The Trial - Conversant v Huawei Technologies and Others

Jane Lambert

Patents Court (Mr Justice Arnold) Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd. and Others   [2019] EWHC 1687 (Pat)

This was a claim by Conversant Wireless Licensing SARL  against Huawei Technologies Co. Ltd. ZTE Corporation and their respective British subsidiaries for patent infringement. The patent in suit was European patent (UK) 1797659 entitled  Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA) along with service specific transmission time control. The claimant contended that the patent was essential to an aspect of the 3rd generation mobile phone Universal Mobile Telecommunications Standard ("UMTS") referred to as Uplink DRX,  As the defendants distributed mobile phones that complied with that standard the claimant complained that the defendants would have infringed its patent.  The defendants denied essentiality and hence infringement and counterclaimed for revocation of the grounds of added matter, obviousness and insufficiency. In response to the allegation of added matter, the claimant sought to amend the claims.  The action and counterclaim came on for trial before Mr Justice Arnold.

Conversant's Portfolio
On its website, Conversant states:

"We have an extensive portfolio of more than 2,000 patents and applications under management, created through our own innovation and active acquisition and partnering programs. Building on our history in semiconductor memory, we’ve broadened our interests into wireless, microprocessors, networking, semiconductor manufacturing, hybrid-electric automotive IP and more. With patents and applications filed in more than 20 jurisdictions, our portfolio is truly global. We’re passionate about expanding our patent portfolio by continually exploring new and complementary areas of technology.

Conversant currently operates seven licensing programs. With more than 15 years’ company patent licensing experience, our in-house IP management practices lead the industry. Our multilingual teams are staffed by technical, business and legal experts who fully understand technology patents. They excel at identifying high-quality patents, providing clearly documented proof of infringement—supported by extensive reverse engineering—and articulating the technical and legal merits of patent assertions to potential licensees. It’s a combination of skills that distinguishes us from many others in our industry."

The patent in suit forms part of a portfolio of patents that the claimant has offered to license on FRAND terms. I discussed FRAND on 8 Oct 2017 and in FRAND - a postscript on 16 Jan 2018.

Jurisdictional Challenge
I have already discussed the defendants' challenge to the jurisdiction of the English courts to grant a global FRAND licence in FRAND - Conversant Wireless Licensing v Huawei and Another on 22 April 2018. Their application was dismissed by Mr Justice Henry Carr in Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd and others  [2018] EWHC 808 (Pat).  At paragraph [2] of his judgment, Mr Justice Arnold noted that the defendants had permission to appeal to the Supreme Court and that their appeal will be heard in October. The defendants' participation in the infringement action and revocation counterclaim was without prejudice to that challenge.

The Invention
The abstract of WO2006038078 which corresponds to the patent in suit is as follows:

"A system and methods for slow medium access control entity (MAC-e) for autonomous transmission during High Speed Uplink Packet Access (HSUPA), and for service specific transmission time control in HUSPA, wherein a control parameter that is independent from the air interface transmission time interval (TTI), hybrid automatic repeat request (HARQ) processes or enhanced dedicated transport channel (E-DCH) scheduling is used. This control defines the minimum time interval between subsequent new transmissions. The control has no impact on retransmissions, which are performed normally."

Claim 1
The claim as proposed to be amended and broken down into integers claimed:

"[A] A method which is executed by a mobile station for autonomous enhanced uplink transmission in which a scheduling grant from a network is not required, comprising:

[B] determining a virtual transmission time interval for a medium access control entity, which virtual transmission time interval defines a minimum time interval that is allowed between enhanced uplink transmissions;

[C] checking to determine whether the medium access control entity is transmitting data packets in a current air interface transmission time interval, by checking whether the medium access control entity is able to empty the radio link control buffer in the current air interface transmission time interval;

[D] and for the case where it is determined that the medium access control entity is not transmitting in the current air interface transmission time interval, transmitting a next data packet only after a period determined by the virtual transmission time interval is determined to have elapsed."

