Patents - Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd. and Others

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Jane Lambert

Patents Court (Mr Justice Birss) Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd and others [2020] EWHC 14 (Pat) (8 Jan 2020)

This was a patent infringement claim by Conversant Wireless Licensing SARL against Huawei Technologies Co Ltd., ZTE Corporation and their respective British subsidiaries.  The patents alleged to have been infringed are European patents (UK) 1 878 177 ("177"), 3 267 722 ("722") and 3 197 206 ("206"). Conversant had declared those patents to be essential to certain 3G and 4G standards. It argued that manufacturing, distributing or marketing items that met those standards without its licence would necessarily infringe the patents. The defendants contended that the patents were invalid on various grounds and denied that the patents were essential to the standards.

The Trial
The action came on for trial before Mr Justice Birss on 7, 8, 9, 11, 15, 17, 18 and 21 Oct 2019.  His lordship delivered judgment on 8 Jan 2020. Even though he revoked 206 and some of the claims of 177 and 722 he said at paragraph [257] of his judgment that the successful party was Conversant. He upheld the other claims and found that they were essential to the relevant standards.

The Patents
Patents 722 and 206 are divisionals, that is to say, patents granted for applications derived from the application for 177.  Patent 177 was filed on 25 April 2006 and claimed priority from US patent number US 675127 P for "Fixed HS-DSCH or E-DCH allocation for VOIP (or HS-DSCH without HS-SCCH/E-DCH without E-DPCCH)" which was filed on 26 April 2005.

The Inventions
The inventions for which those patents were granted offered a solution to "the VOIP overhead problem", that is to say, the excessive amount of control data sent with every data packet in a VOIP or other low bit rate service. The reason why that is a problem is that the control data absorbs resources that could be used for transmitting data packages.

Validity of 206
The judge had noted at paragraph [11] of his judgment:

"In relation to 206 the only validity issue is priority. If claim 1 loses priority then it is common ground in these proceedings that it is invalid. The defendants have dropped their validity attack as at the claimed priority date so if claim 1 maintains priority, it is valid."

He, therefore, dealt with that issue first.

Art 87 (1) of the European Patent Convention provides:

"Any person who has duly filed, in or for
(a)  any State party to the Paris Convention for the Protection of Industrial Property or
(b)  any Member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."

S.130 (7) of the Patents Act 1977 declares that certain sections of the Act are to be interpreted as having the same effect as the corresponding provision of the Convention.  The section that corresponds to art 87 (1) is s.5 (2) (a) of the Act:

"If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A) (a) or (b) below, then;
(a)    if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which that matter was disclosed, or, if it was disclosed in more than one relevant application, the earliest of them."

The effect of those provisions had been considered by the Court of Appeal in  Medimmune Ltd v Novartis Pharmaceuticals UK Ltd. and Others  [2013] RPC 27, [2012] EWCA Civ 1234 between paragraphs [151] and [154]:

"[151] Section 5(2)(a) of the Patents Act 1977 provides that an invention is entitled to priority if it is supported by matter disclosed in the priority document. By section 130(7) of the Act, section 5 is to be interpreted as having the same effect as the corresponding provisions of Article 87(1) of the European Patent Convention. Article 87(1) says that priority may be derived from an earlier application in respect of the "same invention".
[152[ The requirement that the earlier application must be in respect of the same invention was explained by the enlarged Board of Appeal of the EPO in G02/98 Same Invention, [2001] OJ EPO 413; [2002] EPOR 167:

'The requirement for claiming priority of 'the same invention', referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.'

[153] The approach to be adopted was elaborated by this court in Unilin Beheer v Berry Floor [2004] EWCA (Civ) 1021; [2005] FSR 6 at [48]:

'[48]. …….The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim.'

[154] In Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat), I added this:

'[228] So the important thing is not the consistory clause or the claims of the priority document but whether the disclosure as a whole is enabling and effectively gives the skilled person what is in the claim whose priority is in question. I would add that it must "give" it directly and unambiguously. It is not sufficient that it may be an obvious development of what is disclosed. ;'

At paragraph [59] of his judgment, Mr Justice Birss observed:

"With an eye on this case, it is worth noting that the requirement under the 1977 Act is that the invention claimed is supported by the priority document (s5) and this has the same effect as Art 87 EPC that priority is given to the "same invention". Therefore the test is not only an enablement test although enablement is required and it is not only an added matter test, although adding matter is likely to lead to a loss of priority. A granted claim which is wider in scope than any claim or disclosure in the priority document may still be entitled to priority but to do that it must be supported by the priority document."

Claim 1 of 206 claimed:

"a) Method for execution in a mobile station (UE1) that is receiving control information on a High-Speed Shared Control Channel, HS-SCCH, which is a signalling channel of a radio interface between the mobile station and a High-Speed Downlink Packet Access, HSDPA, radio access network in a wireless telecommunications system, wherein the HS-SCCH signalling channel is a shared physical layer channel used to transmit said control information, the method comprising:
b) storing default HS-SCCH parameters received via Radio Resource Control, RRC, signalling for use in decoding data packets received over a High-Speed Physical Downlink Shared Channel, HS-PDSCH, which is a shared data channel;
c) receiving said control information signaled on the HS-SCCH signalling channel;
d) determining, using a mask for the mobile station, whether the control information is for said mobile station;
e) responsive to determining that the control information is for said mobile station, decoding a said data packet on the shared data channel according to said control information;
f) responsive to determining that the control information is not for said mobile station, decoding the data packet on the shared data channel using said stored HS-SCCH parameters; and
g) delivering decoded data to higher layers."

