Patents - Mitsubishi Electric Corporation and another v Archos SA and others
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Patents Court (Mr Justice Mellor) Mitsubishi Electric Corporation and another v Archos SA and others [[2021] EWHC 1639 (Pat) (16 June 2021)
The Proceedings
Disputes between proprietors of patents that are believed to be essential for compliance with a standard ("standard essential patents") or ("SEP") and implementors of the standard ("implementors") tend to be resolved in two stages. First, there are trials to determine whether a patent that is said to be essential to a standard really is essential and valid. These proceedings are sometimes called "technical trials". If the patent is found to be valid and essential to the standard, the second stage is to determine the licence terms which is sometimes called "the non-technical trial".
There has already been one technical trial which I discussed in FRAND - Mitsubishi Electric Corporation v Oneplus Technology on 31 May 2021. This trial, which took place before Mr Justice Mellor between 19 and 30 March 2021, was the second technical trial. The issues were:
There has already been one technical trial which I discussed in FRAND - Mitsubishi Electric Corporation v Oneplus Technology on 31 May 2021. This trial, which took place before Mr Justice Mellor between 19 and 30 March 2021, was the second technical trial. The issues were:
"i) Are the patents essential to the aspect of the LTE (4G) standard concerned with transmission of a scheduling request (SR) to request uplink resources?
ii) Are the patents invalid:
a) because they are anticipated by or obvious over the prior art known as Kwon?
b) in the case of the 689 patent, for added matter?"
The novelty point was hardly mentioned at trial and obviousness was juxtaposed with essentiality in a squeeze argument. Added matter was discussed in a few paragraphs. The main dispute was over essentiality.
At the end of a 367 paragraph judgment, the judge concluded that claims 1 of both patents were valid and essential.
The judge summarised the issues in dispute at para [173] of his judgment in Mitsubishi Electric Corporation and another v Archos SA and others : [2021] EWHC 1639 (Pat):
"More specifically, the question is whether claim 1 of the 259 patent and/or claim 1 of the 689 patent are essential to the functionality of the LTE standard concerned with the transmission by the UE of a scheduling request (SR) by signals known as PUCCH format 1, PUCCH format 1a and PUCCH format 1b that are sent by the UE on a resource known as sr-PUCCH, where the PUCCH is the Physical Uplink Control CHannel. It is the Claimants’ case that they are."
At this point, it is worth mentioning that this case is about using pilot or reference signals sent in telecommunications networks for various purposes. The patents claim a new use for pilot signals. Claim 1 of 259 relates to the use of pilot signals to request uplink resources. Claim 1 of 689 relates to the use of information based on pilot signals to indicate the need (or not) for such resources.
The non-technical trial is due to take place in October 2021.
The Complaint
The claimants alleged that the defendants sold mobile phones that complied with the LTE standard. They argued that each of the phones was bound to fall within claim 1 of both patents in order to comply with the standard. As the manufacture of those phones to that standard had not been licensed, they contended that the sale of the phones in the UK must have infringed the patents. The defendants admitted that their phones complied with the standard but challenged the validity and essentiality of the patent claims.
The judge summarised the issues in dispute at para [173] of his judgment in Mitsubishi Electric Corporation and another v Archos SA and others : [2021] EWHC 1639 (Pat):
The Claims
The learned judge broke down claim 1 of 689 into integers at para [144]:
"[A] Method for transferring of data from a mobile terminal to a base station once a wireless resource enabling the transfer of data from the mobile terminal to the base station has been allocated, the method comprises the steps executed by the mobile terminal of:
[B] - transferring to the base station information indicating the need or not of a wireless resource for the transfer of data from the mobile terminal to the base station based on pilot symbols provided by the base station,
[C] - receiving, in response to the transferred information, from the base station information indicating that a wireless resource is allocated to the mobile terminal,
[D] - transferring to the base station data in the wireless resource indicated as allocated to the mobile terminal."
"[A] Method for transferring of data from a mobile terminal to a base station once a wireless resource enabling the transfer of data from the mobile terminal to the base station has been allocated, the method comprises the steps executed by the mobile terminal of:
[B] - transferring to the base station information indicating the need or not of a wireless resource for the transfer of data from the mobile terminal to the base station based on pilot symbols provided by the base station,
[C] - receiving, in response to the transferred information, from the base station information indicating that a wireless resource is allocated to the mobile terminal,
[D] - transferring to the base station data in the wireless resource indicated as allocated to the mobile terminal."
