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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Nokia GmbH v Ipcom GmbH & Co KG [2012] EWHC 225 (Pat) (20 February 2012) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2012/225.html Cite as: [2012] EWHC 225 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Strand, London, WC2A 2LL |
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B e f o r e :
____________________
NOKIA GMBH |
Claimant |
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| - and - |
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IPCOM GMBH & CO. KG |
Defendant |
____________________
Iain Purvis QC and Brian Nicholson (instructed by Bristows ) for the Defendant
Hearing dates: 6, 8, 9, 13 and 14 December 2011
____________________
Crown Copyright ©
Mr Justice Floyd:
Introduction
Nokia
GmbH seek revocation of European Patent (UK) No. 1 018 849 ("the patent"). The patent, which is in the name of
IPCom
GmbH & Co. KG, relates to a method of handing over communications between a mobile telephone and a first base station to a second base station. The action is another battle in the war between
Nokia
and
IPCom
about the royalties to be paid on
IPCom
's portfolio of patents which they acquired from Robert Bosch GmbH.
IPCom
. Instead
IPCom
put forward three alternative sets of proposed amended claims. The first of these sets of claims is the main battleground on the issue of validity.
Nokia
contends that the second and third sets of amendments are not allowable, but, if they are allowable, does not attack their validity on other grounds.
Nokia
seek declarations that the patent is not essential to various international telecommunications standards. Such a declaration implies that it is possible to sell a device which conforms to the standard without infringing the patent.
IPCom
advance a positive case that the patent is essential to the UMTS standard, but no case that it is essential to the GSM or LTE standards.
Witnesses
Nokia
. Although
IPCom
served several long expert reports from a Dr Heinz Ochsner, they elected not to call him. I had read Dr Ochsner's reports before the trial, as I was invited to do, but I have not relied on them. In the end, I heard less than a day of cross-examination of Dr Brydon, and no other oral evidence.
IPCom
say that the case turns largely on issues of law and construction; that they had obtained all the evidence that they needed from Dr Brydon; and that there was therefore no point in calling their expert. That is a course which they are perfectly entitled to take. I will have to decide whether they were right.
Nokia
. At BT Dr Brydon was, amongst other things, responsible for pursuing the development of standards for mobile network architecture. In that capacity he participated in ETSI[1] standards meetings on 2G systems including DECT (explained below). At Cellnet, from 1995, he was Network Architecture Manager. At
Nokia
, from 1997, he worked on various projects to develop business cases for investment in telecommunications technologies, including 3G. In 2001, with a colleague, he set up a research and consultancy business for the mobile telecommunications industry.
The skilled addressee
IPCom
submitted that real engineers would be immersed in only one standard.
v
Quadrant [2002] RPC 21 at [42]. That case involved prior art from two fields, namely "freeze drying" and "spray drying". Experts were called from each of these fields. It was submitted by the patentee that the only relevant common general knowledge was that shared by those in both fields. Laddie J rejected that approach saying this:
"[42] In my view these arguments are misconceived. In some cases a patent claim may cover a wide field so that some parts of it will be obvious to the notional skilled person in one field and other parts will be obvious to the notional skilled person in another. This is not unfair to the patentee, as Mr Waugh suggests, but simply a reflection of the fact that the scope of protection sought is wide. I accept, of course, that in some cases there will be invention in marrying together concepts from two unrelated arts, but that is not what Mr Carr is arguing for here. He says that the notional skilled worker in the art, whether he comes from the freeze-drying field or the spray-drying field, would find it obvious to work within the wide limits of the claim. When considering what would be obvious to the notional uninventive but skilled spray-dryer one must have in mind what would be common general knowledge in that field. Likewise when one is considering what is obvious to the notional uninventive but skilled freeze-dryer."
v
Electromagnetic Geoservices [2010] RPC 33, [2010] EWCA Civ 819, in which the invention lies in bringing together two unrelated disciplines. At [42] in the latter case, Jacob LJ (with whom Waller and Sullivan LJJ agreed) said:
"[42] I think one can draw from this case [i.e. Inhale] that the Court, in considering the skills of the notional "person skilled in the art" for the purposes of obviousness will have regard to the reality of the position at the time. What the combined skills (and mind-sets) of real research teams in the art is what matters when one is constructing the notional research team to whom the invention must be obvious if the patent is to be found invalid on this ground."
"Q. I am just trying to get to the bottom of what the average person would as a matter of his day-to-day experience actually be aware of. What I am suggesting is that he would be aware of the way handover worked in so far as it mattered to him in a particular system within which he was working.
A. Taking, for example, the people that I worked with day in and day out at BT who were developing standards, and when I say developing standards that was not just a matter of turning up at an ETSI meeting and then going away again, their day-to-day job was thinking about the requirements of that standard and understanding the mechanics required to make that standard work. So it was not just a matter of taking the way that it has always been done and let us slot that into the new system. There was a need to understand what is going on, to understand handover and its characteristics and the nature of different ways of doing it if you were going to implement a new handover method."
IPCom
. The skilled person envisaged by the patent was an engineer of the kind described by Dr Brydon with a broader outlook of handover systems in general, and not confined in his or her thinking to the rigid parameters of any existing standard. I am entirely satisfied that such a class of engineers existed in the real world at the time.
Mobile telecommunications standards
GSM
DECT
UMTS
Technical background
Handover and handover types
Handover design considerations
The patent
IPCom
was content to accept them as definitions. The dispute then resolved itself into a dispute about the meaning of the definitions. The listed distinctions include:
Forward handover: the mobile station searches for its destination base station itself and registers there directly.
