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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> HTC Corporation v Gemalto SA [2013] EWHC 1876 (Pat) (10 July 2013) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2013/1876.html Cite as: [2013] EWHC 1876 (Pat), [2014] RPC 9 |
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CHANCERY DIVISION
PATENTS COURT
7 Rolls Buildings Fetter Lane London EC4A 1NL |
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B e f o r e :
____________________
| HTC CORPORATION |
Claimant |
|
| - and - |
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GEMALTO S.A. |
Defendant |
____________________
James Mellor QC, Guy Burkill QC and Miles Copeland (instructed by S. J. Berwin LLP) for the Defendant
Hearing dates: 24th, 25th, 26th, 29th, 30th April, 1st, 2nd, 3rd, 8th, 9th, 10th May
____________________
Crown Copyright ©
Mr Justice Birss:
| Topic | Paragraphs |
| Introduction | 1 |
| 865: The issues | 4 |
| 865: Background | 7 |
| 865: Witnesses | 25 |
| 865: Person skilled in the art | 34 |
| 865: Common general knowledge of the skilled addressee | 37 |
| 865: The patent | 51 |
| 865: Claim construction | 57 |
| (i) microcontroller | 60 |
| (ii) having a set of resource constraints | 104 |
| (iii) loaded in memory | 106 |
| (iv) a converter | 110 |
| (v) claim 8 | 112 |
| 865: Priority | 126 |
| Priority – the law | 127 |
| Priority entitlement | 130 |
| Substantive priority | 150 |
| Priority - conclusions | 195 |
| 865: Obviousness at the filing date | 196 |
| Skilled person and common general knowledge | 206 |
| Claim 1 | 207 |
| Claim 8 | 214 |
| Claims 15 and 18 | 221 |
| 865: Novelty at the priority date | 223 |
| The Caron article | 227 |
| Pasman | 242 |
| 865: Obviousness at the priority date | 246 |
| Common general knowledge alone | 266 |
| The Caron article | 283 |
| Pasman | 288 |
| 171 Application | 289 |
| 865: Patentable subject matter | 294 |
| 865: Infringement | 303 |
| Section 60(2) of the 1977 Act | 334 |
| The 9062 patent | 344 |
| 9062: Background | 347 |
| 9062: The witnesses | 353 |
| 9062: The person skilled in the art | 360 |
| 9062: Common general knowledge | 361 |
| 9062: The patent | 367 |
| 9062: Claim construction | 376 |
| 9062: Novelty | 390 |
| 9062: Obviousness | 421 |
| 9062: Infringement | 444 |
| Conclusion | 447 |
Introduction
Gemalto
(in fact the 865 patent belongs to
Gemalto
S.A. and the 9062 patent belongs to
Gemalto
N.V. but nothing turns on the distinction.) The proceedings began as actions for revocation of both patents by HTC. By counterclaim,
Gemalto
contends that the patents are infringed by certain HTC smart phones. The cases concerning the two patents are distinct but it was convenient to hear them together because they both involve the same general area of technology. The technology relates to what are sometimes called smart cards or chip cards.
Gemalto
the legal team working on the '865 patent was James Mellor QC leading Miles Copeland instructed by S.J. Berwin whereas for the '9062 patent
Gemalto
were represented by Guy Burkill QC leading Miles Copeland instructed by S.J. Berwin.
Gemalto
's declaration to the European Telecommunications Standards Institute (ETSI) in relation to the grant of a so-called FRAND licence (a licence on Fair Reasonable And Non-Discriminatory terms) under the 865 patent and the 9062 patent as limiting any relief to a monetary sum equivalent to a FRAND royalty. That question was stayed by paragraph 5 of the order of Arnold J dated 31st July 2012 pending judgment on the validity and infringement issues.
865 – The issues
Gemalto
contends that claims 1, 3, 8, 9, 15 and 18 of the 865 patent are independently valid. All these claims save for claim 9 are alleged to be infringed by HTC's sales of the devices in issue. Part of the issue of infringement involves s60(2) of the 1977 Act. All the claims include the term "microcontroller" and a key argument is whether the HTC devices have microcontrollers at all.
