Unwired Planet International Ltd v Huawei Technologies Company, Ltd and Others Unwired Planet, Inc. and Others (Tenth Party) Telefonaktiebolaget LM Ericsson (Eleventh Party)

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeMr Justice Birss
Judgment Date22 Mar 2016
Neutral Citation[2016] EWHC 576 (Pat)
Docket NumberCase No: HP-2014-000005

[2016] EWHC 576 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice, Rolls Building,

Fetter Lane, London, EC4A 1NL

Before:

The Hon. Mr Justice Birss

Case No: HP-2014-000005

Between:
Unwired Planet International Limited
Claimant
and
(1) Huawei Technologies Co., Limited
(2) Huawei Technologies (UK) Co., Limited
(3) Samsung Electronics Co., Limited
(4) Samsung Electronics (UK) Limited
(5) Google Inc.
(6) Google Ireland Limited
(7) Google Commerce Limited
Defendants

and

Unwired Planet, Inc.
Ninth Party
Unwired Planet LLC
Tenth Party

and

Telefonaktiebolaget LM Ericsson
Eleventh Party

Adrian Speck QC, Mark ChacksfieldandThomas Jones (instructed by EIP Legal) for Unwired Planet

Iain Purvis QC and Kathryn Pickard (instructed by Powell Gilbert) for Huawei

Iain Purvis QC and Thomas Hinchliffe (instructed by Bristows) for Samsung

Hearing dates: 8 th, 9 th, 10 th, 15 th, and 16 th February 2016

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.

Mr Justice Birss Mr Justice Birss

Mr Justice Birss:

Topic

Paragraph

Introduction

1

The witnesses

13

The skilled person

16

Common general knowledge

17

The patent

28

Claim construction

51

Infringement

85

Validity

147

Sufficiency

148

Obviousness

178

Common general knowledge alone

186

T Doc 1145/99

225

Added matter

239

Conclusion

242

Introduction

1

This is another judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants. It arises from the third of six trials scheduled to take place in 2015 and 2016. All six trials relate to Unwired Planet's patent portfolio, most of which it obtained from Ericsson. This trial is called "Trial C". The first five trials relate to the validity, infringement and essentiality of the patents themselves and have been called technical trials, the sixth trial relates to FRAND and competition law. The judgments in the first two technical trials (A and B) are [2015] EWHC 3366 (Pat) and [2016] EWHC 94 (Pat). The issues in these various technical trials are distinct.

2

Trial C concerns a European patent, EP (UK) 1 230 818 entitled "Method for improving handovers between mobile communication systems". The patent claims priority from a US filing on 17th November 1999. The patent was granted on 12 th November 2008.

3

The patent is about handover between different "RATs" or Radio Access Technologies. GSM (2G), UMTS (3G) and LTE (4G) are different RATs because the ways in which the radio signals are used to make the communication link between a mobile phone and a base station are different. GSM is an FDMA/TDMA system. When a phone call is in progress the phone transmits digital signals to the base station at a particular frequency which has been allocated to it and in one of eight time slots at that frequency. Each time slot is 577 microseconds long. The uplink signals from each phone in a cell are on a different combination of frequency and time slot. From the point of view of the receiver, all the radio signal energy at that frequency at a particular time is signal from just one phone. Everything else in that time and frequency is noise. The downlink from the base station to the phones works the same way. UMTS is different. It is a CDMA system. All the phones in a cell transmit in the same broad frequency band at the same time. What distinguishes one signal from another is a scrambling code. Each transmitter has a different code. The codes are orthogonal which means that (in theory) they can all be uniquely distinguished from one another. From the point of view of the receiver, the radio signal energy in a frequency band at all times is made up of all the transmitters "talking" at once. If the receiver wants to "listen" to a particular transmitter it uses the right code to pull out from that overall radio energy the signal sent by that transmitter. Everything else, including all the other transmitters, is effectively noise. The base stations in UMTS (called Node Bs) also broadcast something called the CPICH. This is a "pilot" channel which allows phones to find the signals from that base station using the primary scrambling code for the cell. LTE works in a different way again. Its radio access technology uses OFDMA and SC-FDMA. It is not necessary to know how this works or what these acronyms mean.