Backward handover: the mobile station registers the HO with the old base station, which takes over the search for a new, suitable base station.
Mobile-station-initiated handover: the mobile station establishes that an HO is required and initiates this process.
Base-station-initiated handover (forced HO): the base station wishes to release capacities, or it establishes that the radio connection is deteriorating and notifies the MS that it should carry out an HO.
"offer[s] the advantage that a handover is possible even in networks in which only restricted communication is possible between the individual base stations."
"enables the combination of base-station-initiated and forward HO. This was previously possible only if it is accepted that the mobile station which is intended to carry out the HO finds no new base station and thus ends its connections."
"The method shown in Figures 4 and 5 thus makes it possible for an MS to make a test attempt to carry out a handover to a different base station. If this handover fails, the MS can return without problems to the original old base station BS 1, without this procedure taking much time. The handover attempt does not therefore result in any long interruption in the data stream, as no elaborate authentication procedures or re-storage of the connection data are required. This method can therefore be used advantageously in networks in which the network is not able to prepare the handover for the mobile station. This is particularly the case in networks in which base stations with different capabilities operate alongside one another. This may, for example, be the case if, in the event of a conversion from one mobile radio generation to a next mobile radio generation, base stations according to the new standard and base stations according to the old standard are temporarily present, with which the mobile stations can communicate, but which are not able to communicate with one another to an adequate extent. Here, the mobile station may be requested by a first base station BS 1 to hand over to a different base station on a test basis. If this handover then fails, the mobile station can return without problems and without significant interruption of the data flow to the old base station."
.png)
The claims
IPCom
advance no positive case that the claims as granted are valid. I have no doubt that, in the context of this dispute, if there had been anything which could have been said to support the validity of these claims,
IPCom
would have said it.
IPCom
did not seek to cross-examine Dr Brydon on his careful evidence that all the features of these claims were disclosed in the cited art. I accept that evidence. Accordingly I hold those claims to be invalid and need say no more about them.
IPCom
have advanced three alternative sets of claims, which it calls its "main request", its "first auxiliary request" and its "second auxiliary request", following the terminology used in opposition proceedings before the European Patent Office. I will use the terms "main", "first auxiliary" and "second auxiliary" to distinguish these multiple applications to amend.
Nokia
raised no specific objection to the existence of this proliferation of alternative claims. In fact, it has not caused excessive difficulty in the present case because
Nokia
do not challenge in these proceedings the validity of either set of auxiliary claims, although they do challenge their allowability as amendments. Moreover the second auxiliary set of claims is put forward to meet a specific added matter objection only. Accordingly the main focus of the case is in relation to the claims which are the subject of the main application to amend.
1. Method for handing over a connection of a mobile station to a network from a first base station (BS1) to a second base station (BS2) of the network,wherein, when there is an existing connection in the respective base station, connection data for the connection is stored and the resources of the base station are reserved for the connection,
wherein the handover is carried out as a forward handover initiated by the first base station,
wherein when a connection is handed over the connection data in the first base station (BS1) remains stored at first and the resources of the first base station (BS1) remain reserved at first
and in that at a later time the connection data is deleted and the resources are released,
wherein the later time is defined by a communication of the mobile station or the second base station about the successful handover.
3. Method according to claim 1 or claim 2, wherein if the handover fails the mobile station can restore the connection to the first base station (BS1) wherein the stored connection data and the reserved resources of the first base station are used for the connection which is restored in this way.
1. Method for handing over a connection of a mobile station to a network from a first base station (BS1) to a second base station (BS2) of the network,wherein, when there is an existing connection in the respective base station, connection data for the connection is stored and the resources of the base station are reserved for the connection,
characterised in that
when a connection is handed over the connection data in the first base station (BS1) remains stored at first and the resources of the first base station (BS1) remain reserved at first,
in the method the first base station transmits to the mobile station a request asking the mobile station to perform a handover,
the mobile station confirms this message via a message to the first base station,
the first base station then stops the data transmission via the radio interface,
the mobile station searches for a second base station and synchronizes itself therewith and
transmits a handover query to the second base station and simultaneously transfers the address of the first base station, and
wherein if the second base station accepts the handover of the mobile station the second base station transmits a message to the first base station to enquire whether the first base station will support the handover,
the first base station transmits a message to the second base station indicating a positive response that it supports the handover, and information required for the connection is sent from the first base station to the second base station,
and in that at a later time the connection data is deleted and the resources are released,
wherein the later time is defined by a communication of the mobile station or the second base station about the successful handover.
3. Method according to claim 1 or claim 2, wherein if the handover fails the mobile station can restore the connection to the first base station (BS1) wherein the stored connection data and the reserved resources of the first base station are used for the connection which is restored in this way.
1. Method for handing over a connection of a mobile station to a network from a first base station (BS1) to a second base station (BS2) of the network,wherein the network is not able to prepare the handover for the mobile station and
wherein, when there is an existing connection in the respective base station, connection data for the connection is stored and the resources of the base station are reserved for the connection,
characterised in that
when a connection is handed over the connection data in the first base station (BS1) remains stored at first and the resources of the first base station (BS1) remain reserved at first,
when the first base station decides that it will release the connection to the mobile station the first base station transmits to the mobile station a request asking the mobile station to perform a handover, and
the mobile station confirms this message via a message to the first base station,
the first base station then stops the data transmission via the radio interface,
the mobile station searches for a second base station and synchronizes itself therewith and
transmits a handover query to the second base station and simultaneously transfers the address of the first base station, and
wherein if the second base station accepts the handover of the mobile station the second base station transmits a message to the first base station to enquire whether the first base station will support the handover,
the first base station transmits a message to the second base station indicating a positive response that it supports the handover,
authentication parameters of the mobile station are then exchanged between the first and the second base stations,
the second base station then signals to the mobile station that the handover is supported by the network,
the second base station then requests the information required for the connection from the first base station and such information is then transmitted bv the first base station to the second base station,
and in that at a later time the connection data is deleted and the resources are released,
wherein the later time is defined by a communication of the mobile station or the second base station about the successful handover.