865: Background
865: Witnesses
Gemalto
submitted that Dr Greaves had no or only peripheral experience of the relevant art and that by selecting him as an expert, HTC had side stepped the relevant mindset of the skilled person. I will address the relevant art below but in any event I do not accept this point in relation to Dr Greaves.
Gemalto
's argument was that Dr Greaves' particular expertise in compilers would never have been sought out by the skilled team. Even if that was correct, as an expert in computer science Dr Greaves assisted me in grappling with the issues arising in this case. His evidence was pertinent and helpful.
Gemalto
called expert evidence from Professor Pierre Paradinas. Prof. Paradinas holds the Embedded Systems chair at the Conservatoire National des Arts et Métiers in Paris. From 1989 to 1995 he was co-director of a lab called "RD2P". This was a research laboratory jointly run by Gemplus, a smart card manufacturer, and Lille University. Of the four items of prior art relied on by HTC which were published before the claimed priority date, three derive from the RD2P lab.
Gemalto
. Since leaving RD2P in 1995, Prof. Paradinas has been independent of Gemplus.
Gemalto
submitted that Prof. Paradinas was much closer to the relevant art than Dr Greaves. I accept that Prof. Paradinas was much more closely involved in smart cards than Dr Greaves and I will bear that in mind to the extent it is relevant.
Gemalto
also relied on evidence of fact from Olivier Piou. M. Piou is the CEO of
Gemalto
's holding company,
Gemalto
N. V. He was not cross-examined.
865: Person skilled in the art
Gemalto
did not agree that this description of the skilled addressee applied to the skilled person from the point of view of obviousness. I will address that below.
865: Common general knowledge of the skilled addressee
Smart cards and integrated circuit cards
Instruction sets
The compiler tool chain
Java
Gemalto
pointed out that Dr Greaves accepted that some people would just be users and would not care how the JVM works internally. Nevertheless I find that the idea that the JVM had consisted of components with different functions would be common general knowledge. The skilled team would know it was comparatively large and would know, without having to be told or reminded, that the JVM was not merely an execution engine for byte code but carried out other functions such as linking and security/verification tasks. However I think Prof. Paradinas' evidence which I have referred to reflects something important about the skilled team in that, without any prompt to think more carefully about the JVM, the skilled team would not have more than a superficial interest in the contents of the JVM.
865: The patent
"Conventional platforms that support Java are typically microprocessor-based computers, with access to relatively large amounts of memory and hard disk storage space. Such microprocessor implementations frequently are used in desktop and personal computers. However, there are no conventional Java implementations on microcontrollers, as would typically be used in a smart card."
"In general, in one aspect, the invention features an integrated circuit card for use with a terminal. The integrated circuit card includes a memory that stores an interpreter and an application that has a high level programming language format. A processor of the card is configured to use the interpreter to interpret the application for execution and to use a communicator of the card to communicate with the terminal."
865: Claim construction
Claim 1
A microcontroller having a set of resource constraints and comprising: a memory,
an interpreter loaded in memory and operating within the set of resource constraints, the microcontroller characterized by having:
at least one application loaded in the memory to be interpreted by the interpreter, wherein the at least one application is generated by a programming environment comprising:
a) a compiler for compiling application source programs in high level language source code form into a compiled form,
b) a converter for post processing the compiled form into a minimized form suitable for interpretation by the interpreter.
Claim 3
The microcontroller of Claims 1 or 2 wherein the compiled form is in a standard Java class file format and the converter accepts as input compiled form in the standard Java class file format and produces output in a form suitable for interpretation by the interpreter.
Claim 8
The microcontroller of Claims 4, 5, 6, or 7 wherein the compiled form is in a byte code format and the converter comprises means for translating from the byte codes in the compiled form to byte codes in a format suitable for interpretation by the interpreter using at least one step in a process including the steps:
a) recording all jumps and their destinations in the original byte codes;
b) converting specific byte codes into equivalent generic byte codes or vice-versa;
c) modifying byte code operands from references using identifying strings to references using unique identifiers;
d) renumbering byte codes in the compiled form to equivalent byte codes in the format suitable for interpretation; and
e) relinking jumps for which destination address is effected by conversion step b, c, or d.
