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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors  EWCA Civ 266 (12 April 2017)
Cite as:  WLR(D) 276,  RPC 6,  Bus LR 1971,  EWCA Civ 266
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
The Hon Mr Justice Birss
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE FLOYD
MR JUSTICE ARNOLD
| UNWIRED PLANET INTERNATIONAL LIMITED
|- and -
|(1)HUAWEI TECHNOLOGIES CO. LIMITED
(2) HUAWEI TECHNOLOGIES (UK) CO. LIMITED
(10) UNWIRED PLANET LLC
Adrian Speck QC, Mark Chacksfield and Thomas Jones (instructed by EIP Legal) for the Respondent
Hearing dates: 28-29 March 2017
Crown Copyright ©
Lord Justice Floyd:
• Issue 1: Whether claims 1 and/or 9 of the patent are disentitled to priority because there is no disclosure in the priority document of polling "upon assembly".
• Issue 2: Whether claims 1 and 9 lack inventive step over a standards proposal referred to as "Motorola TDoc".
• Issue 3: Whether claims 1 and 9 lack novelty because Ericsson's own TDoc, which is admitted to be novelty destroying, was made available to the public before the priority date.
i) "Poll timer". A timer is set when a poll is triggered and stopped in certain circumstances (such as when the right status report is received). If no status report appears before the timer runs out a further poll is sent. This aims to ensure that when a poll is sent, it is answered correctly.
ii) "Every Poll_PDU PDU". This is a PDU counter. The system counts the number of PDUs sent and when that number reaches the value in the field "Poll_PDU" a poll is triggered.
iii) "Every Poll_SDU SDU". This is an SDU counter. The system counts the number of SDUs received and when that number reaches the value in the field "Poll_SDU" a poll is triggered.
iv) "Window based". This poll trigger works by following the sequence number window at the transmitter. The poll is triggered when an AMD PDU is sent which represents a given percentage of the transmission window given by a formula. In other words when occupancy of the sequence number resource reaches a predetermined threshold the poll is triggered.
v) "Timer based". This triggers a poll periodically based on a timer.
"It has been decided to support either PDU count based polling trigger or Window based polling trigger in addition to the polling triggers indicated above".
The priority document
"A counter-based mechanism counts the amount of transmitted PDUs (or bytes) and sets the poll bit when a configured number of PDUs (or bytes) have been transmitted."
"The present invention intends to define two triggering mechanisms; one mechanism that counts the number of PDUs and one mechanism that counts the number of transmitted bytes. In particular, as those mechanisms would be independent of each other, according to one embodiment of the present invention the criteria "transmitted number of PDUs" and "transmitted number of bytes" are combined into one single mechanism.
It is then an advantage of the present invention that the mechanism operates on both bytes and PDUs and thus avoids stalling due to both sequence number limitations and memory limitations. This is advantageously achieved by a single mechanism coordinating the polling by two criteria leading to an efficient polling mechanism.
Other objects, advantages and novel features of the invention will become apparent from the following detailed description of the invention."
"A combination of the criteria "transmitted number of PDUs" and "transmitted number of bytes" into one single mechanism can be achieved by a method described in the following:"
"After that data has been transmitted the actual values of said counters are each compared to appropriate and pre-defined threshold values "PDU_threshold" and "ByteThreshold" for the respective counter." (emphasis supplied)
"Initialise PDU_Counter and ByteCounter to their starting values;
IF (PDU_Counter=PDU_Threshold) OR (ByteCounter=ByteThreshold) THEN
- Trigger a poll;
- Reset PDU_Counter AND ByteCounter;
"… stalling due to both sequence number limitation and memory limitation can be avoided by help of one single mechanism. By combining the two criteria into one mechanism it is avoided that a poll is unnecessarily sent when a first criteri[on] is fulfilled while such a poll has already recently been triggered due to another criteri[on]".
i) The currently agreed RLC poll triggers are outlined at paragraphs  to . It is acknowledged that while these criteria can work well for "bursty" traffic, additional triggers may be required to facilitate continuous transmission. Polling procedures can be used to limit the number of outstanding (i.e. transmitted but not acknowledged) PDUs or bytes to avoid protocol stalling.
ii) Two mechanisms are identified to avoid protocol stalling: counter-based and window-based mechanisms. Paragraph  suggests that no existing mechanisms take into account the fact that stalling may sometimes take place because of sequence number limitations or sometimes due to memory limitations.
iii) After setting out a number of consistory clauses, paragraph  states that "superfluous polling" is avoided by combining the counting of data units and the counting of bytes into one mechanism.
