Optis Cellular Technology LLC v Apple Retail UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 25 June 2021 |
| Neutral Citation | [2021] EWHC 1739 (Pat) |
| Docket Number | Case No. HP-2019-000006 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 1739 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Mr Justice Meade
Case No. HP-2019-000006
Tom Moody-Stuart QC, Mark Chacksfield QC, Thomas Jones, Jennifer Dixon and Henry Edwards (instructed by EIP Europe LLP and Osborne Clarke LLP) for the Claimants
Michael Bloch QC, Guy Burkill QC, Lindsay Lane QC, Katherine Moggridge and Warren Fitt (instructed by WilmerHale LLP) for the Defendants
Hearing dates: 16, 19–23 and 26–28 April 2021
Approved Judgment
I direct that pursuant no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Introduction | 4 |
| Conduct of the trial | 4 |
| Status of the previous decisions on the Patent | 5 |
| The patent issues | 5 |
| The witnesses | 6 |
| Technical experts | 6 |
| ETSI experts | 8 |
| The skilled addressee | 10 |
| The common general knowledge | 10 |
| Agreed common general knowledge | 10 |
| Disputed and potentially disputed common general knowledge | 19 |
| What was and was not disputed | 19 |
| Poll prohibit timers and status prohibit timers | 20 |
| Scheduling algorithms, round trip times, no further PDUs | 20 |
| The Patent | 21 |
| Claims in issue | 23 |
| Proposed amended claims: | 24 |
| Claim interpretation | 24 |
| “Counting” | 24 |
| Claims 6 and 9 – “resetting” | 26 |
| Claims 6 and 9 – timing | 26 |
| Claim 9 – “or” | 27 |
| Validity | 29 |
| Anticipation – the law | 29 |
| Pani/P3 | 31 |
| Assessment | 37 |
| Allowability of the amendments | 39 |
| InterDigital | 39 |
| InterDigital — Anticipation by equivalence | 48 |
| Obviousness over InterDigital | 50 |
| Legal principles | 50 |
| Pozzoli questions 1 and 2 | 51 |
| Pozzoli question 3 | 51 |
| Pozzoli question 4 | 52 |
| Claim 9 | 54 |
| The estoppel issues | 55 |
| Outline | 55 |
| “Patent ambush” | 58 |
| Case management | 58 |
| The law of proprietary estoppel | 59 |
| Basic elements of the doctrine | 59 |
| The three elements | 59 |
| The role of unconscionability, not a “joker” | 61 |
| No watertight compartments | 62 |
| No categorisation | 63 |
| Inaction or silence | 63 |
| Detriment | 65 |
| Reliance and causation | 67 |
| French law | 67 |
| Basic provisions | 69 |
| Clear and Precise | 70 |
| The materials available for the exercise of interpretation | 71 |
| Collective contracts and standard form contracts | 72 |
| Usages | 72 |
| Means v. Result | 72 |
| Presumptions | 73 |
| Interplay of the above principles | 73 |
| Facts relevant to the estoppel allegations | 74 |
| ETSI | 74 |
| 3GPP | 75 |
| Working groups, meetings, submissions | 78 |
| Declaration timing | 79 |
| Awareness of declaration timing | 80 |
| How declarations were made | 80 |
| Assessment of essentiality | 81 |
| Whether WG participants checked the IP status of TDocs | 81 |
| What RAN WG2 participants would have thought about the Ericsson TDoc .. | 83 |
| Available alternatives | 84 |
| ETSI IPR Policy over time | 85 |
| The 1994 Interim IPR Policy | 87 |
| 3GPP Partnership Agreement | 91 |
| 2003 AHG Review | 91 |
| The 2004 IPR Guide | 95 |
| DG Comp's proposed changes | 101 |
| Conduct and states of mind of Ericsson and of Apple | 103 |
| Meaning of Clause 4.1 – Assessment | 104 |
| Unpublished patent applications | 107 |
| Conclusion on Clause 4.1 | 107 |
| Analysis of Apple's primary “No-IPR” case | 107 |
| Assurance | 107 |
| Reliance and detriment | 108 |
| Unconscionability | 109 |
| Analysis of Apple's secondary case | 109 |
| Remedy | 109 |
| Transfer of the benefit and of the burden | 109 |
| “Transfer” of the benefit | 110 |
| Transfer of the burden | 111 |
| Bona fide purchaser for value without notice | 111 |
| Conclusions | 112 |
INTRODUCTION
This trial concerns European Patent (UK) No. 2 229 744 B1 (“ the Patent”). It is one in a series of trials in this multi-patent action. It is referred to as “Trial B”. In Trial A, Birss J (as he then was) found another patent, which has now expired, valid and infringed. Further trials are scheduled, including on FRAND issues.
The Patent has been litigated before, in proceedings between Unwired Planet and Huawei. There was a trial, also before Birss J: [2015] EWHC 3366 (Pat), to which I will refer below. He found the Patent valid and essential/infringed. His decision was upheld by the Court of Appeal at [2017] EWCA Civ 226.
As pleaded, this trial was to concern:
i) Whether the Patent is valid, with validity challenged on numerous grounds;
ii) Whether the Patent is essential/infringed;
iii) Whether, if the Patent is valid and infringed, Apple has a defence of proprietary estoppel arising from the way in which the former owner of the Patent, Ericsson, behaved in relation to the adoption of the solution of the Patent into the LTE standard.