Claim 9
The microcontroller of any of the preceding claims wherein the application program is compiled into a compiled form for which the resources required to execute or interpret the compiled form exceed those available on the microcontroller.
Claim 15
A method of programming a microcontroller having a memory and a processor operating according to a set of resource constraints, the method comprising the steps of:
inputting an application program in a first programming language;
compiling the application program in the first programming language into a first intermediate code associated with the first programming language;
wherein the first intermediate code being interpretable by at least one first intermediate code virtual machine;
wherein the method of programming a microcontroller is characterized by:
converting the first intermediate code into a second intermediate code;
wherein the second intermediate code is interpretable by at least one second intermediate code virtual machine; and
loading the second intermediate code into the memory of the microcontroller (10).
Claim 18
The method of Claims 15, 16, or 17 wherein the step of converting comprises at least one of the steps of:
a) recording all jumps and their destinations in the original byte codes;
b) converting specific byte codes into equivalent generic byte codes or vice-versa;
c) modifying byte code operands from references using identifying strings to references using unique identifiers;
d) renumbering byte codes in the compiled format to equivalent byte codes in the format suitable for interpretation; and
e) relinking jumps for which destination address is effected by conversion step a), b), c), d).
"[66]. ….In Kirin Amgen v TKT [2005] RPC 9 the House of Lords explained that the determination of the extent of protection only involves asking what a person skilled in the art would have understood the patentee to have used the language of the claim to mean. Guidelines to assist the court in construing the patent are summarised by the Court of Appeal in Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1062; [2010] FSR 10 at paragraph 5, approving the statement by Lewison J (as he then was) at first instance in the same case:
'[5] One might have thought there was nothing more to say on this topic after Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9. The judge accurately set out the position, save that he used the old language of Art 69 EPC rather than that of the EPC 2000, a Convention now in force. The new language omits the terms of from Art. 69. No one suggested the amendment changes the meaning. We set out what the judge said, but using the language of the EPC 2000:
[182] The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 137 and refined by Pumfrey J in Halliburton v Smith International [2005] EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9. An abbreviated version of them is as follows:
(i) The first overarching principle is that contained in Article 69 of the European Patent Convention;
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively—the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone—the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(vii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(vii) It further follows that there is no general "doctrine of equivalents."
(viii) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(ix) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.'
67. I would stress only two points from this summary, given the importance of the issue of construction in this case. The first is that the exercise is one of construing the language of the claims in the context of the specification. The meaning of that language is informed by the technical understanding gained from reading the specification. Thus the specification has an important role in understanding the meaning of the language used. It is not, however, a proper approach to construction to start with the specification and ask what a patentee who has made that disclosure might be intending to claim, and then to shoe-horn the meaning of the language of the claim to fit with that understanding, whatever language he has actually used. To do so would be to afford supremacy to the description over the claims, contrary to the guidance given by Article 69 EPC and its protocol.
68. The second point is this. The patentee may have described a number of embodiments or examples of increasing sophistication in the body of the specification. Having done so, the patentee has the freedom to set the generality of his claim at the level of his choosing. There is no presumption that he will have decided to pitch his claim at the level of the most sophisticated embodiment. It is the claims which will tell the skilled reader at what level the patentee has decided to stake his monopoly claim. The skilled reader would not be justified in assuming that the patentee has elected to claim the features of the most sophisticated embodiment, so as to compel the conclusion that those features are read into the claims. Equally, as sub-paragraph (v) in the above summary indicates, the skilled reader does not assume that the patentee is aiming at the widest possible construction consistent with his purpose."
i) "microcontroller"
ii) "having a set of resource constraints"
iii) "loaded in memory"
iv) "a converter"
v) Claim 8
(i) microcontroller
Gemalto
's case is summarised in paragraphs 99 – 100 of its closing argument:
"99. Microcontroller is an ordinary word in this technical field, with no special meaning to be derived exclusively from the description of the patent or externally. It means simply a controller which contains a microprocessor – hence micro-controller. The "controller" element connotes that it is not just a microprocessor, but also contains the elements necessary for it to exercise control, and so includes other functional elements such as memory, input/output etc.
