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Vringo Infrastructure Inc. v ZTE Limited, (Pat), Birss J., 28 November 2014, Case No. [2014] EWHC 3924 

As reported previously on the EPLAW Patent Blog, Vringo is the owner of a portfolio of patents relating to 2G/3G/4G telecommunication equipment which were originally developed by Nokia. Vringo have been seeking to enforce these patents in a variety of jurisdictions including the UK, Germany, France and the Netherlands

This judgment, which concerned allegations of infringement of EP (UK) 1 212 919 relating to the management of handovers between cells in a mobile network, is stated to be the first of a series of patent trials scheduled to be heard in the English Patents Court between these parties in the next year or so.

The ‘919 patent obtained by Nokia was declared by Nokia to be essential to the 3GPP standards: TS 36.413, TS 36.331, TS 25.413, TS 25.331, TS 25.401 and TS 25.301. The invention claimed in the ‘919 patent concerns a process of SRNS location which is performed when a mobile phone moves from a cell covered by one node in a network into an adjacent cell. The key concept which is the subject of the patent relates to the use of protocol “transparency” and the manner in which information is transferred between two nodes in a network.

More specifically, rather than defining all the information to be transferred as information elements in one protocol, the patent proposed that a new special protocol data unit (PDU) should be defined in the protocol for communications between a radio network controller and a mobile phone. This new PDU was to include all the information needed to start the communication in the target radio network controller. This PDU was to be carried by a message defined in a particular message protocol without the contents of the special PDU being defined in that message protocol, an approach in telecommunications known as “transparency” with the result that the content of the data and its manner of transmission (i.e. the message protocol) could be developed independently.

The approach in the patent was found to be novel and inventive. An earlier standards setting discussion document was found not to disclose the entirety of the claimed invention. In the context of inventive step, ZTE referred to a number of prior disclosures which evidenced previous use of “transparency”. However, the judge concluded that although these documents might have provided a hint to a person skilled in the art of the claimed invention, ZTE’s obviousness case was tainted with hindsight and the patent was inventive.

Although not formally admitting infringement, ZTE accepted that on the claim construction advanced by Vringo no points on infringement arose. The Court therefore concluded that the patent was both valid and infringed.

Read the judgment here.

Head note: Nicholas Fox, Simmons & Simmons