3. Method according to claim 1 or claim 2, wherein if the handover fails the mobile station can restore the connection to the first base station (BS1) wherein the stored connection data and the reserved resources of the first base station are used for the connection which is restored in this way.
Construction
v
. TKT [2005] RPC 9. The task of the court is to determine what a person skilled in the art would understand the patentee to be using the language of the claims to mean. A helpful summary of the applicable principles is to be found in Virgin
v
Premium Aircraft [2009] EWCA Civ 1062; [2010] RPC 8 at [5]. I do not repeat it here. I turn to the numerous features on which there is a dispute about the application of these principles.
"from a first base station to a second base station of the network"
IPCom
submit that the base station referred to in the claim is a base station sub-system which incorporates the BSC and any associated BTSs.
Nokia
submit that a base station is the BTS and a share of the BSC.
Nokia
rely on the following passage in the specification at [0003]:
"This means in each case that one access point (referred to below as a base station (BS)) in each case forms one radio cell. … Since these cells must have a very limited size in current systems due to the high frequencies and high numbers of mobile stations, the transfer of a mobile station from one cell into an adjacent cell is of great importance. This transfer of the connection of the mobile station from the radio cell 1 into the radio cell 2 is referred to as a handover (HO)".
Nokia
submit that this means that each cell has a base station, and handover is the process of transferring a connection on moving from one cell and its base station to another. They say this is reinforced by the description of Figure 4 which refers to "the radio cell formed by BS1"; in other words one base station is equated with one radio cell.
IPCom
rely, firstly, on the description of Figure 1 which states:
"Figure 1 shows schematically a cellular mobile radio system. Figure 1 shows, by way of example, two base stations (BS) 1, 2, which in each case form two radio cells."
IPCom
submit that the patent recognises that a single base station may have two radio cells.
IPCom
submit that Figure 1 makes clear that the base stations are connected to a single switching unit, forming "a permanently installed network". They suggest that this reference to the network is picked up by the claims in referring to base stations "of the network", and that therefore a transfer from one base station of the network to another is necessarily a transfer between separate BSCs. Lastly
IPCom
submit that the only purpose discussed by the patent for the invention in the passage at [0006] (referred to above) is to deal with networks in which only restricted communication is possible between individual base stations. They say this is not the case with handovers between BTSs within the same BSC.
Nokia
's submissions on this point. Taking
IPCom
's points in turn:
i) The description of Figure 1 does not clearly suggest that each base station has two radio cells. Even if it did so this would not be a strong indicator that intra-BSC handover was not contemplated as being within the scope of the invention. Figure 1 is expressly stated only to be by way of example.ii) The fact that the base stations are referred to as being "of the network" is entirely neutral. The base stations would be "of the network" whichever interpretation of base station was adopted.
iii) The fact that both base stations in Figure 1 are connected to the same switch does not help either. Figure 1 would be understood to be depicting, by way of example only, a simple architecture sufficient to illustrate the principle of the invention. It is wrong to use this to import unnecessary limitations into the claims.
iv) The passage relating to the purpose of the invention at [0006] shows that the invention is useful even in cases where there is limited communication between base stations. I consider that this passage assists
Nokia
because it contemplates that the invention may be useful in cases where communication between base stations is not limited, as would be the case where they share a BSC.
Nokia
when they submit that it is impossible to see any valid technical reason why the patentee would have wanted to exclude the class of intra BSC handovers when the method works for that class.
"connection" – claims 1 and 3
IPCom
submit that the connection which has to be restored – the first mention of a connection in claim 3 - is only the radio link from the mobile to the base station. They rely on the fact that the claim says "restore the connection to the first base station". I reject this construction. The claims are speaking throughout about the active end-to-end-connection.
IPCom
's construction, as they acknowledge, involves giving a different meaning to "connection" in the early part and the later part of claim 3. There is nothing in the point about "to the first base station". It makes perfect sense to speak of restoring the active end-to-end connection to the first base station: it just means that the end to end connection, whilst remaining the same at both ends, goes through BS1 rather than BS2. In the context, which includes claim 1, the latter part of claim 3 and the frequent references in the specification to routing the end-to-end connection via one or other of the base stations, it would be abundantly clear to the skilled reader that the patentee is referring throughout to the active end to end connection.
"forward handover"
Nokia
contend that the term "forward handover" is to be construed in accordance with the passage at [0004], and means that the mobile station "searches for its destination base station itself and registers there directly".
IPCom
now accept that the term is to be construed by reference to that passage, subject to a reservation about what is meant by "search". According to
IPCom
, there is a relevant search even if the mobile is given the address of the new base station by the old one, leaving the mobile with no decision to make.
IPCom
say that there is a forward handover whenever it is the mobile station and not the base station which makes the first unannounced contact with the new base station.
"In the step 102, the MS searches for a new base station and synchronizes itself with this base station. However, it is similarly possible that the MS, for example by measuring the field strength of the BS 2, has already identified the station with which the BS 2 [semble MS] intends to re-register, so that the search for a new base station is then no longer required."