4

In a cellular telecommunications network handover is crucial in order to maintain connections (phone calls or data). The quality of the channel between the phone and the base station in one cell may start to deteriorate but there may be another cell available which can provide a better connection. The phone is handed over from one base station to another. This can happen seamlessly in the middle of the phone call or data connection so that the user does not notice. It may need to happen very quickly. There are different kinds of handover but this case is about handover known as network controlled mobile assisted handover. The decision to handover is made by the network not the phone, but the phones assist the process by using their radio receivers to make measurements of neighbouring cells and then reporting these results to the network so that the network can make a decision.

5

When the GSM system began, it was generally the only digital mobile telecommunications system in use in a given place. The only handovers in that context were GSM to GSM, in other words intra-RAT handovers. However by 1999 the development of what was to be the next generation of mobile system (UMTS) was well underway. It was clear that phones would be available which were capable of working in GSM or UMTS and there would be a need for inter-RAT handovers in which a phone could be handed over from a GSM cell to a UMTS cell and vice versa.

6

The case the patent is most concerned with is handover from GSM to UMTS (but it is not limited to that). The claimed invention works in this way. The phone has a GSM connection with a serving GSM base station. The phone makes measurements of local GSM neighbour cells and also local UMTS neighbour cells. The GSM measurements measure different things from the UMTS measurements because GSM and UMTS work in different ways. The invention requires the phone to "convert" the UMTS measurements into GSM measurements, compare the converted measurements to a threshold and if they pass to send converted measurement(s) to the GSM base station. That way the network has the information needed to make inter-RAT handover decisions. For present purposes I am ignoring significant arguments about claim construction.

7

Unwired Planet contends that the patent is essential to the GSM standard in the context of both GSM-UMTS handover and GSM-LTE handover. Unwired Planet contends that UMTS (and LTE) measurements are converted in the phones and reported to the GSM base stations based on thresholds. Therefore the patent is essential.

8

The defendants do not agree. They argue that the claimed "conversion" is meaningless. The claims are uninfringeable and the ambiguity is of a kind and severity that the claims are invalid for insufficiency. They deny that the method mandated by the standard falls within the claims but if the way in which the reported measurements are handled in the standard is "conversion" then the claims are obvious over common general knowledge alone and over a prior art document T Doc 1145/99. The obviousness argument is advanced as a kind of Gillette defence in that what is said to be obvious is the way the standards operate.

9

In this judgment I use the word phone to refer to what is variously called a mobile phone, mobile station (MS), mobile terminal and user equipment (UE).

The German decisions

10

There are parallel German cases between Unwired Planet, Huawei and Samsung based on the German designation of this patent. They came before the Landgericht Düsseldorf, which gave judgment on 19 th January 2016. The judgments are 4b O 49/14 and 4b O 120/14, for Huawei and Samsung respectively. The German court held in favour of Unwired Planet. The patent was found to be infringed and the court held that there was no cause to stay the infringement proceedings due to concerns about validity. The court rejected the defendants' arguments of lack of novelty, lack of inventive step and insufficiency. The arguments before the court in Germany are similar to but not identical with the arguments in this case. The evidence is distinct. To try and compare and contrast the German case with this one would just lengthen the judgment even further and I will not attempt to do so.

The claims

11

The claims alleged to be independently valid are method claims 1, 5, 8 and corresponding product claims 9, 13 and 16. Claim 1 (suitably labelled) is in this form:

[a] A method for conveying measurement information from a terminal in a first communication system to a second communication system, characterised by the steps of:

[b] converting a plurality of downlink measurement values associated with said first communication system to a plurality of down link measurement values for said second communication system;

[c] comparing said converted plurality of downlink measurement values with at least one threshold measurement value; and

[d] if at least one of said converted plurality of downlink measurement values exceeds a predetermined threshold measurement value, sending said at least one of said converted plurality of down...

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