iv) The patent includes four figures which illustrate both a wireless communication network and the operation of the invention in the first node. The first node comprises a data unit counter and a byte counter which are initialised to zero in the first step. As data is transmitted, the data unit counter is increased for each transmitted data unit and the byte counter is increased for every byte sent. The counters are then compared to see if either of the counters has reached or exceeded its threshold. A poll is triggered if any of the first or the second threshold limit values is reached or exceeded. The poll is generated at the first node and sent to the second node, both counters are reset and, on receipt of the poll, the second node generates and sends a status report to the first node.
v) Paragraph  explains that this method may be denoted "in a compressed way of writing" by using the pseudocode which we saw in the priority document, and which I will therefore not set out again.
vi) The examples in the specification are expressed, in an emphatic manner, to be non-limiting. In addition, at paragraph  one finds this paragraph, not present in the priority document:"To appropriately request a status report from the second node 120, the method may comprise a number of method steps 301-312. It is however to be noted that some of the described method steps are optional and only comprised within some examples. Further, it is to be noted that the method steps 301-312 may be performed in any arbitrary chronological order and that some of them, e.g. step 304 and step 305, or even all steps may be performed simultaneously or in an altered, arbitrarily arranged, decomposed or even completely reversed chronological order."
Claim 1: Method in a first node for requesting a status report from a second node, the first node and the second node both being comprised within a wireless communication network, the status report comprising positive and/or negative acknowledgement of data sent from the first node to be received by the second node, wherein the method comprises the steps of:
transmitting a sequence of data units or data unit segments to be received by the second node, the method further comprises the steps of:
counting the number of transmitted data units and the number of transmitted data bytes of the transmitted data units, and,
requesting a status report from the second node if the counted number of transmitted data units exceeds or equals a first predefined value, or the counted number of transmitted data bytes of the transmitted data units exceeds or equals a second predefined value.
Claim 9: Method according to any of the previous claims 6-8, wherein the steps of resetting the first counter and the second counter is performed when the first predefined value is reached or exceeded by the first counter or when the second predefined value is reached or exceeded by the second counter.
The judgment on Issue 1
"The skilled person knew, as a matter of common general knowledge, that the UMTS system worked this way. It would be regarded as a conventional approach."
"[The "after transmission" approach] involves the poll bit being set in the header of the next PDU sent, not the one which caused the threshold(s) to be satisfied. I find that the skilled person thought it was better to set the poll upon assembly because that means it was being set when it was needed".
"94. Turning to the claim, it seems to me that with the relevant background the skilled reader would not understand the language as seeking to exclude the possibility of polling (and therefore counting) upon assembly. It is true that in the claim the step of transmitting a sequence of data units is mentioned first and then the claim refers to the step of counting the two values and finally to requesting a status report. However the language is not descending into the level of detail required to distinguish between the different ways of counting and polling. What really matters is counting both numbers. The counting and the poll requesting steps are part of the overall process of transmission of the sequence of PDUs. The fact that the count and the setting of a poll bit might occur upon assembly of a given PDU which is transmitted does not mean the method ceases to be a way of counting transmitted PDUs or transmitted bytes. A system which counts upon assembly of a PDU and sets the poll bit upon assembly of that PDU is covered." (emphasis added)
"134. Read pedantically and without any context, these words can be said to exclude the idea of counting and polling upon the assembly of a PDU for transmission. But reading a document that way is not the right approach. The skilled person is aware of the conventional approach to counting and polling in UMTS as a matter of common general knowledge. The question is what would that skilled person understand the inventor to mean by the language which has been used (cf Kirin Amgen). In my judgment the skilled person would not think this language was being used to address that issue at all.
135. One of the clearer passages in the defendant's favour is the reference on page 2 to setting a poll bit when a set number of PDUs or bytes "have been" transmitted. However this is actually in the Background section and would be understood to refer to known counter mechanisms. The most relevant counter mechanism in the common general knowledge which is actually in use is the one in UMTS which polls upon assembly. Therefore the reader would realise that the priority document was using language loosely.
136. Since the Detailed Description would be understood as illustrative, I place less weight on the passage on p4. In the Summary section the point turns on the word "transmitted". Read on its own or as part of the document as a whole, it is not a statement which would be understood to exclude counting or polling upon assembly. A method in the transmitter which counts and polls upon assembly does count the number of PDUs which are transmitted to the receiver and does set the poll bit based on the number of PDUs which are transmitted to the receiver. The meaning of the word "transmitted" has not changed between the priority document and the patent claim."
The law on entitlement to priority
"151. Section 5(2)(a) of the Patents Act 1977 provides that an invention is entitled to priority if it is supported by matter disclosed in the priority document. By section 130(7) of the Act, section 5 is to be interpreted as having the same effect as the corresponding provisions of Article 87(1) of the European Patent Convention. Article 87(1) says that priority may be derived from an earlier application in respect of the "same invention".
