Patents - Interdigital Technology Corporation and others v Lenovo Group Ltd. and others (Technical Trial C)

Author Interdigital Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert
Patents Court (Mr Justice Mellor) Interdigital Technology Corp and others v Lenovo Group Ltd and others  [[2023] EWHC 172 (Pat) (31 Jan 2023)

This was Mr Justice Mellor's judgment in Technical Trial "C".  A technical trial is a proceeding to determine whether a patent is valid, essential to a technical standard and infringed.  If it is then the owner of the patent can apply to the court for an injunction to restrain the infringement subject to an undertaking that he or she may have given to the standard-setting organization to grant any person wishing to implement the standard ("an implementer") a licence to do so on fair, reasonable and non-discriminatory ("FRAND") terms. If the patentee and implementer cannot agree those terms, there has to be a further trial (known as a "FRAND trial") in which the court will determine them.

Related Litigation

I have discussed this litigation in FRAND - The InterDigital v Lenovo Litigation on 3 May 2022 and in Patents - Interdigital Technology Corporation and others v Lenovo Group Ltd. and others on 31 March 2023.   In those articles, I have commented on technical trials "A" and "B" and the FRAND trial. Readers who want to learn more about FRAND can read FRAND  (8 Oct 2017) and FRAND - A Recap (8 Aug 2020).   There is also a very good video on the topic by Sarah Whitehead of the Intellectual Property Office which I have framed in my article, IPO Consults SMEs on SEP Licensing on 24 March 2023 in NIPC News. Interdigital Technology Corp and its subsidiaries ("Interdigital") won trial "A" and Lenovo Group Ltd and its subsidiaries ("Lenovo") trial "B" though that judgment was reversed on appeal. In the FRAND trial, Mr Justice Mellor held that Interdigital was entitled to outstanding royalties of $138.7 million for Lenovo's use of its patents up to 31 Dec 2023.  That was considerably less than the $337 million claimed by Interdigital.

The Dispute

Although Interdigital and its subsidiaries were the claimants it became clear at the pre-trial review that there were no issues on infringement or essentiality. Lenovo sought to revoke European patent  (UK) 2 421 318 B1 for a method and apparatus for transmitting scheduling information in a wireless communication system on the grounds of anticipation and obviousness.  The pior art was 

• a 3GPP Technical Specification TS 25.321 v7.1.0 entitled ‘Universal Mobile Telecommunications System (UMTS); Medium Access Control (MAC) protocol specification’, published in June 2006 (Prior MAC Specification or "PMS"); and 
• US Patent Application US 2006/0146761 A1 ("Kim"),

Lenovo put its case as follows:

(a) Case 1: claim 1 of the patent lacked an inventive step on the basis of an obvious modification to the PMS. Claims 2 and 4 were also obvious.
(b) Case 2: claim 1 was anticipated by the PMS thereby rendering claims 2 and 4 obvious.
(c) Case 3: claim 1 was anticipated by Kim in its figure 9 embodiment.  Alternatively, claims 1, 2 and 4 were obvious over Kim.

At para [17] of his judgment, Mr Justice Mellor said that this case turned on its facts and His Lordship's evaluation of them except for a point of construction.

The Patent

The judge discussed the specification between paras [43] and [56].  The abstract was as follows:

"A method for use in a wireless communication. The method comprising receiving a medium access control (MAC) service data unit (SDU) for transmission by a wireless transmit/receive unit (WTRU), and sending scheduling information (SI) by the WTRU based on having a non-zero grant smaller than needed to transmit the MAC SDU on a scheduled medium access control-d (MAC-d) transmission."

The disputed claims were 1, 2 and 4:

Claim 1 claimed:

"A method for use in wireless communication, the method comprising:
sending scheduling information, SI, (220) by a wireless transmit/receive unit, WTRU (110), in response to having a non-zero grant smaller than needed to transmit a protocol data unit, PDU, of a scheduled medium access control-d, MAC-d, flow."

Claim 2 claimed:

"The method of claim 1, wherein the SI is sent periodically."

Claim 4 claimed:

"The method of claim 2, further comprising: receiving an indication by the WTRU of a period for periodically triggering transmission of the SI."

Applicable Legal Principles

At para [16] of his judgment, Mr Justice Mellor said that he had paid particular attention to the following passages of Actavis Group PTC EHF and others v ICOS Corporation and another [2020] 1 All ER 213, (2019) 167 BMLR 1, [2019] Bus LR 1318, [2019] UKSC 15, [2019] RPC 9:

"(a) [63], where Lord Hodge not only (re-)endorsed the fact-specific approach set out by Kitchin J in Generics v Lundbeck at [72] but also said that another factor which needed to be considered in that case was the routineness of the research, a factor of relevance in this case. I discuss this point somewhat further below.
(b) [70] regarding motive, when the relevant motive in Lenovo’s Case 1 is a very general one of seeking to implement a commercially realistic HSUPA system (as opposed to one where every problem has been solved).
(c) [72] regarding the need to avoid hindsight."

