FRAND - Mitsubishi Electric Corporation v Oneplus Technology

Author Dori Public Domain Source Wikimedia Commons


Jane Lambert

Patents Court (Mr Justice Mellor) Mitsubishi Electric Corporation v Oneplus Technology (Shenzhen) Co, Ltd and others [2021] EWHC 1048 (Pat) (26 April 2021)

This was a trial to determine whether European patent (UK) 1925142B1 is essential to version 10.0.0 and all subsequent versions of TS36.322 of the 4th generation 3GPP Long-Term Evolution (“LTE’) standard. The registered proprietor of the patent is SISVEL International S.A which is the second claimant in these proceedings.  

The proceedings are part of a wider dispute as to whether the defendants should take a licence from the first claimant's patent pool ("MCP pool") on fair, reasonable and non-discriminatory ("FRAND") terms.  As is often the case in FRAND disputes the defendant implementors denied the patent's validity, its essentiality to the standard and that it had been infringed.  They also disputed the fairness, reasonableness and non-discriminatory nature of the licence terms.  As is also the case in such disputes, the validity and essentiality of the patent and whether it had been infringed is determined separately from whether the licence terms are FRAND.  The trial of the validity and essentiality of a patent and whether it has been infringed is called a "technical trial".

This technical trial came on before Mr Justice Mellor between 9 and 17 March 2021.  His lordship delivered judgment on 26 April 2021 (Mitsubishi Electric Corporation v Oneplus Technology (Shenzhen) Co, Ltd and others [2021] EWHC 1048 (Pat) (26 April 2021). By para [166] of his judgment, the learned judge held that the patent had not been infringed and that it was not essential to the standard.

The Issues
At para [5] of his judgment, Mr Justice Mellor said:

"The Defendants deny essentiality, thereby denying infringement, but also run a series of squeeze arguments to the effect that if EP142 is essential to LTE, then EP142 is invalid on a variety of grounds."

For the meaning of "squeeze" in this context, read the paragraph immediately below the heading "Insufficiency" in my case note Patents - Alcon v Actavis of 22 May 2021.  The second claimant made an unconditional application to amend the patent to forestall any argument that the claimed monopoly covered a regime that indicated only if a single SDU was a perfect fit.

The Patent
The invention for which the patent was granted is called "Radio link control unacknowledged mode header optimization."  The judge said at [67]:

"In line with its title (set out above), the Patent defines the Field of the Invention in [0002] as relating to optimizing radio link control unacknowledged-mode protocol data unit headers, for example, to better support packet switched voice transmissions or transmission of other real time packet switched services over Wideband CDMA air interface."

Claim 1 of the patent claimed:

"A method comprising: inserting, in a radio link control, RLC, entity, at least one service data unit, SDU, to a protocol data unit, PDU, of an appropriate size; characterized in that it further comprises: providing at least one indicator including a length indicator for indicating that a first data octet of the protocol data unit, PDU, is a first octet of a first service data unit and at least one other octet of the protocol data unit, PDU, is the last octet of another service data unit, the first service data unit being either the same or different from the other service data unit, wherein the at least one other octet is the last octet of the protocol data unit, PDU."

At para [4] the judge said that the case turned on the meaning and scope of the term ‘length indicator’ in claim 1 of the patent.   The judge set out the text of the relevant standard under the heading Length Indicator in Annex 1 to the judgment.  

He discussed the common general knowledge of skilled addressees (persons with the skills and knowledge necessary to work the patent) between paras [12] and [66] and the patent in suit between [67] and [95].

Applicable Law
His lordship considered whether the patent would be infringed by compliance with the standard. S.60 (1) of the Patents Act 1977 provides:

"Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say;
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent."

For the purposes of the Patents Act 1977, s.125 (1) provides that an invention shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification.  S.125 (3) adds:

"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."

Art 69 of the Convention provides:

"The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."

"Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Article 2
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."

At para [103] of h9is judgment, Mr Justice Mellor directed himself:

"i) Assessment of the scope of protection of a patent claim involves two separate steps - Actavis v Eli Lilly [2017] UKSC 48 at [54];
ii) The overall process is best described as ascertaining claim scope, since it is only the first of the two steps that concerns claim construction - Fisher & Paykel Healthcare [2017] EWHC 2748 at [75], Richard Meade QC (as he then was).
iii) As to the first step, the applicable principles for normal or purposive construction are those set out in Kirin-Amgen [2005] RPC 9 at [27]-[35], and Icescape Ltd v Ice World International BV [2018] EWCA Civ 2219 at [60].
iv) As to the second step, in order to address whether there is infringement by equivalence, it is necessary to address the three Actavis questions:
a) Notwithstanding that it is not within the literal (that is to say, I interpolate, normal) meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
b) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
c) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
v) For the purposes of the Actavis questions, the court should focus on ‘the problem underlying the invention’, ‘the inventive core’ or ‘the inventive concept’ - Actavis at [60]."

The judge also referred to para [97] of Lord Justice Floyd's judgment in Icescape:

"It should not be thought, however, that the claims do not continue to have an important function. It is variants from the claim which have to achieve substantially the same effect in substantially same way as the invention. The claims remain the starting point for the subsequent analysis of variants. Although we may have edged closer to it, the new approach does not transgress the second of the outlawed approaches in the Protocol, which treats the claim merely as a somewhat vague guideline."

Finally, he reminded himself of para [224] of Judge Hacon's judgment in  Regen v Estar Medical Ltd [2019] EWHC 63:

"The third Improver question requires the court to consider whether the relevant integer, that corresponding to the alleged equivalent, would have been regarded by the skilled person as an essential part of the inventive concept. It is clear from Lord Neuberger's judgment that having done so, it is possible for the court to reach a view that even though the language of the claim does not on any sensible reading cover the variant, this is not of itself enough to justify answering yes to the third question."

Alleged Infringement
Mr Justice Mellor considered the alleged infringement between paras [96] and [102].  He remarked at [102]:

"The Claimants’ infringement case relies on the FI=00 value when inserted into the FI field. The Claimants allege that:
i) The FI=00 value is a length indicator on the proper construction of that term in claim 1 of the Patent. The case is advanced on the basis that the FI=00 value is an element in the PDU header that provides control information describing the payload, which allows the receiving entity to separate the RLC SDUs contained in the data part of the PDU (my emphasis). Thus, the Claimants allege, it has all the characteristics of what a Skilled Person would understand by a ‘length indicator’ in claim 1.
ii) In the alternative, if the FI=00 does not infringe on a normal interpretation, the Claimants allege that the Actavis questions must be answered: 1: yes; 2: yes; and 3: no, so the FI=00 value infringes on the basis of equivalents."

Between para [107] and para [122], the judge considered the characteristics of the invention, the term "perfect packing", the words ‘more than just ‘N+1’’, the problem underlying the invention and the inventive concept.  Next, he construed claim 1 in accordance with the Kirin-Amgen principles between para [123] and para [141] but decided that the standard fell outside its scope. Finally, he considered whether there was infringement by equivalence between [142] and [152] and found that there was none.

Amendment of Claims
As the claim that the patent was essential to the standard would fail regardless of whether or not the claims were amended the learned judge made no order on the second claimant's application.

Prior Art
As the patent was not essential to the standard the judge held at [164] that it was unnecessary to consider the squeeze or the prior art on which it depended.

Further Information
Anyone wishing to discuss this case note or patent essentiality generally is welcome to call me on 020 7404 5252 during normal business hours or he or she may send me a message through my contact form.


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