152. The requirement that the earlier application must be in respect of the same invention was explained by the enlarged Board of Appeal of the EPO in G02/98 Same Invention,  OJ EPO 413;  EPOR 167:
"The requirement for claiming priority of 'the same invention', referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
153.The approach to be adopted was elaborated by this court in Unilin Beheer v Berry Floor  EWCA (Civ) 1021;  FSR 6 at :
"48. …….The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim."
154. In Abbott Laboratories Ltd v Evysio Medical Devices plc  EWHC 800 (Pat), I added this:
"228. So the important thing is not the consistory clause or the claims of the priority document but whether the disclosure as a whole is enabling and effectively gives the skilled person what is in the claim whose priority is in question. I would add that it must "give" it directly and unambiguously. It is not sufficient that it may be an obvious development of what is disclosed.""
"106. If I may summarise, the task for the court is therefore:
(a) to read and understand, through the eyes of the skilled person, the disclosure of the priority document as a whole;
(b) to determine the subject matter of the relevant claim;
(c) to decide whether, as a matter of substance not of form, the subject matter of the claim can be derived directly and unambiguously from the disclosure of the priority document."
Huawei's submissions on Issue 1
Unwired Planet's submissions on Issue 1
Discussion of Issue 1
The disclosure of the Motorola TDoc
i) "Transmission of every N bytes data". Although there was a dispute about this at the trial, it is now accepted by Unwired Planet that this describes a byte counter, and not a window-based trigger. It is explained in terms that the counter is aimed at avoiding buffer overflows. The reason for including it is that the size of PDUs in the LTE system is variable, and so a byte counter is more accurate than a PDU or SDU counter.
ii) "Transmission of every K TTIs". This proposes that a poll is sent after a fixed number of TTIs or Transmit Time Intervals. Subject to an exception, only one PDU can be sent in a TTI. There may not be a PDU in every TTI, but subject to the exception, there will be no more than one PDU per TTI. One can view this trigger as a TTI counter, or as a timer-based poll. I will refer to it as a TTI counter.
The judgment on Issue 2
i) the skilled person knew that in LTE, PDUs were going to vary in size;
ii) the skilled person therefore had in mind both resources, i.e. bytes in the transmission buffer and sequence numbers;
iii) the skilled person knew as a matter of common general knowledge that there was a potential for stall due to the two separate limitations;
iv) a counter was simpler than a window based trigger;
v) both options (window-based and counter-based) had pros and cons;
vi) it was within the ability of the skilled person to assess the pros and cons of the two approaches;
vii) a counter-based solution was a reasonable one;
viii) a PDU counter was an alternative to the counting of TTIs suggested by the Motorola T Doc which the skilled person would have in mind;
ix) a PDU counter would be an attractive option if you wanted a more accurate PDU count than came from a TTI counter.
"Q. … It is perfectly within his skill and knowledge when reading Motorola to think, I like the idea of the transmission of N bytes data which helps my buffer problem and I will use the N PDU for the sequence number problem.
A. That is a perfectly plausible train of thought, yes.
Q. And it is one that is within the skill and knowledge of a skilled person reading Motorola at the priority date?
A. That is correct.
Q. If he does that, he will then have two counters, which is correct, is it not? He would then have two counters.
A. Yes, he will have two counters."
i) The real system in which the invention had to play a part had a number of facets which were part of a fairly complicated arrangement. The judge gave an example which demonstrated, in his view, that the skilled person would understand that there was a series of factors to balance and that there were some trade-offs to make.
ii) The reaction to Motorola's byte counter proposal was not indicative that it was an obvious approach to use either on its own or together with any other triggers.
iii) The common general knowledge included knowledge that variable- sized PDUs in LTE made for a problem with two aspects, bytes and sequence numbers. Despite that fact, and despite the fact that the relevant committee had considered the issue in detail for many months, the thinking at the priority date was still that a single mechanism might well be all that was needed. Viewed with hindsight, that might seem illogical, but it was not. A single mechanism such as a PDU counter could be used even though the two resources were more or less independent. Such a proposal might require testing, but that simply illustrated that the impact of these proposals was not trivial to predict and that this was known. The judge added "an aspect of this case which came across most clearly from the evidence of all three experts was the multifactorial nature of the issue under consideration and the subtlety of the thought processes required of those working in this field."
iv) If the skilled person was considering a single poll trigger mechanism, he would more or less inevitably have to have in mind the alternative of two trigger mechanisms, one for each resource. However that was not enough to take the skilled person into claim 1. Claim 1 was limited to counters, and so this part of the skilled person's thinking did not make the claim obvious.
v) There was a prevailing view that a window-based trigger mechanism was likely to be the right way forward.
