Patent - Petition for revocation - Obviousness - Inventive step

Nokia OYJ (Nokia Corporation) v Ipcom Gmbh & Co Kg: CA (Civ Div) (Lord Justices Laws, Etherton, Kitchin): 10 May 2012

The claimant company was a designer and manufacturer of mobile phones. The defendant company was the owner of a telecommunications patent portfolio and was the registered owner of a European Patent (UK) No 1 186 189 (the patent).

The patent was concerned with controlling access to an uplink channel from a mobile phone to base stations, called the random access channel (RACH). The RACH was a shared channel, which was used by all the mobile phones in a base station’s cell to ask the network, via the base station, for a dedicated channel when they wanted to make or receive a call.

The RACH could accommodate some degree of simultaneous access attempts, but should demand become too great, user signals might collide with each other with the result that only some and, on occasions, hardly any, would get through. That competition for the RACH was called ‘contention’ or ‘collision’. There were two ways of dealing with contention on the RACH by well-known sets of rules for limiting access to the RACH by way of ‘lottery’ and ‘access classes’.

Access was conferred by lottery or by access class, but not by both together. The patent purported to limit access by lottery and by access class. The patent application also introduced notions of restricting access based on a lottery and granting access based on privileged class, but in general the patent was said to provide a system which saved transmission capacity. The claimant commenced proceedings claiming that the patent was invalid.

The claimant’s case was, first, that the patent had been invalid for added matter, since the claim by way of a first embodiment had generalised the way in which the form of processing dealt with the two independent routes of access features, and then drafted a claim based upon that generalisation while leaving out other aspects of the feature, and that by a second embodiment, the defendant had included freestanding elements. Second, the claimant claimed that the patent was invalid for obviousness or insufficiency. The judge found that the patent had been partially valid and infringed by certain mobile phone devices of the claimant, but that other of the claimant’s devices had not infringed. The claimant appealed.

The claimant argued, first, that the judge had erred in finding that the patent was not invalid for added matter since an earlier application had clearly and unambiguously disclosed the inventive significance and purpose of the feature in question. Second, the judge should have found that the patent was invalid for obviousness or insufficiency and should not have found that the claimant’s device had infringed the patent. The appeal would be dismissed.

(1) It was not permissible to introduce into a claim a feature taken from a specific embodiment, unless the skilled person would have understood that the other features of the embodiment were not necessary to carry out the claimed invention. It should be apparent to the skilled person that the selected feature was generally applicable to the claimed invention absent the other features of that embodiment. Ultimately, the key question was whether the amendment presented the skilled person with new information about the invention which was not directly and unambiguously apparent from the original disclosure. If it had, then the amendment was not permissible (see [59], [60] of the judgment).

In the instant case, the application disclosed a system for allocating access to the RACH not only by user class but also by lottery. It taught clearly and unambiguously that mobile stations might access the RACH on account of their association with a user class, in which case they might do so independently of the received access threshold value, or they might access the RACH on the basis of an evaluation of the access threshold value by comparing that value with a random or pseudo-random number drawn by the mobile, and determining whether it was greater than or equal to the access threshold value.

Therefore, there had been no need for the skilled person to look to the added material. However, if he chose to do so, he would have appreciated that it had inevitably been the case and that an adapted evaluation had also been contemplated. Further, the judge had been correct to have found that although the patent had not stated that the overall concept was advantageous, the patent had stated that access to class- and lottery-based permission were both advantageous, and that it was implicit that a combination of them would have been as well. Accordingly, the judge had been right to find that the patent was not invalid for added matter (see [83], [118], [120] of the judgment).

(2) There was no dispute that it had been known that the RACH access was controlled using class-barring followed by the lottery for those classes which were not barred. Users in barred classes could not have attempted access at all, and had to wait until their class had become non-barred. By contrast, in the invention of the patent, mobiles that had belonged to a permitted class were able to attempt to access the RACH irrespective of their performance in the lottery. Mobiles which had not belonged to a permitted class might nevertheless have attempted to access the RACH if they were successful in the lottery.

The invention had the advantage over the prior knowledge in that it had been less complex and had used less bandwidth. It also had the advantage that it had provided the particular vertical and horizontal RACH control. There had been no more than sufficient evidence before the judge to have concluded that there was something useful about the functionality and operation of the invention of the patent. In terms of general knowledge, it had always been possible to bar classes of users when required. However, the patent, on the other hand, provided a different solution which had involved the dynamic adjustment or privileged groups of users upon whom priority access was conferred while controlling other users by adjustment of a threshold value. The judge had a number of matters to which he had been entitled to attach such weight as he considered appropriate.

He also had regard, entirely properly, to various proposals representing the contemporaneous thinking of the major telecommunications companies. The judge had ample material before him upon which to reach the conclusion he had that the patent had not been invalid for the reason of being obvious over the common general knowledge. Further, the judge had been entitled to reject the other attacks on the patent based on obviousness and insufficiency.

Further, the claimant’s device had produced a scenario in which, depending upon the answer of the evaluation, access for a mobile phone was either given immediately or after delay. That was a determination of access permission, and that determination was made on the basis of the evaluation of the access threshold value (see [131], [132], [140], [149], [152], [153], [159], [166], [167], [171], [172] of the judgment). In those circumstances, the claimant’s device had infringed the defendant’s patent (see [181] of the judgment). Decision of Floyd J [2011] All ER (D) 118 (Jun) affirmed.

Richard Meade QC and James Abrahams (instructed by Bird & Bird) for the claimant; Iain Purvis QC and Brian Nicholson (instructed by Bristows) for the defendant.