IP lawyer: UK court finds SEP necessarily infringed through compliance with standard

In November 2015 the UK Patents Court handed down its judgment in the first technical trial in a dispute concerning a number of patents owned by Unwired Planet and acquired from Ericsson. In Unwired Planet v Samsung Unwired Planet alleged that the patent in this case was essential to a long-term evolution (LTE) standard, and that accordingly, its compliance with that standard in devices produced by Samsung and Huawei had resulted in infringement of the patent. Google had also been sued under the patent, but that dispute settled.

In contrast to many previous cases involving standard-essential patents (SEPs) heard in the United Kingdom, the judge in this case – Justice Birss – held that the patent was valid and had been infringed through compliance with the relevant LTE standard. Further technical trials are set for 2016 for five other Unwired patents, with a non-technical trial to determine fair, reasonable and non-discriminatory (FRAND) terms and competition issues set to take place following completion of all the technical trials.

In arriving at his decision, the judge considered a number of issues relating to claim construction, priority entitlement, patentability and infringement/essentiality of the LTE standard in question.

Claim construction and infringement/essentiality

With regard to claim construction and infringement/essentiality, there was an interesting analysis of how the draft LTE standard would be implemented and whether the claims necessarily covered options within the standard. One of the points on claim construction related to the order in which the claimed steps were performed. This relied heavily on pseudocode from the description, which was allegedly a representation of the claimed invention.

One difficulty that Unwired faced was finding support for the broad interpretation of the claims as presented by the patent, which was also present in the priority document. This was important because a broad interpretation was necessary to satisfy the infringement allegation. However, if the broad interpretation of the claims was not supported by the technical contribution of the priority document, the patent would not be entitled to its priority date and its claims would then lack novelty over a draft of a working document disclosing the invention, which was submitted to the standard-setting organisation (SSO) – the European Telecommunications Standards Institute – on the same day that the priority document was filed. The priority document included specific implementation examples of the invention, but did not include claims or any general language stating that steps may be performed in any order, for example.

Ultimately, it was decided that the broad interpretation held and that compliance with the LTE standard based on this interpretation would necessarily mean infringing the patent in question.

Priority entitlement

With regard to the priority entitlement, ultimately it was held that the scope of the claims was “commensurate with the technical contribution made by the priority document” and thus the claimed priority was valid.

The discussions on infringement, standards essentiality and priority entitlement in the judgment illustrate for the United Kingdom the practical importance of filing a meaningful priority patent application including, if possible, claims and general statements of invention. However, it may be possible to deviate from a rigid requirement to have a feature-by-feature correspondence between the priority application and the subsequent application, at least as far as the United Kingdom is concerned. This is relevant to parties involved in SSOs, which often file priority patent applications at very short notice just before SSO meetings.

As an aside, the reliance on the pseudocode in the discussions concerning infringement and standards essentiality illustrates how pseudocode can be a useful drafting tool for demonstrating an invention at a high level, without necessarily imparting an overly limiting meaning.

Publication date

A final point of interest concerned the publication date of a draft of a working document disclosing the invention and submitted by Ericsson (the original applicant for the patent), and the filing date of the priority document – a US provisional patent application filed at the US Patent and Trademark Office (USPTO). The defendants contended that the availability of the Ericsson working document to the public on a calendar day which preceded the calendar day of the filing of the US provisional patent application in a particular time zone (Hawaii) meant that the working document was prior art, and thus the claimed invention lacked novelty. Birss rejected this argument as a point of law, stating that the relevant time zone was that of the USPTO, where the priority document was filed; since in this time zone both the priority document and the working document were respectively filed and disclosed on the same day, the working document did not constitute prior art. Again, this is relevant to parties involved in SSOs, which routinely file patent applications and submit working documents to SSOs at very short notice. As far as the United Kingdom is concerned, the prevailing view seems to be that the timeframe of reference is that in which the patent application is filed.