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UK – Conversant v Huawei / Appeal / Added matter

20 Oct 2020

Conversant v. Huawei – UK Court of Appeal finds patent invalid for added matter

This was an appeal from a decision of one of the two technical trials in the FRAND dispute between Conversant and Huawei playing out in the Courts of the UK, Germany and China.

The patent in suit was European Patent (UK) No 1 797 659 entitled “Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA) along with service specific transmission time control”. The patent relates to aspects of the UMTS standard and in particular, a method for controlling the transmission of data packets in the Medium Access Control (MAC) sub-layer, a sub-layer of the data link layer which itself is responsible for ensuring that there is a reliable flow of data across the communications link.

The first instance trial was heard by Mr Justice Arnold (as he then was) in July 2019. The Judge heard arguments relating to essentiality and validity (on the grounds of added matter, obviousness and insufficiency). He found the patent essential but invalid for added matter (both the claims as granted and as proposed to be amended). Conversant appealed the added matter decision.

The added matter objection arose out of amendments that were made to the claims, partly in the course of prosecution and partly in the litigation. Specifically, the addition of wording to a method claim that specified how a check was to be carried out.

In its judgment, the Court reminded us of the basis of an added matter objection, as set out by Lord Justice Aldous in Bonzel v Intervention Ltd (No 3) [1991] R.P.C. 553:

The task of the Court is threefold:

(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.

(2) To do the same in respect of the patent as granted.

(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.

Or, as Mr Justice Jacob (as he then was) put it in Richardson-Vick Inc’s Patent [1995] R.P.C. 568 (later approved by him as Lord Justice Jacob in Vector v Glatt [2007] EWCA Civ 805):

I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.

The judgment is necessarily complex and goes into a high level of detail technical detail about specific parts of UMTS. There were two points particularly worthy of mention.

First, a reminder from the Court that because the amendment to the patent had been made to a claim, it was necessary to bear in mind that the question here was not what the claim covered but what it disclosed.

Second, a significant part of the judgment deals with whether a particular construction was properly ventilated in the first instance trial. The Court found it had not been and accordingly the new construction was not allowed.

The Court ultimately dismissed the appeal, finding the patent invalid.

This decision is of course important to the parties but it is only a part of the wider FRAND dispute going on in the Courts of the UK, Germany and China. Although this patent was found invalid, Conversant has had other UK patents found valid and essential (see Conversant v Huawei [2020] EWHC 14 (Pat)). Further, following the UK Supreme Court’s decision in August in relation to Huawei’s jurisdictional challenge, the FRAND dispute can continue in the UK courts and the FRAND trial will be heard in 2021 (having been adjourned from April 2020 due to the Coronavirus pandemic and to await the outcome of the appeal to the Supreme Court).

The full judgment can be read here.

Headnote and summary: William Jensen, Marks & Clerk Law LLP