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Over the past 13 years, IPCom has been asserting its portfolio of telecoms patents against various companies in the telecoms sector. In this recent decision in proceedings against Vodafone, IPCom has had its patent found valid, essential and infringed by aspects of Vodafone’s 4G infrastructure. However, Vodafone was able to avail itself of a rarely used “Crown use” defence in relation to aspects of its network services used for emergency services providers.

IPCom commenced proceedings against Vodafone in October 2018 for infringement of its patents EP(UK) 2,579,666 and EP(UK) 2,378,735 in relation to its network infrastructure equipment for 4G and 3G respectively. This is the judgment of Recorder Douglas Campbell QC in the technical trial in relation to EP’666.

EP’666 relates to access control and is part of the same patent family as EP(UK) 1,841,268 (known by IPCom as “100A”) which has been extensively litigated in the UK and found valid and essential to the 3G standard.

The trial of EP’735, the second patent in these proceedings, will be heard at a later date with a further FRAND trial after that. The trial of this judgment had been expedited because of imminent expiry of the 100A family of patents on 15 February 2020.

The procedural history is complex, involving parallel EPO opposition proceedings, applications to unconditionally and conditionally amend the claims of EP’666, an amended PPD by Vodafone and a consequential application by IPCom to add new patents and a claim to a post-expiry injunction (which was refused).

However, by the time of the trial, the judge was left with the relatively few issues of: construction and allowability of two sets of amendments (made unconditionally and conditionally), obviousness, essentiality and infringement (including a defence of Crown use and de minimus infringement).

In addressing essentiality, the judge applied the well-established test: a patent is essential to a standard if it is not possible on technical grounds to comply with that standard without infringing the patent. He acknowledged that the more difficult area is where the patent is essential to a feature described as optional to the standard. The present case highlighted yet another possibility: what if the feature is optional to some people (eg a network operator) but essential to others (eg a handset manufacturer that needs to ensure its handsets are operable with all networks). The judge focussed on the practical issues at hand and found that Vodafone had chosen to implement an option in the standard which infringed conditional claim 1 under the doctrine of equivalents.

In relation to infringement, the judge had to consider the interplay between added matter and the doctrine of equivalents: one of IPCom’s unconditional amendments raised an added matter objection and the amendment was not allowed. Vodafone did not infringe the conditional amendment under a literal interpretation but might infringe by equivalence. However, the equivalence argument would encompass the added matter in the unconditional amendment that was disallowed. Vodafone accordingly argued that IPCom could not adopt the equivalence argument. The judge applied Arnold J’s (as he then was) decision in Conversant v Huawei and rejected Vodafone’s argument – it confuses the strict novelty-type test for added matter with the different legal test for infringement.

Vodafone raised two defences which are rarely considered: a Crown use defence (which provides a defence to infringement for a party authorised by a government department to carry out an otherwise infringing act) and a de minimus defence (where the infringing act is so insignificant as to be de minimus). The infringing system that was being considered was the MTPAS system: a system which provides special access to the emergency services during an emergency. As a network provider, Vodafone is obliged to provide this service but it is only implemented (or tested) infrequently. The judge found that Vodafone could take advantage of the Crown use defence but not the de minimus defence: although used (or tested) infrequently, it was a significant part of Vodafone’s obligations as a network provider. The Crown use defence is rarely employed – it will be interesting to see if this leads to other defendants seeking to rely on it and following the helpful analysis provided by the judge.

The judge found that conditional claim 1 to be valid and essential, but Vodafone had a good defence of Crown use in relation to one of its systems: the MTPAS scheme.

The full judgment can be read here.

Will Jensen, Marks & Clerk Law LLP