He broke down claim 1 of 259 into integers at para [145]:
"[A] Method for scheduling the transfer of data from a mobile terminal to a base station in a telecommunication system, characterised in that the method comprises the steps executed by the mobile terminal of:
[B] - determining if resource of the telecommunication system needs to be allocated to the mobile terminal for transferring data to the base station,
[C] - transferring a pilot symbol before the data transmission if resource of the telecommunication system needs to be allocated to the mobile terminal for transferring data to the base station."
"[A] Method for scheduling the transfer of data from a mobile terminal to a base station in a telecommunication system, characterised in that the method comprises the steps executed by the mobile terminal of:
[B] - determining if resource of the telecommunication system needs to be allocated to the mobile terminal for transferring data to the base station,
[C] - transferring a pilot symbol before the data transmission if resource of the telecommunication system needs to be allocated to the mobile terminal for transferring data to the base station."
The underlined words were terms in issue.
Construing the Claims
It will be recalled that s.125 (1) of the Patents Act 1977 provides:
"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
Mr Justice Mellor noted at para [143]:
"This case has not involved any arguments as to equivalents, so my task is to undertake a ‘normal’ interpretation of the claims: see Eli Lilly v Actavis UK Ltd [2017] UKSC 48. This is a very familiar test, but I am reminded that it remains an exercise in purposive construction (Icescape Ltd v Ice-World International BV [2018] EWCA 2219 at [60] per Kitchin LJ (as he then was). It is an objective exercise and the question is always what a skilled person would have understood the patentee to be using the words of the claim to mean."
"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
Mr Justice Mellor noted at para [143]:
"This case has not involved any arguments as to equivalents, so my task is to undertake a ‘normal’ interpretation of the claims: see Eli Lilly v Actavis UK Ltd [2017] UKSC 48. This is a very familiar test, but I am reminded that it remains an exercise in purposive construction (Icescape Ltd v Ice-World International BV [2018] EWCA 2219 at [60] per Kitchin LJ (as he then was). It is an objective exercise and the question is always what a skilled person would have understood the patentee to be using the words of the claim to mean."
The "skilled person" in this case was identified as:
"[12] ......... a systems engineer or architect working on radio access layers in the wireless communications industry, with an interest in improving the capabilities or efficiency of the radio access network. They would be likely to have a particular interest in methods for improving the allocation of resources in the system. They would require a detailed knowledge of the physical (‘PHY’) and medium access control (‘MAC’) layers and their components.
[13] They would have an undergraduate degree or similar qualification in electronic engineering, maths, physics or computer science along with practical experience in the design, simulation or implementation of the MAC and PHY layers of wireless communications products."
[13] They would have an undergraduate degree or similar qualification in electronic engineering, maths, physics or computer science along with practical experience in the design, simulation or implementation of the MAC and PHY layers of wireless communications products."
The expert witnesses disagreed as to the extent to which the skilled person would keep up to date with deliberations of the working group responsible for the specification of the physical layer of the radio interface for EU, UTRAN and E-UTRAN. His lordship did "not consider the ordinary unimaginative skilled person needed to keep up to date with all the discussions being conducted in the relevant groups at a particular standards setting organisation (even one as influential as 3GPP) to carry out his or her job. They would be aware of the effort to develop a long term evolution of UMTS and would be aware that 3GPP was undertaking an exercise to study and evaluate candidate techniques. They could wait to find out what that organisation had adopted in its approved specifications, although, given a specific need to do so, they were well able to find meeting reports and contributions from the relevant working groups."
The skilled person would not read the claims cold. Over the years he would have acquired considerable background knowledge of the relevant technology. That is referred to as "common general knowledge". At the pre-trial review, the judge had directed the parties to prepare a document setting out such common general knowledge. He summarized its contents between para [16] and para [108].
The skilled person would not read the claims cold. Over the years he would have acquired considerable background knowledge of the relevant technology. That is referred to as "common general knowledge". At the pre-trial review, the judge had directed the parties to prepare a document setting out such common general knowledge. He summarized its contents between para [16] and para [108].
The Standard
At para [196] of his judgment, Mr Justice Mellor said that the LTE standards specify how User Equipment, or UEs, can communicate with an Evolved Universal Terrestrial Radio Access Network (E-UTRAN). He analysed the standard between that paragraph and para [268] of his judgment.
Essentiality
Essentiality
It will be recalled that the differences between the parties in construing the claims were limited to the words that had been underlined.