IPCom
relied in opening on the second sentence of that passage to suggest that the search operation was optional. I do not accept that interpretation. I think the correct reading of the passage is that the process of identification of the target base station, which the patent calls searching, may have occurred at an earlier stage than step 102. A search is thus "no longer required" at the point when the mobile first contacts the base station, because the search has already occurred. The skilled person would understand that some mobiles keep themselves regularly updated on the availability of alternative base stations, so that a target candidate is always known to it. There is nothing in the passage to suggest that the task of identification of the target base station can be undertaken by anything other than the MS.
"Q. As I understand the distinction that you are drawing, you are saying if the PP gets a list of two FPs from its FP-1 as candidate FPs for a handover, then the choice between them is a search operation. But if it only receives one, then it does not carry out a search. Is that essentially what you are saying in these paragraphs?
A. To me the search is going to have a look at what is out there, so you are given a list of, these are potential targets for a handover. The mobile then needs to go and look at those potential targets and take a decision on which is the best one. If there is only one, then it may still decide, "Well, actually, I cannot see that base station, so I cannot perform a handover –"
Q. Is that still a search?
A. It is still performing the search process, but, I agree, it is not much of a search.
Q. It is not actually any more of a search or any less of a search than in the case of getting a list of two, is it?
A. The process is a search. The process of looking out there to see what is available in order that the mobile can decide what is the best handover target, that is what I regard as a search.
Q. Or whether to go with the handover target that it has been offered.
A. If it is given a single target, you mean?
Q. Yes.
A. Yes.
Q. Or whether it can communicate at all with the target that has been given
A. Absolutely. As I said, it may well be that you are given a list of candidates and none of them are available to you.
Q. All that to you is a search?
A. The process of going to look for those targets is a search, yes."
IPCom
. Firstly, the terms "forward" and "search" are ordinary English words. Their meaning is therefore not a matter for direct expert evidence. Secondly, it is the meaning of these words in context which is important. These answers were given in the context of a different document. It by no means follows that the words mean the same thing in the context of the patent. I have relied in reaching my conclusion on passages in the specification which throw light on the meaning of search in the context of the patent. Thirdly, Dr Brydon, at least in the earlier answers, clearly maintains that the mobile is still responsible for making a decision based on the available base stations. Lastly, even if one were to ignore the fact that this cross-examination was in relation to words which were not terms of art, it was not clearly suggested to Dr Brydon that his evidence in respect of the meaning to be attributed to the words in the patent was wrong.
"initiated by the first base station"
Nokia
contend that "initiated by the base station" means that the base station will normally attempt a handover when prompted to do so by the base station, but may nevertheless decline to do so on fixed criteria.
IPCom
originally contended that the expression "initiated by the base station" means a forced handover. A forced handover, they submitted, is one where the mobile station actually attempts a handover when required to do so by the base station, and only fails to do so when it cannot communicate at all with the new base station which it is required to contact.
IPCom
's construction.
IPCom
's argument, as it emerged in closing submissions, was that base station initiated handover covered the situation where the mobile did not initiate the handover. Building on this,
IPCom
submitted that the prior art made it clear that the term "mobile-station initiated" covered all cases where the mobile retains the ultimate decision to hand over, even where that decision had in some way been suggested by the old base station.
IPCom
's submissions on this point. It seems clear to me that the terms "base station initiated" and "mobile station initiated" focus on the instructions to attempt a handover and not on the control of what happens in response. To initiate a transfer the base station (or mobile) must send a message requesting a transfer with which the mobile will normally comply, subject to any criteria which it may impose. Beyond this I do not think that the patent requires any particular degree of compulsion to be exerted. I reject the suggestion that there is an established meaning to be gleaned from the prior art. The patent does not require the base station to have absolute authority over whether a handover takes place.
"communication about the successful handover"
Nokia
submit that the purpose of the invention is to reduce the possibility that the mobile must end its connection through failed handover, and therefore to retain the radio resources in the first base station until the entire handover process has been successfully completed.
IPCom
focus on the fact that the passage at [0009] says that the probability that the MS must end its connection is "significantly reduced": it does not say that it is removed altogether. They submit that the claim covers a case where a communication is sent reflecting some success in the handover process. They rely on the fact that the setting up of the new radio link with the second base station is the most risky part of the handover process. Thus they submit that the purpose of the invention is satisfied if the safety net is retained for some part of the handover process.
IPCom
rely on a passage in the patent at [0011] which states:
"The interruption of the radio link between BS1 and the MS3 and the activation of the radio link between the BS2 and the MS3 are normally regarded as the handover."
IPCom
submit that this passage indicates that something short of an entire handover, including the switching of the connection through the network, will do.
Claim 3 – "if the handover fails the mobile station can restore the connection to the first base station"
IPCom
submit that this phrase means that the mobile can restore the connection at any time until the "later time" defined by claim 1, namely when the connection data has been deleted and the reserved resources released. Of course, the handover is not going to fail after the "later time", because the later time is when a successful handover has occurred. I understood
IPCom
's point to be that the mobile must be able to restore the connection at any time up to that later time. Given that the data and resources are being stored up to the "later time", there is force in the suggestion that the skilled person would want to arrange matters so that the connection could be restored so as to make use of those resources for as long as they are stored. However I can see nothing in the language of the claim to compel that conclusion.
IPCom
's submission involves writing into the claim a requirement which is not there, namely the words "at any time up to the said later time".
IPCom
also submit that the claim implies a causal relationship. It does not cover a method in which the mobile is required to return to BS1 before the later time, whether the handover has failed or not. I think the claim is clear: if the handover fails, the mobile must be able to return to the first base station. There is no causal requirement.