100. In context, it is clear that the distinction being drawn in [0006] to [0009] of the background section of the patent and the purposes of the limitation to a "microcontroller" in the claim is between (a) microprocessor-based computers (i.e. general purpose computers) and (b) microcontrollers (in the sense of a dedicated system, as used in an embedded system). The claim is directed to dedicated systems – viz microcontrollers."
Gemalto
denies that the memory has to be on the same silicon substrate as the CPU.
How has the word "microcontroller" been used in the art?
"A microcontroller is a computer-on-a-chip or, if you prefer, a single-chip computer. Micro suggests that it is small, and controller tells you that the device might be used to control object, processes or events. Another term to describe a microcontroller is embedded controller, because the microcontroller and its support circuits are often built into, or embedded in, the devices they control."
| "24 Q. | So microcontrollers with their CPU and memory all on a single |
| 25 | chip, there were a large number of those in 1996? |
| … | |
| 2 A. | Yes. |
| 3 Q. | And those were frequently referred to as single chip |
| 4 | microcontrollers? |
| 5 A. | I would have thought that by that date the single chip |
| 6 | qualification would largely be dropped. |
| 7 Q. | Are you aware that manufacturers still use the term single |
| 8 | chip microcontroller? |
| 9 A. | Yes, and no doubt -- in the general sense of what that phrase, |
| 10 | what that word means -- meant -- at that priority date, I do |
| 11 | not think it requires qualification. The patent does not talk |
| 12 | about a single chip microcontroller, it just gives a |
| 13 | definition in that paragraph of what it is talking about and |
| 14 | it does not qualify that the whole time. |
| 15 Q. | But the use of the term "single chip microcontroller" |
| 16 | distinguishes those from microcontrollers which do not have |
| 17 | all their functional blocks on a single chip. That is right, |
| 18 | is it not? |
| 19 A. | Prior art, prior times, previous decade, certainly. |
| 20 Q. | Also, if people are still using the term single chip |
| 21 | microcontroller, the term is ---- |
| 22 A. | I do not think it is widely used like that any more. When we |
| 23 | say microcontroller, we mean single chip microcontroller, as |
| 24 | of roughly the priority -- well, start in 1990, say. |
Gemalto
was that the existence of the term ROMless microcontroller showed that a microcontroller did not as a matter of necessity have to have on-chip ROM. The argument may be flawless as a matter of logic but I do not accept it follows that just because a skilled person would understand what a ROMless microcontroller was, this displaces the point that what a skilled person would take as the typical meaning of the term microcontroller was a single chip with the CPU, memory (and the I/O interfaces) on that one chip.
i) The skilled person would have understood the term "microcontroller" to mean that all the components (apart of course from power source) were on a single chip.
ii) There were occasions where components could have access to off-chip memory as well as on-chip memory but were labelled as microcontrollers because they were variations on a family of microcontrollers.
iii) There were also sometimes ROMless microcontrollers in those families of microcontrollers, but they were described as such, rather than as microcontrollers without the qualifying adjective.
iv) When a microcontroller is connected to external memory and the CPU is executing code using that external memory, it is behaving as a microprocessor and not a microcontroller.
Gemalto
's submission is right, that by 1996 a microcontroller was simply a controller which contains a microprocessor.
Gemalto
contends the word should be interpreted, as a controller which contains a microprocessor. My impression from the weight of the evidence was that this usage was not common in 1996 but it was one of the senses in which the word had been used.
"Microcontroller" in the patent
Gemalto
's construction of the word or HTC's.
Gemalto
submitted that it was not correct to take the specific problem addressed in a patent specification and use that as a justification for reading limitations into a claim which are simply absent. I think there some force in
Gemalto
's point. Inventions often arise from a particular problem faced by an inventor which is described in detail in the specification. Once the solution has been found it is often possible to generalise and so to write a claim which is more broadly based that the particular problem addressed. In this case the fact that claim 1 is not limited to Java is an example. However HTC retorts that the reference to the problem as they describe it is in the background section of the patent, where one is entitled to expect more general ideas. Nevertheless, looking at the patent as a whole, I do not accept that discerning the inventor's purpose helps to resolve this dispute. The problem addressed is concerned with implementing high level languages when resources are limited. Microcontrollers can have limited resources whether one is using the term in HTC's sense or in
Gemalto
's sense. In this case purpose is neutral.
