Qualcomm Incorporated (A Delaware Corporation) v Nokia Corporation (A Finnish Company)
| Jurisdiction | England & Wales |
| Judge | The Hon. Mr Justice Floyd |
| Judgment Date | 03 March 2008 |
| Neutral Citation | [2008] EWHC 329 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC 2006 C 02034 |
| Date | 03 March 2008 |
[2008] EWHC 329 (Pat)
The Hon. Mr Justice Floyd
Case No: HC 2006 C 02034
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand,
London, WC2A 2LL
Mr Antony Watson QC, Mr Guy Burkill QC and Mr Thomas Hinchliffe (instructed by Lovells) for the Claimant
Mr Michael Silverleaf QC and Mr Adrian Speck (instructed by Bird & Bird) for the Defendant
Hearing dates: 26th – 30th November; 3–4, 6–7, 10–11, 13–14 and 17–18 December 2007
HTML VERSION OF JUDGMENT
Introduction
This is an action for infringement of two patents. Although the claims are not so limited, both patents are really about cellular mobile telephones of the kind we carry in our pockets. The first, European Patent (UK) No. 0,629,324 (“324" or “the 324 Patent”), relates to an apparatus for controlling the way in which the mobile telephone reduces power consumption by monitoring a channel for incoming messages intermittently. The second, European Patent (UK) No. 0,695,482 (“482" or “the 482 Patent”), relates to a method and device for the correction and limitation of the transmitted power of a mobile telephone. Both the patents are in the name of Qualcomm Incorporated, a US company and the claimant in the action. Qualcomm promoted the introduction in some countries of a multiple access terrestrial telephone system known as “CDMA”, of which more later.
The defendant is Nokia Corporation, a Finnish company which is well known as a manufacturer of mobile telephone handsets. It is accused of contributory infringement of 324, and infringement of 482, by selling those handsets. Nokia denies infringement of both patents, contends that they are both invalid and counterclaims to revoke them. There are also issues about whether the patents are “essential” to the operation of the relevant standards. In relation to the 324 Patent, Qualcomm seeks a declaration that it is essential, and it is agreed by Nokia that if the patent is valid and infringed, then it is essential. On the other hand, Nokia seeks a declaration that 482 is essential if it is infringed, whilst Qualcomm says that it is not essential.
This is the trial of the technical issues relating to infringement, validity and essentiality. By an Order dated 11 th October 2006, Kitchin J. limited the present trial to those issues. He ordered
“[f]or the avoidance of any doubt, all other issues, including issues relating to the meaning or effect of the declarations of essentiality made by Qualcomm to the European Telecommunications Standards Institute in respect of the patents in issue, together with all issues relating to relief (if any) are reserved and shall not form part of the first trial and no interim injunctive relief shall be sought or ordered until issues concerning such relief have been determined”.
Law —Approach to construction
As is often the case, many of the issues which divide the parties to this action are issues of construction of the relevant patent claims. The correct approach to the construction of a patent specification and its claims is now well settled. The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean: see Kirin Amgen v TKT [2005] RPC 9 [30]-[35]. In that case the list of principles to be found in the judgment of Jacob LJ in Technip France SA's Patent [2004] RPC 46 was approved subject to minor modifications. Pumfrey J in Halliburton v Smith [2006] RPC 2; [2005] EWHC 1623 at [68] to [69] listed those modified principles, and added some observations of his own. I will not re-write, far less attempt to paraphrase them here. I will endeavour to apply them.
One observation of Pumfrey J's is important here. The addressee of the specification is the person skilled in the art, equipped with the common general knowledge, no more and no less. The addressee does not have access to documents which are not part of the common general knowledge. This may seem trite, but there was a sustained attempt by Nokia in cross examination to make use of Qualcomm's confidential internal documents (disclosed as relevant to other issues) on the issue of construction. This is wrong, and counterproductive. It is easy to explain why this is so. It is wrong because, if the effect of such an internal document were to force an interpretation different from that which would be arrived at without it, the patent would mean different things to different people. In particular, it would mean different things in the course of the grant procedure (where there is no disclosure) and in litigation (at least when there is chance disclosure on other issues). It is wrong because the process of construction is designed to elicit objectively what the patentee's intention is, not to inquire into his subjective intention. It is counterproductive because (like file wrappers) it leads to lengthy and irrelevant satellite arguments as to the meaning and effect of other documents, which not everybody has access to or can be bothered to read.
