Lenovo Appeal - Interdigital Technology Corporation v Lenovo Group

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Jane Lambert

Court of Appeal (Lords Justices Birss and Waeby and Lady Justice Falk) Interdigital Technology Corporation and others v Lenovo Group Ltd and others [2023] EWCA Civ 34 (19 Jan 2023)

This was an appeal by the Lenovo Group Ltd. against Judge Hacon's judgment that  European patent (UK) 2 485 558 Method and apparatus for providing and utilizing a non-contention-based channel in a wireless communication system was valid and essential to ETSI's 4G/LTE standard and that it had been infringed (see Interdigital Technology Corporation and another v Lenovo Group Ltd and others [2021] EWHC 2152 (Pat) (29 July 2021)).  Judge Hacon's judgment was one of the cases I discussed in FRAND - The InterDigital v Lenovo Litigation on 3 May 2021. In that article, I referred to that case as "Technical Trial A".  

Judge Hacon's Judgment

The appeal was heard by Lords Justice Birss and Warby and Lady Justice Falk on 14 and 15 Dec 2022. Judgment was handed down on 19 Jan 2023 (see Interdigital Technology Corporation and others v Lenovo Group Ltd and others [2023] EWCA Civ 34 (19 Jan 2023)). The lead judgment was delivered by Lord Justice Birss.  His lordship set out claim 1 of the patent in suit broken down into integers in para [4] of his judgment. He construed that claim between paras [5] and [10].  At para [11] he referred to T-doc no. R2-052409, submitted by one of the Samsung companies at a meeting of the 3GPP TSG RAN Working Group 2 held at Cannes on 10-14 October 2005 and published before the meeting (“Samsung”). A T-doc is a technical document submitted for discussion at 3GPP working group meetings.  Between [13] and ]25] he summarized Judge Hacon's judgment. 

Grounds of Appeal

Lenovo appealed against that judgment on the following grounds:

1 (a)    The judge erred in failing to direct himself to have regard to the absence from the patent specification of any stated advantage of the inventive concept advanced by the patentee at trial."

1 (b)    "The judge erred in holding that the skilled person would not have had a motivation to minimise resource allocation and to maximise the number of UEs that a cell could service."

1 (c)     "Failing to identify that, on his factual findings, on/off keying ('OOK') was an old idea not thought to be of practical utility in cellular networks but this could not be relied upon in support of inventiveness because the Patent did not show it to be practical, contrary to the prejudice."

1 (d)    "Holding that the skilled person at the priority date would not have been aware of any use of OOK in a cellular network implemented up to that date."

2,.     "The Judge erred in rejecting the Defendants' secondary case on obviousness in light of Samsung; a finding of obviousness on this basis necessarily followed from the findings already made in relation to Lenovo's primary case on obviousness."

Ground 1 (a)

Lord Justice Birss started by observing that there was generally nothing in the law that required a patent to state the invention's advantages over the prior art in the specification but there is one circumstance in which stating the advantage would be appropriate.  That is when it has been widely believed that something that turned out to be technically feasible was impossible.  Such belief is called a"prejudice" and an invention that dispels such prejudice is patentable. In order to justify the patent the specification must state the advantage over the prior art. The Court of Appeal rejected Lenovo's contention because prejudice did not apply to this case.

Ground 1 (b)

Lenovo argued that Judge Hacon had misunderstood its expert's evidence. After referring to the trial transcript, Lord Justice Birss rejected that contention. The expert had said that a skilled designer "might" want to have a design that minimized the size of a message but added

"There are trade-offs. You can make a case for either. I could see a skilled designer picking either option, really."

There was nothing in the transcript to support the argument that the skilled person would not have had a motivation to minimize resource allocation and maximize the number of UEs that a cell could service.

Ground 1 (c)

Lord Justice Birss's response was that the idea that OOK was impractical or could not be made to work had formed no part of Judge Hacon's reasoning. His Honour had found that OOK was part of the common general knowledge but the skilled person would not be aware of any use in a cellular network implemented up to the relevant date. That is quite different from a finding that it was thought that OOK could not be made to work.

Ground 1 (d)

The Court of Appeal was satisfied that there had been no error and that the trial judge's conclusion should stand.   The argument had been based on an apparent contradiction between the judge's finding and a passage in a textbook on which he had relied.   The book had been published after the priority date so it was not strictly relevant but Interdigital accepted that it represented the common general knowledge at the relevant time.   Judge Hacon has referred to the textbook to resolve a terminology question and not the issue of whether the skilled person at the priority date would or would not have been aware of any use of OOK in a cellular network being implemented up to that date. 

Ground 2

Lenovo relied on this ground if its primary case failed.  It depended on the contention that the judge's conclusion was inconsistent with his finding of fact.   The Court of Appeal considered the transcript and found that that was not the case.

Disposal

At para [82] Lord Justice Birss said that he had been through the grounds of appeal individually and rejected them. The trial judge's conclusions had been supported by the evidence, There had been no error with which this court could interfere. The judge had reached a result which was well within the range of outcomes open to him. The Court of Appeal dismissed the appeal.

Further Information

Anyone wishing to discuss this case should call me on +(0)20 7404 5252 during UK office hours or send me a message through my contact form.