Lack of novelty – law
v
SmithKlineBeecham [2006] RPC 10 at [21] to [25]. If there are gaps in the disclosure then the claim will not fail on the ground of lack of novelty.
Obviousness – law
v
Angiotech [2008] RPC 28, [2008] UKHL 49 at [42], Lord Hoffmann approved Kitchin J's statement about the approach to obviousness in Generics (UK) Ltd
v
. H Lundbeck A/S [2007] RPC 32, para. 72:
"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."
v
BDMO [2007] EWCA Civ 588; [2007] FSR 37. I have endeavoured to do so here.
Lack of novelty and obviousness over DECT
DECT disclosure
"The FP has the option to propose an external handover by using the FP initiated procedure for parameter retrieval, sending {MM-INFO-SUGGEST} containing all the information (handover reference, handover candidate) necessary to enable the PP to initiate an external handover. The PP should then initiate a handover using the procedures of 15.7.4."
.png)
Initiated by the base station?
IPCom
submit that {MM-INFO-SUGGEST} does not give rise to a base station initiated handover. They draw attention to the language used in section 15.7.3: the suggestion is made to the PP to initiate the handover. The suggestion is not said itself to constitute initiating the handover. I do not regard this point as persuasive. The passage is using the term "initiate" to refer to the commencement of the negotiations with the new base station, rather than to the instigation of the handover. There is no suggestion that the term "initiation" had a uniform meaning in the art.
Restoring the connection
IPCom
's case on this feature depends on their argument that the connection referred to in the early part of claim 3 is the radio link between the mobile and the old base station. They submit that in DECT the radio link between the old base station (FP) and the PP is not dropped. Only the link between the base station and the call destination is broken.
IPCom
submit that this is not restoring the connection within the meaning of claim 3. If the radio link remains in place, then nothing is restored.
IPCom
's submission. It has to be remembered that the connection in question is the active end-to-end-connection. In the circumstances discussed there is no doubt that the connection on the uplink is broken. The fact that the PP continues to transmit as far as the base station does not alter that fact. As Mr Tappin put it graphically, the data is going into a drain. Once the PP reverts to FP-1 the connection is restored. I am satisfied therefore that there is no distinction to be made based on this feature.
Nokia
, on the basis of Dr Brydon's evidence, suggest that one obvious choice is via FP-2.
Conclusion on DECT
Obviousness over Ojaniemi
Ojaniemi disclosure
Nokia
dated 29th January 1998, No WO 98/04094. It discloses a variety of ideas in relation to a mobile radio system aimed at reducing the number of connection losses incurred and to decrease unnecessary interference during handover.
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i) The MS measures pilot signals of surrounding BTSs and reports these to its serving BSC;ii) If a pilot signal of a surrounding BTS exceeds that of the serving BSC, the serving BSC initiates a handover via a mobile switching centre (MSC);
iii) The MSC then requests a handover from the target BSC, which reserves resources in the target BTS;
iv) After receiving confirmation that resources have been reserved, the MSC sends a handover command to the serving BSC, which then commands the MS to perform the handover to the target BTS;
v
) The new BTS informs the new BSC when it detects a transmission from the MS, and the new BSC then invites the MS to complete the handover. The MS replies with a "HANDOFF_COMPLETION" message which the BSC acknowledges;
vi) Finally the new BSC sends a message to the MSC to indicate successful completion of the handover. The MSC then starts to release the reserved resources associated with the original connection by sending a CLEAR_COMMAND to the original BSC. The BSC passes on a RESOURCE_RELEASE command to the original BTS, which then releases the relevant resources in the BTS.
"…if establishing a connection to a new base station BTS_2 fails during a hard handoff, the method will return to the initial connection between the subscriber station MS and BTS_1".
Difference from Ojaniemi
Was the difference obvious?
"Ojaniemi clearly explains the idea of reserving resources and storing connection data at the first base station until a handover had been completed successfully, so that the call could fall back if necessary, along with the release of the resources (and deletion of stored data) on handover completion.
In my opinion, it would have been apparent to the skilled person that this idea explained by Ojaniemi could equally be used to reduce call dropping on handover in other types of system, including a system of the type to which I have referred in paragraph 327 above.
I do not think that there would be anything inventive in the skilled person (who had read Ojaniemi) deciding to design a system which allowed base station initiated forward handover, implementing the idea in Ojaniemi."
Nokia v IPCom
[2011] EWHC 1470 Pat, in which I was dealing with an allegation of obviousness in the light of the common general knowledge. I set out the sentence in context here:
"[115]Nokia
's fourth and final attack on the patent was from common general knowledge alone. In short it runs as follows:
i) A lottery method for controlling access to the RACH was common general knowledge;
ii) It was also common general knowledge that the emergency services might require immediate access to the RACH;
iii) If it was thought to be a problem that the emergency services had to do the lottery, one could devise a system in which the emergency services were told by a signal on the broadcast channel that they did not need to.
[116] This is a very simple and attractive argument, untrammelled as it is by any of the details of a practical working system. Mr Gould's fundamental position was that the skilled team would be much more likely to start from one of the known standard proposals, such as GSM/GPRS or IS-95. His cross-examination required him to clear his mental decks of all such proposals and start with a system solely based on the lottery. He plainly thought this whole exercise unrealistic, as I believe it to have been. The skilled person's first port of call would have been to see what methods of control had in fact been used in the past. This is particularly so in a case where such methods have been through standardisation processes. I have already considered whether the methods disclosed in GSM/GPRS or IS-95 would have led to the invention and concluded that they would not. The obviousness argument from common general knowledge requires instead an a priori re-assessment of the problem without reference to these methods. I must take this decision into account in assessing whether the approach adopted in the patent is inventive."
