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IPCom v HTC, UK Court of Appeal, 28 February 2017, neutral citation number [2017] EWCA Civ 90

The Court of Appeal has handed down the latest decision in the long running litigation between IPCom and HTC. IPCom had appealed the High Court’s decision that HTC’s smartphones did not infringe IPCom’s European Patent (UK) 1 841 268 (as amended). HTC had cross-appealed Birss J’s finding that EP268 was valid in its amended form. The Court of Appeal dismissed HTC’s cross-appeal and overturned the High Court’s infringement decision, finding the patent valid and infringed by HTC phones compliant with the UMTS standard.

EP268 is concerned with controlling how mobile telephones in a UMTS network access a random access radio channel (RACH) between the mobile and the base station. It addresses problems arising from competition between users’ signals which mean that the relevant channel is congested and sometimes overloaded. Floyd LJ, giving the lead judgment in the Court of Appeal, summarised the invention as “providing, in a bandwidth efficient manner, a means for the network dynamically to adjust specific groups of users into a population with a priority access to the network independent of access threshold whilst at the same time using that access threshold…dynamically [to] control the access of other users.”

It is noteworthy that the Court of Appeal had already found EP268 valid and essential to the UMTS standard in proceedings between IPCom and Nokia in 2012.

Parallel EPO Proceedings
Opposition proceedings in relation to EP268 are ongoing. The case was remitted back to the Opposition Division after the Technical Board of Appeal found that an amendment overcame the Opposition Division’s added matter objection. The Opposition Division held that the amended EP268 overcame the remaining grounds of opposition. This decision is currently on appeal to the TBA.

During first instance proceedings in the UK, IPCom had applied to amend EP268’s claims to bring it in line with the amendments made in the EPO opposition. Birss J had accepted the amended claims, finding they did not add matter.

Notably, the patent was published in German and the German text had effect in the UK under the London Agreement (which does not require the claims are translated into English). The amended claims allowed by Birss J at first instance were in English. Floyd LJ noted that if the EPO upholds the patent and differences existed between the German and English claims then the German claims would determine infringement.

Court of Appeal issues
The issues heard by the Court of Appeal arose from the proposed amendments to EP268, which focused in part on the way data is transmitted.

i. Added Matter
HTC contended that the amended claims added matter because they included certain features from the patent’s second embodiment but not others. They advanced that this amounted to disclosing a new combination not disclosed in the second embodiment.
The Court of Appeal found against HTC on added matter. It held that the skilled person would not consider themselves limited to the precise teaching in the second embodiment, which was sufficiently general to encompass variants that had no material effect on the way the invention worked. The combination in the claim did not require the features of a single bit pattern or a single access class bit, but neither did the combination disclosed by the embodiment. Therefore, the combination in the claim and the embodiment are the same and there is no added matter.

ii. Construction
IPCom said that the UK claim would mirror the amended claim approved by the EPO. Issues of construction arose concerning the addition of the following terms: “wherein the access authorization data are transmitted as a bit pattern” and “access class bit”. At first instance, Birss J found infringement as regards the latter but not the former part of the amended claim.

The Court of Appeal agreed with Birss J’s construction of both terms and upheld his finding on infringement as regards an “access class bit”. It also found that important expert evidence confirming that HTC’s mobile phones infringed the amended claims had been overlooked at first instance. Floyd LJ said that whilst it was regrettable that IPCom had failed to draw this evidence to Birss J’s attention, that failure should not prevent IPCom succeeding on appeal.

Floyd LJ confirmed that the UK Courts construed patent claims on the basis that “the inventor’s technical purpose was not always the sole purpose which it was important to have in mind. The purpose of the language used by the patentee might also be relevant.”
Obiter comments on prosecution history

At first instance HTC had relied on Arnold J’s finding in Actavis v Eli Lilly [2014] EWHC 1511 that in some circumstances prosecution history could be admissible and persuasive. Floyd LJ praised Birss J for not placing any reliance on prosecution history material, noting “the impossible burden it places on the skilled reader if it were to be recognised as a legitimate aid to construction”. He also said that HTC was entirely right not to rely on the prosecution history on appeal, thus confirming the highly sceptical approach of the UK courts to the relevance of prosecution history when construing patent claims.

A copy of the judgment can be read here.

Headnote: Beth Williams, Marks & Clerk Solicitors