Even though the judge did not spell it out in his judgment, applied the Windsurfing/Pozzol analysis:

“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

Skilled Addressee

The parties agreed that the skilled addressee would be a systems engineer working on HSUPA technologies and focused on the MAC layer. He or she would have a degree in electrical engineering or computer science and around 3-5 years of experience in the mobile communications industry. 

Common General Knowledge

The agreed common general knowledge is annexed to the judgment.  The points of dispute are set out between paras [28] and [34].

Claim Construction
As it was not possible to identify the inventive concept of claims 1, 2 and 4, the judge sought to construe them.  As no issue of equivalents arose, His Lordship undertook a normal construction.  He reminded himself of paras [8] to [12] of Lord Justice Floyd's judgment in Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz Ltd [2017] EWCA Civ 199::

"[8]…..In Beloit v Valmet (No 2) [1995] RPC 255 at 270, Jacob J, as he then was, explained that it was not normally legitimate to construe claims using the prior art, because there was normally no reason to suppose that the patentee, when he set the limits of his claims, knew of any individual item of prior art. However, he continued:

"Of course the position is different if the prior art is specifically acknowledged in the patent. The purposive construction would lead to a construction of a claim which did not cover that acknowledged prior art: it can hardly have been the inventor's purpose to cover that which he expressly recognises was old."

[9] Jacob J's conclusion that a patentee would not readily be taken to be intending to claim something which he expressly recognised as old is, as Henry Carr J pointed out, no more than an application of the well-known principle referred to by Lord Russell in Electric and Musical Industries v Lissen (1936) 56 RPC 23 at 39:

" … if possible, a specification should be construed so as not to lead to a foolish result or one which the Patentee could not have contemplated."

[10] Mr Burkill QC, who appeared on behalf of H&M with Mr Geoffrey Pritchard, relied on a passage in Terrell on the Law of Patents 18th Edition at 9-254 which suggests that the same approach may be appropriate where the consequence of a construction would be that the patent would be obvious in the light of common general knowledge. However, in Adaptive Spectrum v British Telecommunications Ltd [2014] EWCA Civ 1462 I had some reservations about that:

" … as soon as one departs from documents specifically acknowledged in the specification, the skilled reader has no basis for assuming that the patentee was aware of the document in question. Still further, where the objection is one of obviousness rather than lack of novelty, a value judgment is involved on which widely differing views are possible. It is true that if the document is said to form part of the common general knowledge, it might be said to be more likely that the patentee is aware of it. But a patentee may have been isolated from the common general knowledge, or may, despite the later finding of obviousness, have genuinely believed that he had made an invention over it."

[11] I remain of the view that the fact that a particular construction may lead to a conclusion that the invention is obvious in the light of the common general knowledge is likely to be a much less potent factor weighing against that construction than a specific acknowledgement of prior art onto which the claim will read directly.
[12] Finally, it is of course well settled that one cannot disregard obviously intentional elements in a claim. Deliberate limitations must have a meaning: see STEP v Emson [1993] RPC at 522 summarised in Virgin Atlantic at paragraph 5 (vii).’

The point of construction upon which the parties disagreed was the meaning of the words "in response to" in claim 1. The judge held that the words referred to the new trigger condition described in l [0027] and [0028].  He rejected Lenovo's argument that a broader construction applied.

Differences between Prior Art and the Construed Claims

The judge started with Lenovo's Case 2 because it depended on Lenovo's broad construction of claim 1 which his lordship had just rejected.  He added that even if he had found claim 1 had been anticipated he would not have found claims 2 and 4 to be obvious.

A large part of the judgment addressed the last two steps of the Windsurfing/Pozzoli analysis in respect of Case 1.  His lordship introduced Lenovo's arguments between para [120] and para [129].   He traced the development of the evidence in support of those arguments and Interdigital's criticism between [130] and [143].  He considered each of Lenovo's arguments between [144] and [158] and [189].  He summarized Lenovo's contentions and his responses in [206].  At para [207] he rejected Lenovo's Case 1.

The learned judge analysed Kim between [209] and [245].  He considered first whether Kim had anticipated the invention and decided at [254] that it had not. At [261] he rejected the obviousness argument because it was driven by hindsight.

Between [262] and [264] he considered claims 2 and 4 and found them both to be valid.

Conclusion

At para [265] Mr Justice Mellor found the patent in suit to be valid and essential.  At para [5] of the FRAND trial his lordship noted that no appeal had been lodged against his judgment in trial "C". He also noted at [957] of the same judgment that Lenovo had agreed to take a FRAND licence in respect of the patent.

Further Information

Anyone wishing to discuss this case may call me during office hours on 020 7404 5252 or send me a message through my contact form at any other time.