Lack of novelty and obviousness over PACS
PACS disclosure
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Base station initiated?
IPCom
submit that optional PERFORM_ALT is not base station initiation within the meaning of the patent. Dr Brydon accepted that in order to implement optional PERFORM_ALT means would have to be provided to determine whether or not the SU would accept the suggestion of the handover. This could be based on parameters such as the signal strength of the target RPCU.
Nokia
's submission that such an arrangement is within the patent.
Restoring the connection if the handover fails
IPCom
next submit that in PACS there is no suggestion that the connection data is kept after the ALT_EXEC message is sent. This point is related to a point that they make on claim 3, that in PACS there is no ability to return to the first RPCU at all times prior to the completion of the ALT.
Nokia
, had seen coming. It only emerged with any clarity in
IPCom
's opening skeleton argument. Dr Brydon provided a fourth expert report after the trial had started which I admitted without any opposition from
IPCom
. Dr Brydon's evidence was that it was clear that an SU can fall back to the old channel, even after receipt of the ALT_EXEC message during an inter-RPCU ALT.
IPCom
accept that prior to the ALT_EXEC message being sent, the SU can return to the old RPCU. They say that this does not satisfy the claim, because the link is resumed whether or not there is a successful handover in progress. I have rejected this construction of claim 1 – the causal "if". It follows that this point does not provide a distinction over PACS.
"Q. Not all ALT fails, for example, could be interpreted as ALT abandoned, could they?
A. No, but I would not necessarily assume there would be a separate list of activities, all of which would be exactly the same for each of those cases, so I think this ALT abandoned message from the higher protocol level is catching all of those failure cases and saying, "Right, this has failed, this is what you do." Therefore, that middle column, showing the retuning and resuming the link, is what is intended to happen in each of those failure cases.
Q. That is just an assumption on your part?
A. It is, but based on the fact that the SU has to do something in its SU ALT permitted state. It has been left floating. The handover has failed. It is in a state, it is still in a call, so my interpretation is, in the context of the rest of the document where it does talk about the fact that the SU is able to fall back to the original RP, that this is the mechanism for doing it...
Q. What it comes to is this. Although there is an explanation here of how you can return to the old RPCU in the early stage of handover, prior to the ALT_EXEC -- and we can see that really easily from these SDLs -- there is no actual explanation of how that happens in respect of ALT_EXEC. Correct?
A. You mean a textual description of it?
Q. Yes.
A. That is true, so there is the general statement earlier on that the SU is able to return to its original RP, which certainly, when you first read that, you would assume that applies throughout the handover process. The document does not talk you through this SDL diagram and explain how it works, but my view is, that is how it is meant to work. That is the purpose of that middle column on page 121."
Communication about the successful handover
IPCom
submit that in PACS there is no communication of the mobile station or the second base station about the successful handover defining a later time at which the resources are released. They accept that the evidence shows that, on receipt of ALT_COMP, the network takes down the network-side elements. However, they maintain that there is no clear and unambiguous disclosure about what is to happen to the radio link between the network and the SU. Dr Brydon accepted that there was some ambiguity about this:
"Q. Yes. It is not as clear as you suggest, is it, because it appears that the PACS standard distinguishes between resources on the old RP, which is slightly ambiguous, and all the radio resources associated with the call? Do you recall that? If you look, for example, at page 128, which is the network SDLs. Just look at the bottom network ALT proceeding.
A. Yes.
Q. So when the network gets an ALT_COMP via the new RP, stops the timer, TN202, "release resources on old RP"; that is the step that we are looking at, is it?
A. Yes.
Q. But if we look across at the right-hand column, on a TN202 expiry -- and we see there a counter in the next diamond, so you can count the clock on -- if you have not received any message at all within a certain period of time, it then says, "Release all radio resources associated with the call."
A. It does.
Q. There is clearly a distinction being drawn, is there not, between the resources at the network level and the radio resources associated with the call?
A. Well, I did not pick that up, but my interpretation was based on the story that runs from the early stage, when it talks about the ability to return to the original RP if a call fails, so I think that the interpretation I have given is consistent with that. You know, resources on old RP is ambiguous, I agree with you, but I would regard the radio resources as being resources on the old RP.
Q. This is perfectly consistent with just the network taking down the network side elements of the connection with the old RPCU and saying nothing about the radio link. Correct?
A. That is another possibility, yes."
Intra base station handover
IPCom
submitted that intra-RPCU ALT did not comply with claim 1, on the basis of their argument as to the correct construction of "base station" in the claim. I have resolved that point against them. In case I am wrong on that point I have considered (above) the case based on inter-RPCU as well.
Differences from PACS
Nokia
that if they were wrong on "base station initiated", that they could succeed on obviousness. The remaining differences or potential differences between the disclosure of PACS and the inventive concept of claim 3 are the points about fall back after ALT_EXEC and release of the radio link by ALT_COMP.
Were the differences obvious?
Conclusion on PACS
Amendment- law
Nokia v IPCom
[2011] EWHC 1470 (Pat) at [126] to [136], I attempted to pull together the authorities on the law as it applied to the objection of added matter. I referred to what Pumfrey J said in Palmaz's European Patents [1999] RPC 47, 71 about intermediate generalisation:
"If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called "intermediate generalisation"."
