Optis Cellular Technology LLC v Apple Retail UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 25 November 2021 |
| Neutral Citation | [2021] EWHC 3121 (Pat) |
| Docket Number | Case No. HP-2019-000006 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 3121 (Pat)
Mr Justice Meade
Case No. HP-2019-000006
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
James Abrahams QC, James Whyte and Michael Conway (instructed by EIP Europe LLP and Osborne Clarke LLP) for the Claimants
Lindsay Lane QC and Adam Gamsa (instructed by WilmerHale LLP) for the Defendants
Hearing dates: 5–7 and 13–14 October 2021
I direct that 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 |
| The issues | 4 |
| The witnesses | 5 |
| Optis' expert, Ms Johanna Dwyer | 5 |
| Apple's expert, Prof Angel Lozano | 7 |
| The skilled person | 8 |
| The common general knowledge | 10 |
| Agreed common general knowledge | 11 |
| Background to LTE and RAN1 | 11 |
| Division of radio resources within a cellular network | 11 |
| Protocols and Layers | 12 |
| User data and control information | 13 |
| Channels and PDCCH | 13 |
| Resource allocation in LTE | 14 |
| Scheduling | 16 |
| Downlink control in LTE | 16 |
| Other downlink physical channels in the control region | 17 |
| Transmitting Downlink Control Information (DCI) on PDCCH | 18 |
| UE ID | 18 |
| Search spaces and blind decoding of PDCCHs | 18 |
| Knowledge of hashing functions and random number generation | 19 |
| Simulations | 19 |
| Processor word size | 20 |
| Modulo operation | 20 |
| Technical Background — Collisions and Blocking | 20 |
| Disputed common general knowledge | 22 |
| LCGs | 22 |
| Experience of RNGs/LCGs | 23 |
| Hashing functions v random number generators | 24 |
| Recursive v. self-contained | 25 |
| Simulations | 26 |
| Modular arithmetic | 26 |
| Max hits | 27 |
| The Patent | 27 |
| Claims of the Patent in issue | 28 |
| The Prior Art | 29 |
| Disclosure of Ericsson | 29 |
| Disclosure of Knuth | 32 |
| Obviousness | 33 |
| Legal principles | 33 |
| Existence of alternatives | 33 |
| Secondary evidence | 33 |
| Prejudice/lion in the path | 35 |
| Technograph and number of steps | 36 |
| “Could/would” | 36 |
| 37 | |
| Obviousness over Ericsson | 37 |
| Pozzoli questions 1 and 2 | 37 |
| Pozzoli question 3 | 37 |
| Pozzoli question 4 – unspecified claims | 37 |
| Assessment of the Ericsson function | 38 |
| What to do next | 40 |
| Literature search | 42 |
| Getting to Knuth | 42 |
| Points raised by Optis | 47 |
| A specific point on mod C | 48 |
| Use of max hits | 49 |
| Same parameters for all aggregation levels | 50 |
| Assessment of the secondary evidence | 50 |
| Alternative routes – overall assessment | 53 |
| Conclusion on obviousness of the unspecified claims from Ericsson ………….. 54 | |
| Obviousness of the specified claims | 54 |
| B (increment) as 0 | 54 |
| D (modulus) as 65537 | 54 |
| A (multiplier) as 39827 | 56 |
| Obviousness over Knuth | 57 |
| Insufficiency | 58 |
| Insufficiency of the unspecified claims | 58 |
| The specified claims | 59 |
| Conclusions | 60 |
INTRODUCTION
This is “Trial C” in these proceedings. Trials A, B and F have already taken place and the parties and the general shape of the litigation need no further introduction.
There are three patents in issue at this trial, namely EP (UK) 2 093 953 B1, EP (UK) 2 464 065 B1 and EP (UK) 2 592 779 B1 (“the Patents”). They are all closely related and from the same family, and it is common ground that I can decide all the issues by consideration of claims 1 and 4 of EP (UK) 2 093 953 B1. I will refer to it hereafter as “the Patent” and references to paragraph numbers are to the paragraph numbers in its specification.
The Patent was originally applied for by LG Electronics Inc (“ LGE”). Optis is the assignee. The Patent is declared essential to LTE. By the time of the PTR, Apple had conceded that the Patent is indeed essential and therefore infringed if valid. The concession was said to be for reasons of “procedural economy”; whether that was the actual motivation is irrelevant to this judgment.