vi) Dr Cooper's evidence showed that the invention is based on a step which could well have been taken, but his evidence was extracted by a step-by-step analysis. The judge was struck by Mr Wickins' evidence. Those actually working on the problem at the time did not propose the invention because they missed it.
i) The argument that claim 9 was obvious involved changing tack completely. Too many polls would be triggered by these two counters. The problem is one of superfluous polling. So one should have one mechanism.
ii) Secondly, although Dr Cooper had explained that there were advantages to counting both bytes and PDUs and using the claim 9 approach of resetting both counters when one is triggered, the fact that those advantages could be seen did not mean that the claim was obvious. It was true that receipt of a status report triggered by one trigger (say PDUs) will free up both types of resource, and so in a sense it could be said that one might not need to maintain the un-triggered count after the first counter had triggered. However the idea represented the product of careful insight by the skilled person, not uninventive reasoning. There was no precedent for the idea of two counters being reset at the same time by the triggering of one of them. The defendants had referred to the common general knowledge that a poll trigger such as a poll retransmission timer could be reset on the occurrence of another poll so as to avoid a further irrelevant poll. That example made the point. It was only with hindsight that any similarity between that and the invention could be seen.
Obviousness, and the approach to findings of obviousness on appeal
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
"to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim."
"It is the nature of this multi factorial evaluation of evidence against a simple statutory test which underpins the reluctance of an appeal court to interfere with a trial judge's decision on an issue of obviousness unless he has erred in principle. Lord Hoffmann put it this way in Biogen v Medeva  RPC 1:
"The question of whether an invention was obvious had been called "a kind of jury question" (see Jenkins L.J. in Allmanna Svenska Elektriska A/B v. The Burntisland Shipbuilding Co. Ltd. (1952) 69 R.P.C. 63, 70) and should be treated with appropriate respect by an appellate court. It is true that in Benmax v. Austin Motor Co. Ltd.  A.C. 370 this House decided that, while the judge's findings of primary fact, particularly if founded upon an assessment of the credibility of witnesses, were virtually unassailable, an appellate court would be more ready to differ from the judge's evaluation of those facts by reference to some legal standard such as negligence or obviousness. In drawing this distinction, however, Viscount Simonds went on to observe, at page 374, that it was "subject only to the weight which should, as a matter of course, be given to the opinion of the learned judge". The need for appellate caution in reversing the judge's evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge's overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation."
"i) The expertise of a trial judge is in determining what facts are relevant to the legal issues to be decided, and what those facts are if they are disputed
ii) The trial is not a dress rehearsal. It is the first and last night of the show
iii) Duplication of the trial judge's role on appeal is a disproportionate use of the limited resources of an appellate court, and will seldom lead to a different outcome in an individual case
iv) In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping
v) The atmosphere of the courtroom cannot, in any event, be recreated by reference to documents (including transcripts of evidence)
vi) Thus even if it were possible to duplicate the role of the trial judge, it cannot in practice be done."
"For an appeal to succeed, an appellant must identify at least one point of principle in respect of which the Judge erred. If that can be done, then the question is open to independent evaluation by this Court."
Huawei's submissions on Issue 2
Unwired Planet's submissions on Issue 2
Discussion of Issue 2
"I think they would arrive at this as a solution on the basis of weighing pros and cons of different approaches, and also realising that in a user equipment whether memory is clearly constrained that the only sensible way you can mitigate over memory usage is to proactively poll. You can only proactively poll in my view using a counter-based system. You can therefore only proactively address memory limitation by accounting for the bytes that are being used in that memory, given the variable nature of the PDU sizes. I only say it is obvious from the perspective that it is just considering all of those factors that were known at the time in terms of the attributes of the LTE standard."
"Q. I think the thrust of it is this, that what you are saying is that you believe the component parts of the invention were all around and the skilled person could have come up with it. It is no more than that, is it?
A. Yes, I think that is -- I believe that is what I am saying. They are looking at the utility of different -- a range of polling solutions based on the range of submissions and ----
Q. I mean, looking back, you think that the skilled person should have come up with it because it is a good idea.
A. I am not saying that they should have come up with it. I am saying that it was certainly, you know a possible solution they could arrive at and there are advantages to that solution versus the other one."
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.
(GMT + 1)
|Ericsson TDoc uploaded to ETSI server||8 Jan 08:36||8 Jan 07:36||8 Jan 02:36||7 Jan 21:36|
|Priority Doc filed at USPTO||8 Jan 22:59||8 Jan 21:59||8 Jan 16:59||8 Jan 11:59|
The judgment on Issue 3
Huawei's submissions on Issue 3
Unwired Planet's submissions on Issue 3
Discussion of Issue 3
Mr Justice Arnold
Lord Justice Gross