"[132] Where a claim is being narrowed by the addition of features, there should, as Pumfrey J pointed out in Palmaz, normally be no difficulty provided that what is being done is to amend down to a distinct sub-class of the inventive subject matter, and provided also that one avoids intermediate generalisation. This problem may arise where, as in this case, it is sought to add to the claim features only to be found in the specification as part of the description of a specific embodiment, and where they are technically or functionally connected to other features which are not sought to be claimed."
[133] The EPO also apply a general rule where a claim is restricted to a preferred embodiment. In T0025/03 the Board said:
"According to the established case law of the boards of appeal, if a claim is restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see e.g. T 1067/97, point 2.1.3)."
[134] I think this is what Pumfrey J meant by introducing features into a claim "deprived of their context". I do not think he meant to establish a rigid principle of "all or nothing" in relation to taking features from a specific embodiment. Both Houdaille and T0025/03 recognise that presentation of a feature in combination with the claimed features may nevertheless permit the skilled person to recognise that the feature is not functionally or structurally essential."
The main and auxiliary applications to amend
Nokia
did not persist with any objections to the amendments the subject of the main application to amend, save only to point out that the claims so amended are invalid. On that ground I refuse to allow the patent to be so amended in accordance with the main application to amend. There remain to consider the objections to the first and second auxiliary applications to amend.
First auxiliary amendment application – added matter
i) That the first base station decides that the connection of the mobile station should be handed over;ii) That the authentication parameters of the mobile station are exchanged between base stations;
iii) That the second base station signals to the mobile station that the handover is supported by the network; and
iv) That the second base station requests the information required for the connection from the first base station.
Nokia
first make a pair of points under the heading of intermediate generalisation. The first of these is that the proposed amended claim includes a feature that the first base station transmits a request to the mobile to perform a handover whereas in the description of Figure 4 the first base station first decides that the mobile station should be handed over. These features, they submit, are functionally and technically linked. Accordingly claiming one but not the other leads to added matter.
Nokia
's second intermediate generalisation point is that features equivalent to messages 306 and 310 in Figure 4 (which is reproduced above) are included in the claim, but features equivalent to the intervening messages, 307, 308 and 309, are omitted. These are all aspects of network support which are technically and functionally linked. Picking out only two messages is, they submit, not permissible. That is particularly so when message 310 is the response to the request in message 309, yet only the response is claimed.
Nokia
submit that these are examples of impermissible generalisation. The claim is in effect a disclosure of a process which is nowhere to be found in the application as filed. The process disclosed in the application as filed has additional features which are technically and functionally related to the features which have been inserted in the claims.
IPCom
submitted that the present case was distinguishable from Palmaz. Palmaz involved mechanical features which were plainly functionally dependent on one another. In those circumstances it was accepted that there could be added matter by taking some of those features into the claim whilst leaving behind other, mechanically interrelated features. In the case of a handover process such as that described by reference to Figure 4, where one is concerned with messages going between base stations and a mobile, there was not the same functional or technical interdependence. I reject that submission. There is no difference in principle between claims of the kind with which I am concerned and claims of any other kind.
IPCom
's answer to the point made in paragraph 150 above is that the requirement for a decision by the first base station is implicit in the features which have been imported into the claim. I do not accept that submission. Decisions can be made at different points in the network: only a decision taken by the first base station is disclosed by the application: it is not implicit in the amended claims that the decision is taken in the first base station.
IPCom
submit, in answer to the point made in 151 above that there is nothing in the specification to suggest that the omitted messages are technically significant or necessary. I cannot accept that submission. The features sought to be claimed are closely interrelated in the description both technically and functionally with other features which have been left behind.
Nokia
, would the skilled person be able to recognise the sub-class of processes now sought to be claimed from the application as filed.
Nokia
point out that some of the features sought to be introduced relate to network support. Thus, they say, by introducing these features into the claim, the amendments are giving the features of network support inventive significance.
Nokia
draw attention to the passage at page 3 lines 7-11 of the patent, where it says that "the inventions with the characterizing features of the independent patent claims offer the advantage that a handover is possible even in networks in which only restricted communication is possible between individual base stations". In the application, when the features of the independent claims did not contain features related to network support, that statement was true. With the amendments, say
Nokia
, the patent would be teaching something new.
IPCom
submitted that both of these points were purely technical, in the sense of lacking any real substance. In any case, they offered to delete the sentences in question. In the absence of any more convincing answer, I think
Nokia
are right and there is added matter in these respects. Were it the only objection, I would have allowed
IPCom
the opportunity of applying to amend to remove the offending passages, a course I am prepared to permit in relation to the second auxiliary application.
Nokia
is that the description of Figure 4 contains no mention of a communication from the mobile station about the successful handover, yet this feature is combined in claim 1 with features extracted from Figure 4. I do not think there is anything in this point. The feature requiring a communication from the mobile station about the successful handover has always been a feature of claim 1. The skilled person would therefore have understood that that feature would be used in combination with the Figure 4 embodiment, including in combination with the features now added to claim 1.
Second auxiliary amendment application – added matter
Nokia
submit that this is a reference to a lack of network support. Yet the amendments seek to introduce features into the claim which expressly depend on network support.
IPCom
's answer is that there is a difference between the kind of network support needed to prepare the handover for the mobile station and the kind needed to support the communications identified in the amended claims. There is accordingly no contradiction in the claims.
IPCom
are right. The feature complained of does not require a complete absence of network support. It can therefore properly subsist with other messaging features which depend on network support.
IPCom
putting forward an amended specification in which the passages cited in paragraphs 157 and 158 are removed, the claims of the second auxiliary application to amend are allowable.
Essentiality
Nokia
seek declarations that the claims are not essential to three standards: UMTS, GSM and LTE.
