Court of Appeal dismisses Huawei's first appeal in Unwired Planet patent fight

The IPKat trying to stop time on a novelty clock.  
With the ink yet to dry on the judgment of Birss J on the non-technical issues arising from the Unwired Planet litigation (reported here and, with further analysis on its way), the Court of Appeal (Gross LJ, Floyd LJ and Arnold J sitting as a Court of Appeal Judge) handed down its decision in the first of the three related technical trials to receive judgment from the Patents Court in 2015/16.  With the AmeriKat busy at Fordham, she has depended on Steven Willis (Bristows) to update readers:  
"The patent in suit concerned a polling system for use in a wireless communication network.  At first instance, Birss J held the patent to be valid and infringed by wireless telecommunication networks that operate in accordance with the LTE standard i.e. the patent was standard essential.

Huawei was ultimately unsuccessful in its appeal of the Judge’s findings on novelty, entitlement to priority and inventive step, but the judgment raises some interesting issues concerning:
(i)      what constitutes the state of the art for the purposes of novelty and in particular what is meant by “before the date of filing” under Article 54(2) EPC;
(ii)     the approach to entitlement to priority where implicit disclosure is relied upon; and
(iii)  challenges to a finding of inventive step where the Judge at first instance relied upon secondary evidence.  

Article 54(2) EPC states that ”the state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application [emphasis added].

There was a dispute as to whether the “Ericsson TDoc” formed part of the state of the art.  There was however no dispute that if the Ericsson TDoc did so amount, the Patent was anticipated.

The “Ericsson TDoc” was uploaded to a publically available server operated by the European Telecommunications Standards Institute (ETSI) in Europe at 08:36 (CET) on 8 January 2008 / 02:36 (EST) on 8 January.  Over 14 hours later, the priority document was filed at the USPTO, which was under EST at the time, at 22:59 (CET) on 8 January / 16:59 (EST) on 8 January.

Huawei alleged that as the Ericsson TDoc was made available at a point in time where it was 7 January in some parts of the world (including Hawaii and California), it had been made available “before the date of filing” and thus formed part of the state of the art for the purposes of novelty.   
For the visual learners, the Court of Appeal helpfully set out the below table summarising the position [emphasis added]:      

CET (GMT +1)
EST (GMT -5)
Hawaii (GMT -10)
Ericsson TDoc uploaded to ETSI server
8 Jan 08:36
8 Jan 07:36
8 Jan 02:36
7 Jan 21:36
Priority Doc filed at USPTO
8 Jan 22:59
8 Jan 21:59
8 Jan 16:59
8 Jan 11:59 
At first instance, Birss J asked two questions: (i) what is the priority date?; and (ii) was the putative prior art made available to the public before that date?  Birss J considered the timezone in the patent office of filing to be the relevant one for determining both questions.  Thus the Ericsson TDoc was made available at 02:36 on 8 January which was not “before the date of filing” for the purposes of novelty.  “The fact that this time was 7th January in some places in the world such as Hawaii is irrelevant.”

Floyd LJ upheld Birss J and set out the position as follows: “The priority date is the 24 hour period of the day on which filing took place, in the time zone of the patent office where it was filed.  The publication must occur before that day, on a time basis, by reference to the time zone of the patent office of filing.” 
Entitlement to Priority
The key question before the Court was whether there was disclosure in the priority document of polling "upon assembly" i.e. just before the data unit was transmitted rather than afterwards notwithstanding references in the priority document to the counting and polling of “transmitted” data units and bytes.

In determining the issue, Floyd LJ emphasised a number of points that should underpin the Court’s analysis:
  •  the threshold for entitlement to priority is significantly lower than that for determining whether a claim is novel:  the exercise of determining priority involves asking whether the invention is directly and unambiguously derivable from the priority document, not whether every possible embodiment of the invention is so derivable.”  To adopt the alternative approach would make claiming priority “impossibly hard”;
  •  the priority document must not be read in a vacuum: “both explicit and implicit disclosure must be taken into account”.  This is not the same as adding to the disclosure something which is obvious in light of it; and
  • due to the importance of assessing the common general knowledge in order to determine what is implicitly disclosed, an appellate Court must exercise caution when interfering with a first instance finding relating to priority. 
Floyd LJ held that the trial Judge was entitled to base his finding on the common general knowledge functionality of UMTS.  Accordingly polling upon assembly was disclosed in the priority document.  “To read it otherwise would be to do so in a vacuum.”          
Inventive Step
The inventive step issues focused on the Judge’s approach to secondary evidence.  Obviousness was alleged over a single piece of prior art – the Motorola TDoc – a submission to the relevant 3GPP standard setting committee (“the Committee”).  At first instance, the Judge identified the fact that by the priority date the Committee had rejected the proposals in the Motorola TDoc  as Unwired Planet’s strongest argument against the allegation of obviousness.    
Huawei argued that the Judge was wrong to have placed such weight on the secondary evidence and that the "primary" evidence of the expert witnesses effectively compelled a finding of obviousness.  The Court of Appeal reiterated the oft-cited reluctance with which an appellate Court should interfere with a first instance finding of an obviousness.  The Court noted that Huawei’s submission “effectively requires the court to conduct a detailed review of the expert evidence to see whether it did indeed compel a finding of obviousness.”  The Court went on to say that if Huawei’s submission did relate to an error of principle, “it would seem to require an almost complete review of the evidence by this court in every case where secondary evidence is relied on.”  This, said the Court, would be a “serious inroad” to the approach to obviousness on appeals.

Despite these reservations, the Court did go on to consider and reject the suggestion that the primary evidence did indeed compel a finding of obviousness, or that the Judge thought that the primary evidence showed that the invention was obvious.  However, in view of the Court of Appeal’s qualms with the approach, it seems unlikely that submissions of this nature will be welcomed in future cases."

Court of Appeal dismisses Huawei's first appeal in Unwired Planet patent fight Court of Appeal dismisses Huawei's first appeal in Unwired Planet patent fight Reviewed by Annsley Merelle Ward on Monday, April 24, 2017 Rating: 5


  1. What always worries me in this respect is A54(3) EPC. I could scan through the patent publications in the afternoon of the publication day, find something interesting, add a few trivial features (the processor may be silicon based, a copper containing current distributor may be used, etc.) and file it as my patent application before 24:00. As the original application is only prior art according to A54(3) and I have some trivial features for novelty, I should be fine and get it granted.

  2. Yes, but YOU will have to prove that I am not entitled. Of course, if I copy and paste your specification, it will be somewhat easier to prove what I did, but generally it can be problematic, especially when I look for (e.g. mechanical) inventions that do not require a lot of experiments and/or research but more or less only a smart idea. I would prefer if the EPO published all documents on 23:59 if that is technically possible.


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