Gemalto
's sense of the term microcontroller but I believe it reads more naturally using HTC's sense of the word.
Gemalto
's sense.
Gemalto
's approach to construction the term is redundant in the phrase.
Gemalto
submitted this meant that the specification was acknowledging the possibility that the memory may not be located in the processor, i.e. may not be on the same chip as the processor. Thus
Gemalto
submitted this favoured their construction. I do not agree. It is preceded by the sentence, "The processor may be a microcontroller." Like much of this section of the patent, this sentence appears to be based on the footing that the invention need not be a microcontroller. However the claimed invention is to a microcontroller and one is left with the impression that this paragraph is not well drafted. The skilled addressee would be wary of drawing conclusions and that is enough to undermine
Gemalto
's reliance on it. Moreover, if I was required to give a meaning to the relevant sentence, my view is the following. As I read these two sentences, they are in fact talking about a single case. The processor may be a microcontroller and if it is then that will have the consequence that at least a portion of the memory will be located in the processor, i.e. on the same chip. I do not accept this paragraph assists
Gemalto
. At best this is an indication that the patentee has contemplated what I have called the extended version of the normal usage of the word, referring to a microcontroller chip with on-chip memory albeit that it can access some off-chip memory too.
"In general, in another aspect, the invention features a microcontroller that has a semiconductor substrate and a memory located in the substrate. A programming language interpreter is stored in the memory and is configured to implement security checks. A central processing unit is located in the substrate and is coupled to the memory."
"In general, in another aspect, the invention features a microcontroller that includes a memory which stores an application and an interpreter. The application has a class file format. A processor of the microcontroller is coupled to the memory and is configured to use the interpreter to interpret the application for execution,"
Gemalto
's argument.
Gemalto
's construction to identify a microcontroller the skilled addressee looks at the system as a whole. A microprocessor based system dedicated to a particular task is a microcontroller regardless of the particular kind of chip inside or how it is configured.
Gemalto
's construction.
Gemalto
and HTC regarding the German designation of the same patent. I believe I have reached essentially the same conclusion as the Mannheim court. Although the argument presented by HTC in Mannheim was much the same as was presented here, the argument presented by
Gemalto
appears to have been different and so the two courts have not been faced with the same arguments.
(ii) "having a set of resource constraints"
Gemalto
submitted the resource constraints could be anything: e.g. memory, power, processing speed etc. HTC submitted that the relevant resource constraints related to the fact that microcontrollers did not have sufficient non-volatile memory (ROM) to store the application and the interpreter nor did they have enough RAM to run the application using the interpreter. I reject HTC's argument as a justification for reading this phrase in a limited sense. The reader would understand that the patentee has, for good of ill, chosen to claim broadly. The claim is not limited to constraints arising from a lack of memory.
Gemalto
suggested that HTC's interpretation of resource constraints in claim 1 required claim 9 to be read into it. Since I have rejected HTC's interpretation on that point, I do not need to consider claim 9.
(iii) "loaded in memory"
Gemalto
did not agree. It submitted there was no reason to read this limitation into the word "loaded" and the term "loaded in memory" was apt to cover a case in which code was put into some cache memory when the program was being run.
Gemalto
argued that "loaded" was different from "stored" and that loaded carried the connotation of "loaded for execution".
(iv) converter
(v) Claim 8
Gemalto
submitted that claim 8 necessarily also depends on and therefore incorporates all the features of claim 4. This is an error. Although claims 5 and 6 refer back to claim 4, claim 7 does not. Hence claim 8 may incorporate claim 4 (if read through claims 4, 5, 6 or those parts of claim 7 reading through claims 4, 5, or 6) but it need not if it incorporates claim 7. For the purposes of this case the claim can be considered as two claims: claim 8 plus 4 plus 1; and claim 8 plus 7 plus 1.