No doubt the purpose of deploying such documents is that it is thought that the court, once it has seen what the subjective intention of the patentee was, will be reluctant to hold that the skilled person would have understood that he meant something different. For my part I can say that there is no such reluctance. If anything, it alerts the tribunal to the fact that, without the document, there may be something to be said for the alternative construction. The same goes for file wrappers, which I noticed had been prepared into court bundles, but were not deployed.
It is often said that a patent specification should be construed without reference to the infringement. Yet one cannot sensibly identify the point of construction without understanding what it is about the alleged infringement which is said to take it outside the claims. Pumfrey LJ (sitting at first instance) identified the necessary process in Nokia v Interdigital Technology Corporation [2007] EWHC 3077 (Pat) (unreported 21 st December 2007), when he said (in another case about mobile telephone standards):
“Although one construes a claim 'as if the defendant had never been born', in any complex case it is essential to see where the shoe pinches so that one can concentrate on the important points. It is important nevertheless that the opportunity thus presented to construe the document with one eye on the infringement must be rejected, as far as possible. So when the claim calls for A, and the standard requires B, the right question is not whether A means B, or covers B, or might with hindsight be said to be another example of the genus of which B is also a member, but whether in the context of the specification the skilled man would appreciate that A in the claim encompassed B.”
Jacob LJ was not saying anything different in Technip France SA's Patent (2004) RPC 46,
“Although it has often been said that the question of construction does not depend on the alleged infringement (“as if we had to construe it before the Defendant was born”per Lord Esher MR in Nobel v Anderson (1894) 11 RPC 519 at 523), questions of construction seldom arise in the abstract. That is why in most sensible discussions of the meaning of language run on the general lines 'does it mean this, or that, or the other?' rather than the open-ended 'what does it mean'?”
It is for the court and not the witnesses to come to conclusions about what the claim means. Subject to the well known exception about technical terms with a special meaning, the construction of a patent is a question of law. So an expert report which seeks to parse the language of the claim, and opine that a particular ordinary English word can only in his opinion have a particular meaning is not admissible, or helpful. Both sides in the present case are guilty of adducing evidence of this kind.
What is both admissible and helpful expert evidence is something rather different: evidence about the technical inter-relationship between rival claim meanings and the teaching of the specification. The expert is well able to assist the Court about the impact of different assumptions about the correct legal construction of the claim. It may be that it is only on one construction of the claim that general technical statements made in the body of the patent about what the invention achieves will hold good. It is perfectly legitimate for an expert to point that out, and to give a technical explanation of why, if the rival construction is adopted, the claim would extend to embodiments which would not achieve the patent's technical objective.
None of the above requires the expert to go through the claim and give his definition (wide or narrow) of every word or phrase in it. The written evidence in the present case suffered from this excess. Some of the cross examination did as well. It sometimes takes longer to intervene and stop it than it does to let it happen. It should not start.
The witnesses
In the course of the trial I heard from a number of fact witnesses and four expert witnesses (one per side per patent). Other fact witnesses were relied upon by Nokia but not cross examined by Qualcomm. I set out my assessment of the witnesses I saw and heard here.
Qualcomm's witnesses of fact were:
i) Mr Children. He was an entirely fair witness, who was called to deal with the likelihood of implementation of PCCCH.
ii) Dr Tiedemann, one of the inventors of the 324 Patent, who was called to deal with issues of prior publication of documents. He was criticised by Nokia for the fact that, as it turned out, he did not have as much knowledge of and responsibility for the relevant events as one would have understood...
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