Essentiality having been conceded, the issues at trial were in relation to validity only. At the PTR I directed, after argument, that Apple should open the case and call its evidence first.
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 should they ask. I am grateful to the third-party providers engaged by the parties to make the technology work.
Mr Abrahams QC, Mr Whyte and Mr Conway appeared for Optis and Ms Lane QC and Mr Gamsa for Apple.
THE ISSUES
The remaining issues were:
i) The nature of the skilled person, where there was a major disagreement, although in the end I do not think it matters to my overall conclusion.
ii) The scope of the common general knowledge (“CGK”). There was significant dispute here too.
iii) Obviousness over Slides R1-081101 entitled “PDCCH Blind Decoding – Outcome of offline discussions” presented at a RAN1 meeting of 11–15 February 2008 (“ Ericsson”), in conjunction with CGK.
iv) Obviousness over The Art of Computer Programming, Vol. 2 Seminumerical Algorithms, 2 nd Ed (1981), Chapter 3 “Random Numbers”, pages 1–40 (“ Knuth”) in conjunction with CGK.
v) The significance or otherwise of the secondary evidence of how RAN1 members were working at the time and how they reacted to Ericsson and to the alleged invention of the Patents.
vi) Two insufficiencies, run primarily as squeezes against obviousness (although Apple said that at least claim 1 was both obvious and insufficient).
Apple argued that both Ericsson and Knuth were CGK (or such that each would be found by routine research – see below), and its obviousness cases were essentially from Ericsson as a starting point and thence to Knuth, or from Knuth as a starting point and thence to Ericsson. The former was its primary case; the latter depended on a narrow definition of the skilled person so as to make Ericsson CGK. I return to this in more detail below.
In closing written submissions, Apple indicated that it wanted to reserve the right to argue that it ought to be entitled to mosaic Ericsson and Knuth even if neither was CGK and, as I understood the submission, the one would not be found by obvious research from the other. The basis for this submission was that UK law is out of step with the European Patent Office (“EPO”), and that in the EPO such a mosaic would be allowed by virtue of the problem-solution analysis. I merely note this indication; I was not asked to decide the argument or even to rule on whether it would be open to Apple to run it at all at such a late stage.
THE WITNESSES
Each side called one expert witness. There was no fact evidence.
Optis' expert, Ms Johanna Dwyer
Optis' expert was Ms Johanna Dwyer. She gave evidence in Trial B as well, on which occasion she spoke to how ETSI worked and how its IPR Policy had developed. In my judgment on that Trial I described her career as follows:
“She worked for RIM/Blackberry for many years, and from 2005 until 2012 she was involved in various aspects of standards and IP. She participated in various 3GPP WGs and TSGs. She worked on IPR declarations and held senior positions in relation to system standards. Following an MBA in 2012 she has worked in more business-focused and consultancy roles, still very largely in cellular communications. She has given evidence in the Eastern District of Texas proceedings between the parties.”
Apple sought to suggest that Ms Dwyer was, by the priority date, not really engaged in technical work at all, but only on IP matters. This was based on the way she expressed things in her CV. I reject this criticism. Ms Dwyer plainly had and has very considerable technical expertise in telecoms. Her CV is a short one which she said was typical for Canada, where she lives, and did not seem to have been prepared for this or any other litigation, but to obtain work for her business. It therefore emphasises IP, since that is the expertise she now focuses on.
However, although that criticism was misplaced, Apple made much more headway in relation to whether Ms Dwyer's technical knowledge and experience put her in a good position to give evidence on the specific issues in this case. I thought the following were important:
i) Ms Dwyer did not have any real, specific experience of RAN1. She was not an attendee of any meetings and she did not send any RAN1 emails (of which a repository exists).
ii) She had never done any RAN1 simulations and she was forbidden by Optis' advisers from doing any for this litigation.
iii) She was not experienced with modular arithmetic. She had no practical experience before this litigation and had to look it up. She could not remember if she studied it at university.
iv) She made errors in modular arithmetic in her written evidence. Of course typographical errors happen to everyone and do not in themselves reflect on a witness, but she corrected one particular error without noticing that exactly the same mistake was repeated multiple times over adjacent pages.
v) She actively put forward ideas based on modular arithmetic which were wrong. In particular, she put forward two ways to...
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