Two separate judgments have been issued in cases between Samsung Electronics Co. Limited (“Samsung”) and Apple Retail UK Limited and Apple Sales International Limited (together “Apple”). These cases were heard in the UK Patents Court, and concerned three European (UK) patents (EP1005726, EP1357675 and EP1714404) held by Samsung. Samsung alleged these patents were infringed by Apple, which counterclaimed for revocation. All three of the patents were found to be invalid by the judge, Floyd J, although with a finding that Apple would have infringed if the patents were valid.
Samsung’s allegation of infringement stemmed from Apple’s devices being compliant with the 3rd Generation (UTMS) standard, which utilises technology covered by the three patents. In all three cases, Apple had no answer to Samsung’s allegation of infringement and sought to establish that the three patents were invalid.
Although the three patents relate to the UTMS standard, the trial fell into two parts, with the first part concerning two of the patents, and the second part concerning the third patent. The reason for this was because there was “virtually no overlap” between the patents concerned in the first and second parts.
In the first part, the first patent (EP1005726) concerned determining the number of data frames that are bundled into a “super-frame” prior to transmission of the data. The determination is based on the constraint of obtaining a certain quality of the underlying service (QoS).
Samsung’s case relied heavily on maintaining its priority claim for this patent, which in effect give it an earlier filing date, without which intervening prior art would render the patent not new, and hence invalid. Ultimately, the priority claim, and hence the patent were found invalid.
The judge also considered that even if the priority claim was valid, the claim in question would still be considered obvious over an earlier system which determines frame size based on the type of underlying service.
It was stated that taking into account the quality of the underlying service would be routine.
What was interesting about this case was that Samsung sought to rely on a narrow interpretation of the claims which, if accepted, would have rendered the patent non-obvious. Ultimately, the judge rejected this interpretation.
The second patent (EP1357675) of the first part concerned the allocation of data within a large frame into several smaller frames. The smaller frames are fixed in size, so when there is a data shortage (of the large frame) to fill the entirety of smaller frames, so called “filler bits” are employed. Again, Samsung’s lack of a valid claim to priority was fatal for the validity of this patent, with intervening prior art depriving the claims of novelty. Nevertheless, validity was considered in the event the priority claim was valid. Ultimately, it was decided that filler bits constituted an option which would come to mind when presented with the above problem of data shortage, and for that reason the claim was considered obvious.
Samsung proposed an amended claim limited to arranging the bits contained within the smaller frames for transmission over different channels, which helped reduce the effects of transmission errors. Although such a claim suffered from lack of a valid priority claim, the judge considered that it would have been non-obvious if entitled to priority.
In the second part, the third patent (EP1714404) related to a method of allocating “a spreading code”, and a physical transmission waveform (of which there are two types) to a data channel. A spreading code allows only the intended recipient of a data channel to receive its contents provided the recipient has the same spreading code with which to decode the received data. Hence, multiple spreading codes can be used in the same physical transmission waveform to serve multiple users. The patent explained that the appropriate allocation of a spreading code and the physical transmission waveform, to each of the multiple data channels being transmitted, would result in a system with reduced power requirements.
Once again, Samsung’s claim to priority was found invalid and the patent was invalid in view of intervening prior art. Again, the judge considered whether a valid claim to priority would have saved the patent. Samsung tried to rely on claim 1 also representing a system in which the data channels were balanced across the two physical transmission waveforms available. This advantage could be attributed to a subset of the limited number of different allocation possibilities covered by the claim. However, the judge rejected this approach as an attempt to attribute an advantage which was not applicable across the whole scope of the claimed invention. Therefore, the patent would have been obvious if entitled to priority as the limited number of different allocation possibilities covered by the claim could not be attributed “any common technical benefit”.
All three of Samsung’s patents were found invalid due to intervening prior art which became relevant through lack of entitlement to priority. Therefore, these decisions clearly show the importance of a valid priority claim, especially in technical areas with a significant trend of publication, and the potentially serious effect on validity when priority is not accorded.