The judge did not find that the priority document did not disclose to the skilled reader anything other than an approach in which the user knows when to receive the relevant data, in other words, a fixed time allocation approach, and that was the limit of the disclosure.  His lordship reminded himself that just because the priority document is limited does not necessarily mean that a claim which is not so limited must lose priority. The question of support still needs to be considered. However, in this case, the difference between the scope of claim 1 of 206, in covering a case in which timing is not fixed, is materially wider than the disclosure of the priority document and relates to a different concept. What would be required to implement it is different and its effects would be different too. It was not the same invention and was therefore not entitled to priority.

Validity of Patents 177 and 722
The defendants challenged the remaining patents on grounds of anticipation, obviousness and added matter.

Anticipation
One of the conditions of patentability is that the invention is new within the meaning of s.1 (1) (a) of the Patents Act 1977.  S.2 (1) provides that an invention shall be taken to be new if it does not form part of the state of the art.   The only prior art relied upon by the defendants was a doctoral dissertation by Robert Bestak which was published on 18 April 2004 when he was a graduate student at the École Nationale Supérieure des Telecommunications in Paris.   The judge analysed and summarized Dr Bestak's dissertation between paragraphs [118] and [140] of his judgment.

Having construed the claims of 177 and 702 (which are conveniently set out in an Annex) between paragraphs [76] and [116], Mr Justice Birss considered whether any of them had been anticipated in Dr Bestak's dissertation between [141] and [165]. He held at [165] that claims at 18 and 19 of patent 177 and 1 and 2 of 722 had been anticipated by Bestak but the remaining claims had not.

Obviousness
Another condition of patentability is that the invention involves an inventive step (s.1 (1) (b) of the Act. S.3 provides:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above)."

The judge found at [27] that the skilled addressee would be a team led by a radio access network architect and would include an engineer working at the boundary between layer 1 and layer 2 (layer 1 being the physical layer and layer 2 the data link layer) which includes the Medium Access Control or MAC layer.  He set out their common general knowledge between [28] and [57].  The prior art was Dr Bestak's dissertation.

His lordship noted at [166] that:

"The Pozzoli approach to considering obviousness is to identify the inventive concept, identify the person skilled in the art and the common general knowledge, identify the differences between the claim and the cited item of prior art, and then ask whether the claimed invention is obvious to the person skilled in the art."

The judge identified the inventive concept at [168] as "the idea of not sending an HS-SCCH control message with every data packet sent on the HS-DSCH." He added:  "The idea is generalised out in the claims so that it is not limited to the downlink nor limited to UMTS, but nevertheless this is a convenient way of summarising the core idea."

Mr Justice Birss applied the Pozzoli test to claims 20 and 25 of 177 and 3, 13 and 14 of 722.  At paragraph [247] he found claim 20 of 177 and 3 of 722 was not obvious over Bestak.  At [254] he found claim 35 of 277 and 13 of 722 not be obvious. He added at [255] that as 14 of 722 is dependent on 13 it followed that that claim was not obvious either.

Added Matter
Ar paragraph [10] of his judgment, the learned judge noted that the defendants challenged the relevant claims of 177 and 722 on the grounds that they involved added subject matter. They also objected to claim amendments on the same grounds and also that those amendments lacked support.  At paragraph [194] he emphasized that "added matter relates to information disclosed by the granted patent (or as a result of a post-grant amendment) which was not disclosed in the patent application as filed." He added that

"a claim which is wider in scope but does not disclose any new information does not add matter and is not invalid on that ground. Lack of support is a different idea. A claim can lack support if it is wider in scope than something fairly based on the disclosure in the application as filed even if the extra width is only covered by the claim and not disclosed by it. But lack of support is not a ground of invalidity available post-grant to a granted claim, whereas it is a valid objection to a post-grant amendment. So to be allowable, a post grant claim amendment must not cause the amended claim to lack support or add matter, while in relation to a granted claim, the only validity objection is added matter. Lack of support may lead to a loss of priority but that is another matter."

He, therefore, rejected all the "lack of support" and "added matter" objections to  177 and 722.

Essentiality and Infringement
Between paragraphs [204] and [234] his lordship considered whether the patents were essential to the relevant 3G and 4G standards.  He analysed the technical requirements of those standards between  [206] and [223] and the claims of the patents.  He found claims 20 and 35 of 177 and 3 and 13 of 722 to be standard-essential patents.

Further Information
This was the latest of a series of technical trials between the same parties and it is without prejudice to an appeal by Huawei and ZTE against the Court of Appeals decision in Huawei Technologies Co, Ltd v Conversant Wireless Licensing S.A.R.L. [2019] EWCA Civ 38 (30 Jan 2019).  

Anybody wishing to discuss this case or standard-essential patents generally may call me on 020 7404 5252 during office hours or send me a message through my contact form. 

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