These issues narrowed, as I will explain below.
CONDUCT OF THE TRIAL
The trial was conducted in Court. All the oral evidence was given live. To mitigate the COVID risk, the number of representatives of the parties and their clients permitted at any one time was limited, and a live feed was made available for others, and for the public if they asked. I am grateful to the third-party providers engaged by the parties to make the technology work.
The parties each had effectively two separate teams of lawyers, one team for the validity/essentiality issues and one for the proprietary estoppel issues. Only one team on each side was in Court at once.
In terms of Counsel:
i) For Optis, Mr Moody Stuart QC, Mr Jones and Ms Dixon handled the patent issues while Mr Chacksfield QC and Mr Edwards dealt with estoppel.
ii) For Apple, Mr Burkill QC, Ms Lane QC and Ms Moggridge were the patent team, with Mr Bloch QC and Mr Fitt on estoppel.
Where I refer to Counsel for Optis or Counsel for Apple it will be apparent from the context whom I mean.
There was one issue on which the patent issues and proprietary estoppel issues representation/witnesses crossed over, and that was in relation to whether there were non-patented technical alternatives to the invention of the Patent. The patent advocates dealt with the evidence and the results were carried into the estoppel submissions.
STATUS OF THE PREVIOUS DECISIONS ON THE PATENT
Apple submits that there is no overlap between the Unwired v. Huawei action and this one, even though they concern the same patent. Apple submits that the prior art is new and different, giving rise to a new construction point (“counting”); that the expert evidence is different and from different witnesses; and that the estoppel arguments are new. Apple is right about all this and I accept its submission that this trial starts with a “clean sheet of paper”.
Optis did not in general contest this too much. It did try to argue that a point of claim construction decided by Birss J, on claim 9, could be relied on. While recognising that points of claim construction depend on evidence, such as to common general knowledge (“ CGK”) (see Novartis v. Dexcel [2008] EWHC 1266 (Pat)), Counsel for Optis argued that there was no conceivable difference in the evidential setting to this action compared with the earlier one, so that I should follow what Birss J decided.
Working out if the evidential setting is different would be burdensome and anyway is unnecessary, because although what Birss J said in the previous judgment at [95] (“There is no doubt claim 9 refers to resetting both counters when either has reached the trigger.”) superficially contains the proposition Optis now argues for, he was not considering the point now in issue (whether there is a dual reset when either trigger is met). Rather, he was considering whether the claim covered a situation where there was a dual reset when either trigger was met and in other circumstances. Counsel for Optis accepted this. Even if the evidence of the CGK and so forth is no different now, I cannot get anything from a summary sentence included in Birss J's decision on a different point.
I have inevitably had to look at Birss J's judgment to understand and assess this point. Since my conclusion is that I must approach the matter entirely afresh, I have avoided studying his judgment at all closely, lest what happened should influence me subconsciously. I think it only fair to say that the limited reading I did left me with the impression that the arguments and approaches of the parties were very different then from now. That Apple's attacks are different from those of Huawei, to the extent they are, has no relevance to whether they are right or wrong.
THE PATENT ISSUES
The issues narrowed in the run up to trial, and during trial. The remaining issues are:
i) The nature of the skilled team, where there was minimal disagreement.
ii) The scope of the common general knowledge. There were only minor issues over this.
iii) Claim construction. There were multiple issues and they are critical to (in particular) the anticipation arguments.
iv) Anticipation over a patent application referred to as “ Pani” (PCT Application WO 2008/097544). Pani was prior art for novelty only. Novelty has to be assessed for the granted claims and, if those are anticipated, in respect of conditionally amended claims.
v) Anticipation and obviousness over prior art referred to as “ InterDigital” (TDoc R2-071618). In relation to anticipation,...
To continue reading
Request your trial
-
Carku v NOCO
...support to the view that relays were deliberately not claimed. It is different from the situation that I dealt with in Optis v Apple [2021] EWHC 1739 (Pat) where the two options were mentioned in the general teaching of the invention, whereas here relays are only mentioned in relation to t......
-
Interdigital Technology Corporation v Lenovo Group Ltd
...Technology LLC & Ors v Apple Retail UK Ltd & Ors in which he had to consider aspects of the ETSI IPR Policy. First, in Trial B [2021] EWHC 1739 (Pat) ( ‘Optis B’) and then in Trial F: [2021] EWHC 2564 (Pat) ( ‘Optis F’). Whilst preparing this judgment, the Court of Appeal heard and dismis......
-
Interdigital Technology Corporation v Lenovo Group Ltd
...Technology LLC & Ors v Apple Retail UK Ltd & Ors in which he had to consider aspects of the ETSI IPR Policy. First, in Trial B [2021] EWHC 1739 (Pat) ( ‘Optis B’) and then in Trial F: [2021] EWHC 2564 (Pat) ( ‘Optis F’). Whilst preparing this judgment, the Court of Appeal heard and dismis......
-
Optis Cellular Technology LLC and Others v Apple Retail UK Ltd and Others
...action was split into a number of trials, including a FRAND trial. This appeal is from the judgment of Meade J given on 25 June 2021 [2021] EWHC 1739 (Pat). The same patent was previously litigated in ( Unwired Planet v Huawei [2015] EWHC 3366 (Pat) and on appeal [2017] EWCA Civ 226). I ......