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UK – Conversant v. Huawei & ZTE / FRAND

09 Jul 2019

Conversant v Huawei & ZTE [2019] EWHC 1687 (Pat)

UK Court considers essentiality and validity of patent in FRAND dispute.

This judgment represents one of the technical trials in the dispute between Conversant (Claimant) and Huawei and ZTE (together the Defendants). The wider case relates to an ongoing dispute regarding what is a FRAND (Fair, Reasonable and Non-Discriminatory) licence for alleged SEPs (Standard Essential Patents).

Previously (Huawei Technologies Co. Ltd v Conversant Wireless Licensing SARL [2018] EWHC 808 (Pat)), the Court of Appeal held that a global licence was FRAND and, although they could not impose the licence on the Defendants, they could injunct the Defendant if the terms of the licence were not accepted. The Defendants have challenged the UK Court’s jurisdiction to determine a global, rather than UK only, FRAND licence and have appealed to the Supreme Court (expected October 2019).

Conversant v Huawei & ZTE [2019] EWHC 1687 (Pat)
The present judgment is a technical trial relating to EP 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). The Claimant contends that the Patent is essential to Uplink DRX (an aspect of the 3G mobile phone Universal Mobile Telecommunication Standard (UMTS)). The Defendants counterclaimed for invalidity on the basis of obviousness, added matter and insufficiency.

Arnold J found the patent essential to Uplink DRX (and hence infringed) but invalid for added matter.

Arnold J distinguished the question of construction from whether, once construed, the claims read on to Uplink DRX. Arnold J held in favour of the Claimant on various issues of construction including, but not limited to issues regarding the literal interpretation of the claims. Arnold J did not accept arguments by the Defendants which proposed limitations on the general language used in the claim or an argument suggesting that the method described in the claim applied to different types of transmissions not described in the claim.

Essentiality & Infringement
Arnold J considered each integer of the claim and concluded that the Patent was essential to Uplink DRX in UMTS, falling within the scope of protection of claim 1 by equivalence (Actavis v Eli Lilly [2017] UKSC 48). Therefore, the Patent was held to be essential and infringed.

Arnold J noted that it appeared to be implicit that the Claimant accepted there was no literal infringement but commented that the Defendants did not challenge the Claimant’s expert evidence on the Actavis questions. He commented that the Defendants’ counsel first appeared to accept that they took no independent point on equivalence, but subsequently produced supplemental written submissions on this point. He concluded that the Defendants had no coherent answer to the argument on equivalents.

The Defendants raised five added matter allegations. Subject matter included in a patent will be added mater unless such matter is clearly and unambiguously disclosed in the patent application. Only the fourth allegation succeeded. Arnold J held that (for this allegation) the claim in the application was narrower than the claim as granted (and amended in prosecution). The claim was invalid for added matter.

The Defendants argued that the Claimant’s position on equivalents compounded their added matter by erasing the benefit of the amendment. Although Arnold J held that the amended claim was invalid for added matter, he clarified that infringement by equivalents cannot give rise to an added matter objection since it is an argument about scope of protection and not disclosure.

The Defendants raised two items of prior art, neither of which Arnold J accepted made the Patent obvious. The first fell away based on Arnold J’s decision on claim construction. The Defendants’ argument on the second piece of prior art was based on the argument that the skilled person would read the prior art and throw it away following which they would use the common general knowledge to find a simpler way to proceed. Arnold J did not accept this argument.

Arnold J did not accept the Defendants’ arguments on insufficiency.

A copy of this judgment can be found here.

Headnote: Jonathan Solomon, Marks & Clerk Law LLP