Essential to UMTS?
Nokia
contend that CHANGE ORDER FROM UTRAN is not a forward handover. It is common ground that the mobile is given the target base station which it is to use in the handover process. It is therefore not responsible for identifying the target base station. This point turns entirely on the issue of construction dealt with above. On the view which I have come to on the meaning of forward handover, the UMTS protocol is not within the claims.
Nokia
contend that UMTS' CELL CHANGE ORDER FROM UTRAN is not "base station initiated" on
IPCom
's construction. I have rejected
IPCom
's construction, so this point is not necessary for my decision. If I had accepted
IPCom
's construction on this point, the patent would have been inessential on this ground. As Dr Brydon explained, the mobile station can reject the cell change order in more than one situation: this is incompatible with
IPCom
's construction which involves a mandatory requirement for base station initiation.
Nokia
contend that in UMTS the release of data and resources is not at a time defined by a communication about the successful handover. The short point is that the message which causes the release of the data and resources, message 13 in Figure 54 of UMTS Technical Standard 23.060, is sent before the completion of the handover process. Importantly, the handover can still fail after the release has taken place. This again turns on construction. I have accepted
Nokia
's construction of what is meant by a communication about a successful handover. It follows that it does not matter that message 13, is sent at a time when the difficult or risky part of the handover is complete. The handover is not complete.
Essential to GSM?
IPCom
did not advance any case of essentiality of the claims of the main application to amend to GSM. I can therefore deal with this very shortly.
i) "handover" which is used to transfer a dedicated mode connection between base stations;ii) "cell reselection" which is used to transfer a packet mode connection between base stations;
iii) "network controlled call reselection" which is used by a network to prompt a mobile to undertake a cell reselection.
i) For handover, he said that the handover was not "forward" in either of the respects identified in the patent, namely searching for the target or registration at the new base station. Instead the first base station defines the target and undertakes the preparations before the MS is made aware of the handover.ii) For cell reselection, Dr Brydon pointed out that the cell reselection was not initiated by the first base station. The process is entirely driven by the mobile. Moreover there was no reservation of resources, or release of resources as required by claim 1. There is also not the facility to return to the use of the original resources as required by claim 3.
iii) For network controlled cell change reselection Dr Brydon pointed out that the cell reselection was not forward. Moreover there was no reservation of resources, or release of resources as required by claim 1. There is also not the facility to return to the use of the original resources as required by claim 3.
Nokia
was entitled to on the basis of this evidence, which had been resolved by the end of the trial.
Discretion on LTE
Nokia
do not manufacture phones designed to comply with it. This gives rise to points on the exercise of the court's discretion to grant a declaration of inessentiality in a case where a party is not at immediate risk of infringement proceedings if it manufactures and sells equipment in accordance with the standard. I consider these first before coming to the technical points. If I were to do it the other way round I run the risk of pronouncing on the very issue which
IPCom
say I should not pronounce upon.
Nokia v
Interdigital [2006] EWCA Civ 1618; [2007] FSR 23.
IPCom
submit, in essence, that it would not be useful to grant a declaration that equipment manufactured and sold at some date in the future would not infringe the patent because it is in accordance with the standard in its present form. What
Nokia
will need to know is whether the patent would be infringed because it is in accordance with the standard as it exists when the equipment is sold. A declaration granted now, when there is no equipment, is useless and cannot anticipate the form of the standard when the equipment actually comes to be marketed.
Nokia
place their equipment on the market. But that does not mean that a declaration granted now would be useless or not serve a commercial purpose. There is no dispute that LTE is a major standard likely to dominate the future of mobile telecommunications. Businesses have to plan for the future. If
Nokia
knows that the claims are not essential now, they can monitor changes to the standard from that starting point. There is no reason why their technical and commercial planning should take place without the benefit of a declaration. Furthermore there is no reason why the court should assume that the standard will change in any respect material to the issue of essentiality.
Nokia
sent me some further evidence on this issue. I have not taken this further evidence into account. I would not have done so without a further hearing allowing
IPCom
to be heard.
Essential to LTE?
IPCom
advanced no technical case. Dr Brydon focused on the parts of LTE which
IPCom
had previously identified as coming within the scope of the claims. This is the MobilityFromEUTRACommand. The purpose of this command is to move a UE to another radio access technology (RAT) such as GERAN or UTRAN. This covers two types of process: a handover and a cell change order.
Nokia
submit that the claims of the main application to amend are not essential to either handover or a cell change order. Neither is a forward handover. Moreover there is no indication in either process that the UTRAN should delete the connection data or release the resources associated with the old connection at a time defined by a communication from the new base station. There is also no fall back as required by claim 3.
Essentiality of claims of first and second auxiliary applications to amend
IPCom
advanced no positive case that the claims of the first or second auxiliary application to amend were essential to any of the three standards. That is because large swathes of these amended claims find no counterpart anywhere in any of these standards. There was no challenge to any of Dr Brydon's evidence on this. These claims are not essential to any of the three standards.
Overall conclusions
i) The claims of the patent as granted are invalid.ii) The main application to amend is not allowable because the claims so amended are invalid for lack of novelty and lack of inventive step.
iii) The first auxiliary application to amend is not allowable as the amendments add subject matter.
iv) The second auxiliary application to amend is allowed, subject to an application to amend to remove the passages I have identified.
v
) None of the claims the subject of any of the applications to amend is essential to the UMTS, GSM or LTE standards and
Nokia are entitled to declarations to that effect.
Note 1 ETSI is the European Telecommunications Standards Institute. [Back]