UNWIRED PLANET INTERNATIONAL LTD v HUAWEI TECHNOLOGIES CO LTD

[2018] R.P.C. 6 325 UNWIRED PLANET INTERNATIONAL LTD v HUAWEI TECHNOLOGIES CO LTD COURT OF APPEAL [2017] EWCA Civ 266; [2017] R.P.C. 6 Patents – European patents – Standards essential patents – Infringement proceedings – Technical trial – Entitlement to priority – Assessing the disclosure of the priority document – The role of common general knowledge – Obviousness – Approach to findings of obviousness on appeal – Secondary evidence – Novelty – Meaning of “before the date of filing” – Applications filed in different time zones – Appeal to Court of Appeal H1 H2 Patents Act 1977, ss.1(1)(a), 2(1), 2(2) European Patent Convention 2000 (“EPC”), arts.54, 89 This was an appeal from the decision handed down in one of the technical trials in a series actions for infringement brought by the respondent (“Unwired Planet”) in respect of patents in the telecommunications field which were said to be standards essential patents (“SEPs”) and which had been declared as such to the relevant standards body, the European Telecommunications Standards Institute (“ETSI”). The patent under consideration in the judgment to which this particular report relates is European Patent (UK) No. 2,229,744 (“the 744 Patent”) and concerned a polling system for use in a wireless communication network. The issues arising on the appeal concerned (i) entitlement to the claimed priority date of 8 January 2009, (ii) lack of inventive step over a standards proposal known as “Motorola TDoc” which had been presented to the relevant 3rd Generation Partnership Project (“3GPP”) committee in Athens in August 2007, and (iii) lack of novelty in the light of the uploading of a document (“the Ericcson TDoc”) to a publicly accessible server (namely the ETSI file server) on the morning of 8 January 2009, that document thereby being made available to the public simultaneously in time zones where it would still have been late in the evening of 7 January 2009 (e.g. in Hawaii and California). The relevant claims of the 744 Patent, claims 1 and 9, are set out at [43] of the judgment reported here. There was no challenge to the judge’s finding as to the construction of these claims. The priority issue concerned the interpretation of a US patent application entitled “Method and Arrangement in a Telecommunications System” (“the priority document”). The appellants (“Huawei”) contended that there was no disclosure in the priority document of polling “upon assembly” (i.e. just before the protocol data unit (“PDU”) was transmitted) as opposed to polling after transmission. The trial judge, Birss J., had held that the claims as granted extended to cover a case where the counters counted the PDU on assembly and there was no appeal from this aspect of his judgment. A narrower construction would have meant that the claims did not read on to the LTE telecommunications standard with the effect that the 744 Patent was not “essential” to the operation of that standard. However, the judge had gone on to hold [2018] R.P.C., Issue 5 ß Crown copyright 2018. This article contains public sector information licensed under the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3/) Gross and Floyd L.JJ. and Arnold J.: 28-29 March and 12 April 2017 326 H3 H5 H6 that claim 1 was clearly and unambiguously derivable from the priority document. He had also dismissed a separate argument which had been advanced in relation to claim 9. On appeal to the Court of Appeal, Huawei argued, inter alia, that the invention had changed between the priority document and the 744 Patent. The priority document only disclosed counting, comparing and polling after transmission whereas the claimed invention the subject of the 744 Patent was one where counting, comparison and polling could take place before or after transmission. The priority document referred to counting and polling transmitted PDUs and bytes. While common general knowledge might make it obvious to poll upon assembly, this was not enough. To be entitled to maintain the claimed priority date the invention had to be derivable clearly and unambiguously from the priority document. Huawei also alleged that the judge had misinterpreted the priority document and that he had been wrong to ask himself whether it excluded the concept of polling upon assembly. There was also a subsidiary argument in relation to claim 9. Huawei contended that what the patentee had done amounted to “cherry-picking” as there was no disclosure in the priority document of the dual reset feature of claim 9 absent counting and polling after transmission. Unwired Planet supported the reasoning of Birss J. It argued, inter alia, that the fact that counting upon assembly was a conventional approach for a PDU counter mechanism (as well as being the method employed in the earlier UMTS telecommunications standard) and known as a technically better solution formed a crucial part of the background against which the priority document would be read. Viewed at the appropriate level of generality, the concepts of claim 1 were clearly to be found in both the priority document and the 744 Patent. Further, the skilled person would not have seen the dual reset concept of claim 9 as having anything to do with something which could only be added provided the poll bit was set after transmission. As to obviousness, Birss J. had held that the Motorola TDoc upon which Huawei relied disclosed the idea of a poll trigger based on a byte counter but did not propose counting PDUs as well. The difference between this and claim 1 was the inventive step of having a second poll trigger which counted PDUs alongside the byte counter. As claim 1 was not obvious, nor was claim 9. Further, even had claim 1 been obvious, claim 9 was not. It was only with hindsight that any similarity with the claimed invention could be seen. At the hearing of the appeal Huawei argued that all the skilled person had to do to fall within claim 1 was to implement the idea in the Motorola TDoc with a PDU counter either in addition to or in substitution for the transmit time interval (“TTI”) counter which that document proposed and that did not involve an inventive step. In particular, the judge had wrongly allowed documents relating to meetings of the 3GGP committee to become the touchstone of obviousness. However, those documents were not part of the common general knowledge, did not necessarily reflect the approach of the skilled person to the technical problem addressed by the patent and firm conclusions could not be drawn from those documents in any event. The primary evidence of the expert witnesses effectively compelled a finding of obviousness and the judge had more or less recognised this. Unwired Planet supported the judge’s evaluation on this issue. It argued, inter alia, that looking at what happened in real life (i.e. in the relevant 3GPP committee) injected reality into what otherwise could be a dangerously simplistic view (...truncated)