissions was allocated at the PTR which was, by current standards, unusually long. I am grateful for the parties' foresight, because it turned out that there were a number of unusual features of the case which benefited from more time.
THE ISSUES
The issues are:
i) The identity of the skilled person. By the oral closings this had fizzled out into near– if not total agreement.
ii) The scope of the common general knowledge (“CGK”). There were three specific areas of disagreement going to individual items of technical understanding, but also a dispute of wider impact about how to assess CGK in the unusual circumstances of the case. That dispute went to whether Oppo could legitimately mosaic two prior art citations together.
iii) Anticipation over European Patent Application EP 1 971 097 A2 (“Woo”). Woo is a novelty-only citation.
iv) Obviousness over two pieces of prior art:
a) Tdoc R1-073595 entitled “Group-based Re-Ordering Method of ZC Sequence in RACH” (“ZTE”), submitted to RAN WG1 (“RAN1”) for its meeting #50 held on 20–24 August 2007.
b) Tdoc R1-073501 entitled “Preamble Index Mapping for Non-Sychronized RACH” (“LGE”), submitted to RAN1 in the same circumstances.
It is accepted by Oppo that neither ZTE nor LGE on its own renders the Patent obvious. Its case is that starting from ZTE it was obvious to identify LGE and then combine their teachings in a particular way.
v) An allegation of added matter.
vi) An allegation that all the claims of the Patent are invalid on the basis of excluded subject matter.
At trial Nokia said that claim 6 could potentially survive the excluded subject matter if claim 1 failed. Oppo said that claim 6 was not infringed by 5G functionality. But as I have mentioned above this fell away; Oppo pragmatically accepted that its attack on claim 1 for excluded subject matter was no better than its attack on claim 6.
DECISIONS IN OTHER PROCEEDINGS
I was referred to the following decisions in other proceedings (I do not summarise various other proceedings in which no decision has yet been given) on related patents:
i) Daimler AG (and one of its suppliers) previously brought a revocation action in Germany against the German counterpart of the Patent. Another separate revocation claim was made by another of Daimler's suppliers. On 14 April 2021, the German Federal Patent Court gave a preliminary opinion that it was inclined to reject challenges, in particular on added matter, novelty, and obviousness over the combination of ZTE and LGE. The actions were withdrawn before any final decision.
ii) Currently, there are on-going parallel proceedings in Germany, the Netherlands and Sweden between Nokia and companies in the Oppo group concerning the counterparts of the Patent.
iii) In Germany, there is a validity action pending before the German Federal Patent Court. A date for the hearing has not yet been fixed, but is expected to take place sometime in 2023. In infringement proceedings, the Mannheim Regional Court found for Nokia on infringement and refused a stay pending the outcome of the revocation proceedings, partly based on the Daimler litigation.
iv) In the Netherlands, a judgment on validity and infringement was handed down by the District Court of the Hague on 7 September 2022. Oppo advanced similar obviousness and added matter arguments as it does in these proceedings. Novelty over Woo was not in issue (there was another novelty attack not run before me). The court found that the Dutch counterpart was inventive inter alia over the combination of ZTE and LGE, did not contain added matter, and was not invalid for excluded subject matter. Dr Cooper provided evidence for Oppo for this case, as I discuss below.
v) The Patent was granted without any notice of opposition being filed in the EPO. However, there have been decisions and preliminary opinions in the EPO concerning opposed divisionals in the same family:
a) An opposition by Daimler was filed against a divisional application in the same family (EP 3 220 562), the claims of which are very similar to the Patent save that certain features from claim 1 have been moved to dependent claims. The OD (hearing on 30 April 2021, reasons given on 28 June 2021) rejected anticipation by Woo, obviousness over the combination of ZTE and LGE, and added matter.
b) There was also an OD hearing scheduled for 1 December 2022 (i.e. after trial) concerning an opposition filed by Oppo against another divisional application in the same family (EP 3 537 635), which again has similar claims compared to the Patent. The Opposition Division gave a positive preliminary opinion on validity in March 2022, again rejecting added matter, and obviousness over the combination of LGE and ZTE. I was told after trial that the OD upheld the divisional with the deletion of some dependent claims, but reasons are not available...
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