In 2014 Unwired Planet asserted six of its European patents against the defendants, Huawei, Samsung and Google, which were acquired from Ericsson, in both the United Kingdom and Germany. To date, the judgments for three technical trials in the United Kingdom have been handed down. This article examines the third technical trial. After the technical trials have been completed in the United Kingdom, assuming that the proceedings continue, there will be a fair, reasonable and non-discriminatory terms (FRAND) trial to decide on the licensing dispute.
In the first technical trial Justice Birss held that the patent was valid and had been infringed through compliance with the relevant long-term evolution (LTE) standard (for further details please see “IP lawyer: UK court finds SEP necessarily infringed through compliance with standard”). The second technical trial dealt with two related patents derived from a single European patent application (for further details please see “Court battle over Unwired Planet patents continues”). Unlike at the first technical trial, Birss held that the patents were invalid for obviousness in light of a publicly available document detailing proposals made by Qualcomm for LTE standardisation discussions. As a result, it was not necessary for Birss to decide on infringement.
Meanwhile, the Dusseldorf District Court also handed down its judgment on infringement in respect of three of the six patents, two of which were found to be invalid by the UK Patents Court in its second technical trial. The defendants have filed separate actions with the German Federal Patent Court alleging that the patents are invalid – so-called ‘nullity actions’. The Dusseldorf District Court could have stayed its proceedings to await the outcome of the pending nullity actions, but instead continued with the infringement action, finding that handsets manufactured by Samsung, LG Electronics and Huawei infringed all three patents in Germany, and that the infrastructure manufactured by Samsung and Huawei infringed only one of the three patents. The decision on validity of these patents is now awaited.
In March 2016 Birss, in the third technical trial in the United Kingdom, held that the patent at issued was valid and essential to two Global System for Mobile Communications standards, and thus infringed by the defendants’ implementation of the standards. Notably, this patent corresponds to the third patent dealt with by the Dusseldorf District Court. This has no doubt provided some comfort to Unwired Planet as it awaits the outcome of the pending nullity action in Germany.
In reaching his decision there was a discussion on claim interpretation and infringement with respect to the relevant standards. Birss also provided some general comments on the form of obviousness arguments which rely on common general knowledge alone.
There were three claim interpretation points discussed, of which the discussion on the term ‘conversion’ seems to be the most pertinent. Claim 1 requires the step of “converting a plurality of downlink measurement values associated with said first communication system to a plurality of down link measurement values for said second communication system”. The discussion centred around whether the converting step involved both formatting and a conversion to permit comparability. Birss held that the converting step of claim 1 had to render the measured values from the first communication system into an appropriate format of the second communication system and also had to make the converted values directly comparable with measurement values in the second communication system. This was a key point, since such a narrow interpretation might have meant that the claims did not read on to the relevant standards. However, Birss held that the claims read on to the relevant standards, despite this narrow interpretation, such that the patent is infringed by the defendants and is essential to the relevant standards.
Birss commented on the obviousness arguments presented by the defendants and indicated that the arguments based on common general knowledge alone contained “a good number of the familiar flaws in arguments of this kind”. Reference was made to Ratiopharm v Napp and Accord v Medac (also heard by Birss) in his comments. In summarising, Birss stated that the obviousness argument: “presented a combination of common general knowledge features which had been created with hindsight knowledge of the patent. It was presented in a way which lacked inconvenient details… and it presented points of common general knowledge at a level of generality which itself was crafted with hindsight.”
In their submission, the defendants submitted that criticisms in Accord with respect to arguments based on common general knowledge alone did not work in the case at hand. In doing so, the defendants argued that the problem solved by the invention did not exist before, or independently of, the creation of the standard in the course of which the invention was made and submitted that there was no longstanding problem. Birss stated that this ignored the intensity of the effort which went into creating the Universal Mobile Telecommunications System standard and the evidence that the problem in this case was a well-known problem, which could have been demonstrated by various committee documents
The defendants also argued that standards are arrived at iteratively, and there is no room for “concrete prior art” – a phrase used by Birss in Accord. Birss agreed that the process was iterative, but indicated that there were plenty of concrete documentary proposals which exposed the thinking of the skilled people on the very issues with which the case was concerned and from which the defendants could, and did, develop obviousness arguments.
Generally speaking, it would seem to follow that ignoring documentary evidence when making obviousness objections based only on common general knowledge should be avoided, especially when that documentary evidence could be used to develop obviousness arguments.
There are still two technical patent cases to be heard in the UK courts. With another positive outcome in the UK courts for Unwired Planet, it seems likely that the proposed nontechnical trial to determine FRAND terms and competition issues will take place toward the end of 2016.