After construing the claim, the judge addressed the question of whether the patent was essential to the standard.  If the answer was "yes", compliance with the standard would need to be licensed.

His lordship analysed the standard and compared it to the integers of claim 1.  The claimant conceded that there was no literal infringement but contended that there was an infringement on equivalents. The judge was not satisfied with the defendants' answer on equivalence and held that the standard fell within the claim. He concluded at [205] that the patent was essential to the standard and that the defendants had thereby infringed claim 1 provided, of course, that the claim was valid.

Added Matter
S.72 (1) (d) of the Patents Act 1977 provides that a patent may be revoked if the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed. He amplified the provision at paragraph [206]:

"There is no dispute as to the applicable legal principles. Added matter requires a comparison of the disclosures of the application as filed and the patent, viewed through the eyes of the skilled addressee. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application, but that may be done explicitly or implicitly. For this purpose, the claims form a source of disclosure as well as the specification. As the Defendants emphasise, one type of added matter is intermediate generalisation, which occurs when a feature is taken from a specific embodiment, stripped of its context and then introduced into the claim when it would not be apparent to the skilled person that it was generally applicable to the invention: see Nokia Corp v IPCom GmbH & Co KG [2012] EWCA Civ 567, [2013] RPC 5 at [56]-[60] (Kitchin LJ). As Conversant emphasises, it is wrong to equate what a claim discloses with what it covers. The law does not prohibit the addition of claim features which state in more general terms that which is described in the specification. What the law prohibits is the disclosure of new information about the invention: see AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40, [2014] RPC 27 at [28]-[40] (Floyd LJ).

Save for the claims, the judge found very little difference between the application and the patent as granted.   The defendants had made 5 allegations of added matter in relation to claim 1 most of which he dismissed. However, on one point he found that the claim as granted and as proposed to be amended disclosed new information about the invention.  It followed that the claim was invalid for added matter and that the proposed amendment could not cure the invalidity.

The defendants contended that the patent was obvious over two items of prior art.  One was a paper submitted by Samsung to a 3rd generation standards working group meeting in Seoul between the 20 and 24 Sept 2004.  The other was US Patent Application 2003/00866381 entitled "System for Improved Power Savings During Full DTX Mode of Operation in the Downlink" filed on 18 Oct 2002 and published on 8 May 2003.  The judge noted at [228] that there was no dispute as to the applicable legal principles.  He did not say what they were in his judgment but readers who wish to be reminded of them will find a full discussion in my note on Mr Justice Arnold's judgment in Allergan, Inc and another v Aspire Pharma Ltd [2019] EWHC 1085 (Pat) (3 May 2019) (see Patents - Allergan v Aspire Pharma 1 Aug 2019).  The judge considered the paper and the patent application at length noting the expert evidence and the arguments of counsel but could find nothing in either disclosure to lead persons skilled in the art to the claimed invention taking into account their common general knowledge.  It followed that the challenge on grounds of obviousness failed.

The challenge on grounds of insufficiency depended entirely on a construction of the claims that the judge had already rejected.  As the defendants had no argument on the construction that he had found to be correct that challenge no longer applied.

Mr Justice Arnold set out his conclusions at [260]:

"i) at least claim 1 of the Patent is essential to Uplink DRX, and therefore the Defendants have infringed at least claim 1 if it is valid; but
ii) the granted claims are invalid for added matter, and the proposed amendment does not cure the invalidity, on the fourth ground advanced by the Defendants (but not on any of the other grounds); although
iii) the claims are not obvious over either Samsung or Terry; and
iv) the claims are not insufficient."

In other words, the claimant had won on every point save one but failure on that point was enough to defeat the action.

Further Information
Anyone wishing to discuss this fascinating case, standard essential patents, FRAND licensing or patent law generally is welcome to call me on 020 7404 5252 during normal office hours or send me a message through my contact page.


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