For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Friday, 17 June 2011

Nokia v IPCom - Round Two of the English Leg of the International Patent Battle

The tussle between Nokia and IPCom has reached the courts once again and is, in the mind of this Kat at least, beginning to appear a little like the legal equivalent of UK TV uber-serial Eastenders - not quite up there with the Coronation Street-like behemoth of the Chiron v Organon litigation in the 1990s, of which this Kat seems to recall at least 14 decisions, but nevertheless still on its way to epic status.


By way of a reminder: IPCom (described by the Court of Appeal in previous litigation ([2011] EWCA Civ 6) as a “non practising entity”, i.e. a patentee with no business of its own in products covered by the rights it holds), owned a number of patents (which it had bought from Bosch) in the field of mobile communications technology. It originally approached Nokia offering to licence these rights, but Nokia refused to pay the sum that IPCom requested. IPCom therefore commenced infringement proceedings against the Finnish company in Germany. This riled Nokia who retaliated, seeking revocation of a number of the patents in Germany and the UK, and the dispute escalated into what has been described as “an international patent battle”.

Floyd J had previously dealt with matters between the two on a number of occasions and had produced three judgments (of 20th November 2009, [2009] EWHC 3034 (Pat) (“the first amendment judgment”); 18th January 2010, [2009] EWHC 3482 (Pat) (“the main judgment”); and 31st March 2010, [2010] EWHC 789 (Pat) (“the second amendment judgment”)). The parties, having taken a little time off to visit the Court of Appeal (which pronounced on the matter on the 20th January 2011, [2011] EWCA Civ 6 – noted by the IPKat here), were recently back before the Judge for another round. Floyd J’s latest decision in the matter was handed down yesterday.

This particular episode of litigation concerned IPCom’s European Patent (UK) No. 1 841 268, a divisional of European Patent (UK) No. 1 186 189 which had found fame in the previous round. The judge had found the parent patent invalid in his January 2010 judgment ([2009] EWHC 3482 (Pat)), and Nokia now sought the same fate for its offspring. IPCom, for its part, made a conditional application to amend the patent and also counterclaimed alleging infringement. Nokia denied this and also sought a declaration of non-infringement in relation to a series of other mobile phones.

Those who take delight in the technical aspects of the UMTS mobile telecommunications standard will, once again, be in seventh heaven reading this judgment. For the rest of the IP population, a summary will suffice. As the Judge explained (at [5]), the patent concerned a “method of managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station.” Essentially, it offered a manner of regulating a UTMS mobile radio network so as to distinguish between various user classes and to dynamically prioritise certain mobile traffic over others. Priority traffic would gain direct access to the network, whereas other traffic would compete for access in a ‘lottery’.

The meat of the judgment revolves around the obviousness attack upon the patent’s validity, although a significant portion of the judgment is also directed to discussion of added matter. Insufficiency gains a brief look-in as well.

Validity
Cutting to the chase, Floyd J was not convinced that any of Nokia’s three prior art references rendered the invention obvious. The same fate befell Nokia’s final challenge – that the alleged invention was actually obvious in light of the common general knowledge (CGK). Despite this being described (at [116]) as “a very simple and attractive argument, untrammelled as it is by any of the details of a practical working system”, it was nevertheless considered to fail. The Judge concluding (at [123]) that even though the patented invention may not have achieved anything in terms of general functionality when compared with the prior art or CGK, “it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way.”

Objections to the amendment of the claim based on added matter went the same way: all failed. Similarly, all objections on the basis of insufficiency were also rejected, the Judge concluding that:
[176] “…The patent would not be understood to be pretending that the invention would work without modification in whatever UMTS system was ultimately agreed. This case is nothing like a patent where there is a missing essential ingredient. The cross-examination of Mr Gould did not show that a system could not have been built based on the draft standards: it merely showed that it would not have been possible to guess what choices would be made in the final standards, and that if there was a difference the phone would not work.”
Infringement
Having concluded that IPCom’s patent was valid, the Judge went on to consider the question of infringement. He noted that there was a “Product and Process Description for each of 14 types of Nokia device designated “the A1”, “the A2”, “the B1”, “the B2”, “the C1”, “the C2”, “the D1”, “the D2”, “the E1”, “the E2”, “the F1”, “the F2” , “the G1”and “the G2”.” A1 and A2 were found to infringe, but the B to G devices were not. As the Judge explained:
[206] “The only case of infringement which IPCom could have advanced on these devices would have to be based on class barring. But they cannot espouse that construction because they have now accepted that on that construction the patent would be invalid over GPRS.”
Accordingly, a declaration of non infringement was granted in respect of the B to G devices.

With this round going, on balance, to IPCom the next instalment in the €12 billion European saga is eagerly awaited.

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