The judge considered what was meant by "pilot symbol" between paras [147] and [160] and concluded that it meant a pre-defined signal known to both transmitter and receiver. Having construed the term broadly his lordship was able to dispose of the defendants' contention that the standard required a specific type of pilot symbol that was not referred to in the patents.
The judge considered what was meant by "pilot symbol" between paras [147] and [160] and concluded that it meant a pre-defined signal known to both transmitter and receiver. Having construed the term broadly his lordship was able to dispose of the defendants' contention that the standard required a specific type of pilot symbol that was not referred to in the patents.
He construed the words "information indicating the need or not" in integer B of claim 1 of 689 at paras [161] and [162] and "based on pilot symbols provided by the base station" between paras [168] and [170]. That enabled him to find at [316] that signalling SR by a PUCCH format 1a or 1b signal on the sr-PUCCH resource satisfied integer C of 259 and that the presence or absence of a PUCCH format 1a or 1b signal on that resource indicated a need or no need for uplink resources which meant that integer B of 689 was also satisfied.
Those findings enabled Mr Justice Mellor to conclude at [367] that claim 1 of each of 259 and claim 1 of 689 are essential to the LTE standard.
Those findings enabled Mr Justice Mellor to conclude at [367] that claim 1 of each of 259 and claim 1 of 689 are essential to the LTE standard.
Validity
The judge noted at [341] that the defendants’ case was not a conventional validity attack but a squeeze on essentiality. Three issues emerged:
"i) The first was based on the step (1) request message. It was common ground that this message is the means by which Kwon proposes that the mobile indicates a need for resources. It was also common ground that this message is not a pilot signal, but it would be sent on scheduled resources and would necessarily be accompanied by pilot symbols to support coherent demodulation of the data in the message (i.e. the buffer occupancy, QoS parameter, power headroom etc.).
ii) The second was based on the step (1-2) pilots. Mr Bishop said that whilst these signals were not sent with the express purpose of indicating a need for resources, they were ‘part of the process by which the mobile requests resources’.
iii) The third emerged for the first time in the cross-examination of Mr Anderson and is based on the reference to ‘a request channel’ for type 3 services in Table 2, but also involves the sending of the step (1) message on this ‘request channel’.
"i) The first was based on the step (1) request message. It was common ground that this message is the means by which Kwon proposes that the mobile indicates a need for resources. It was also common ground that this message is not a pilot signal, but it would be sent on scheduled resources and would necessarily be accompanied by pilot symbols to support coherent demodulation of the data in the message (i.e. the buffer occupancy, QoS parameter, power headroom etc.).
ii) The second was based on the step (1-2) pilots. Mr Bishop said that whilst these signals were not sent with the express purpose of indicating a need for resources, they were ‘part of the process by which the mobile requests resources’.
iii) The third emerged for the first time in the cross-examination of Mr Anderson and is based on the reference to ‘a request channel’ for type 3 services in Table 2, but also involves the sending of the step (1) message on this ‘request channel’.
"Kwon" was a paper entitled ‘Uplink scheduling procedure’ which was submitted by Samsung to a 3GPP Working Group meeting in Seoul in November 2005. Mr Bishop was the defendants' expert and Mr Anderson the claimants'.
The judge dismissed the first two arguments on the grounds that the step (1-2) pilots do not indicate the mobile’s need or not for uplink resources. As for the third argument, his lordship said at [357] that it was not only shot through with hindsight but there was no or insufficient evidence even to get it off the ground.
The defendants also complained that the patent was bad for added matter. The judge held that there was nothing in that attack. Both the application as filed and 689 as granted included, in their descriptions, a clear disclosure of transferring to the base station information representative of a pilot symbol pattern that has been allocated to the mobile by the base station. Identical paragraphs appeared in the application as filed, albeit differently numbered.
Accordingly, claims 1 of both patents were valid.
Further Information
The judge dismissed the first two arguments on the grounds that the step (1-2) pilots do not indicate the mobile’s need or not for uplink resources. As for the third argument, his lordship said at [357] that it was not only shot through with hindsight but there was no or insufficient evidence even to get it off the ground.
The defendants also complained that the patent was bad for added matter. The judge held that there was nothing in that attack. Both the application as filed and 689 as granted included, in their descriptions, a clear disclosure of transferring to the base station information representative of a pilot symbol pattern that has been allocated to the mobile by the base station. Identical paragraphs appeared in the application as filed, albeit differently numbered.
Accordingly, claims 1 of both patents were valid.
Further Information
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