Skip to content

UK – Adaptive Spectrum v. British Telecommunications

28 Nov 2014

Adaptive Spectrum and Signal Alignment Inc. v British Telecommunications PLC, Court of Appeal, London, UK, 11 November 2014, Patten LJ, Floyd LJ, Sir Stanley Burnton

In its judgment of 11 November 2014, the Court of Appeal dismissed BT’s appeal against a decision of Birss J that ASSIA’s patent EP(UK) 1 869 790 (’790) was both valid and infringed. The Court of Appeal also allowed ASSIA’s appeal against the decision of Birss J that claim 1 of ASSIA’s second patent, EP(UK) 2 259 495 (’495) was valid but not infringed, and substituted a finding of infringement of claim 6 of the 495 patent.

The contested patents both involve ADSL-technology, specifically the modems used to communicate between the customer’s router and the central office in the network. The ’790 patent related to managing line profiles in a DSL system and claimed, inter alia, a profile state transition matrix (PSTM) which assigns priority to line profiles for transmission based on data collected during the operation of the line profile. The ’495 patent related to a controller within the network which collects data from modem pairs, analyses that data and then sets the operation margins for the modem pair.


The ’790 patent
BT raised two points on appeal with regard to ’790. Firstly it argued that at trial ASSIA had not raised the point upon which it eventually succeeded. The Court of Appeal held that the point on which ASSIA succeeded did fall within its existing pleading. Under the terms of an earlier order to produce a statement of case, ASSIA was not obligated to explain every potential argument it may make. The Court also stated that even if BT had a legitimate claim in that it had been misled by ASSIA’s statement of case, it would still have to show how and why it was prejudiced by that fact. On the facts, BT had plenty of opportunity to object and argue prejudice, but had not done so.

With regard to the infringement claim itself, BT operated a network (the NGA network) which used data collected from the modems to assign priority for line profile transfers. Each profile on the NGA system contained controls specifying maximum and minimum data rates. ASSIA claimed that the caps constituted a PSTM and thus infringed ’790. Feature (f) of the claimed invention referred to a PSTM indicating a plurality of possible transitions from the current line profile to one of the plurality of target line profiles, and a priority value specifying the priority of transitions for each profile. Feature (j) referred to estimated data from the collected operational data. The Court of Appeal found that, in regard to both “PSTM” and “data”, the terms were not to be understood technically but rather as they would be construed by the skilled person. As such, the Judge was entitled to find that the NGA infringed the ’790 patent.

The ’495 patent
ASSIA appealed the Judge’s finding of non-infringement of claim 1 of ’495. The Court of Appeal agreed with ASSIA’s argument that claim 1 should be interpreted more broadly than what was allowed by the Judge. ASSIA conceded that under the broader interpretation, claim 1 was invalid. It relied instead on claim 6. In this regard, the Court of Appeal found that the Judge had misinterpreted expert evidence regarding claim 6, leading him to believe that it would be obvious over the common general knowledge. The Court of Appeal held the evidence did not render claim 6 obvious, and accordingly substituted the finding of non-infringement of claim 1 with a finding of infringement of claim 6.

Read the decision here.

Head note: Nicholas Fox, Simmons & Simmons