The microcontroller (10) of any of the preceding claims wherein the compiled form (24) includes associating an identifying string for objects, classes, fields, or methods, and the converter comprises a means for (57) mapping such strings to unique identifiers (51 b).
The microcontroller (10) of any of the preceding claims where in the high level language supports a first set of features and a first set of data types and the interpreter (16) supports a subset of the first set of features and a subset of the first set of data types, and wherein the converter (26) verifies (51c, 52) that the compiled form (24) only contains features in the subset of the first set of features and only contains data types in the subset of the first set of data types.
865: Priority
Gemalto
denies both points. The significance of this argument is that in the priority period Schlumberger published the Cyberflex material which describes some details of what had been invented.
Priority – the law
5(2). If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A) or (b) below, then –
(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which the matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them;
(emphasis added)
Priority entitlement
"In my judgment the effect of Article 4 of the Paris Convention and section 5 of the Act is clear. A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties."
Gemalto
did not challenge this and I will take it therefore that the applicant in the UK has to be a successor in title to the invention at the point in time when he files his UK application; a later acquisition of title to the invention is not enough. He must also be the successor in title of all the applicants.
Gemalto
referred to the judgment of Arnold J in KCI v Smith & Nephew [2010] EWHC 1487 (Pat). In that case Mr Lina was the inventor and, in accordance with US law, he was the sole applicant of a US application which was the priority document in the case. On the international application under the PCT, KC Inc was named as the applicant. Thus the question was whether KC Inc had the right to claim priority. KC Inc was said to be Mr Lina's successor in title by virtue of the terms of an agreement between KC Inc and Mr Lina whereby, in consideration of his employment with KC Inc, Mr Lina agreed to assign all (relevant) inventions to KC Inc. Although the proper law of the agreement was Texas law, no evidence of Texas law was filed and it was common ground English law should be assumed to be the same. Arnold J held that s7 of the 1977 Act proceeded on the basis that it was possible to assign the legal title in an invention before it was made and that as a result the agreement was effective to assign the legal title to the invention to KC Inc and thus KC Inc were, at the date of the PCT application, Mr Lina's successor in title (paragraphs 55-68). Arnold J went on to say:
"69. I would add that, even if it was not effective to convey the legal title to the invention, para.3 of the Confidentiality Agreement was plainly effective to transfer the entire beneficial interest in the invention, including the right to file patent applications in respect of it, from Mr Lina to KC Inc. KC Inc would have been entitled to demand that Mr Lina convey the bare legal title to the invention to itself at any time, and to compel Mr Lina to do so if he failed or refused to do it. If necessary, I would hold that that was sufficient to make KC Inc Mr Lina's "successor in title" for the purposes of a claim to priority under art.87(l) of the EPC and art.4(A)(1) of the Paris Convention even if KC Inc had not acquired the bare legal title at the relevant date.
70 I am encouraged so to hold by the decision of the Legal Board of Appeal in Case J19/87 Burr-Brown/Assignment [1988] E.P.O.R. 350 that an assignment of an invention and a patent application from A to B with a covenant of further assurance was sufficient to entitle B to claim priority from an application filed by A even though the assignment of the patent application was ineffective because it was not signed by B contrary to s.30(6) of the 1977 Act as it then stood. In holding that the priority claim was a good one, the Board (two of whose members were Peter Ford, later H.H. Judge Ford, and Gerald Paterson, later the author of The European Patent System) accepted an opinion from English counsel (Nicholas Pumfrey, later Pumfrey J.) stating that (i) the assignment of the invention (which post-dated the making of the invention) was effective in law even though the assignment of the patent application was not, and (ii) although the assignment was ineffective in law B had acquired an equitable interest in the patent application which was a proprietorial interest. Although it could well be argued that point (i) was enough, the Board seems to have regarded point (ii) as significant as well.
71 To my mind, this makes sense. Article 4(A) of the Paris Convention and art.87(1) of the EPC are provisions in international treaties whose operation cannot depend upon the distinction drawn by English law, but not most other laws, between legal and equitable title. When determining whether a person is a "successor in title" for the purposes of the provisions, it must be the substantive rights of that person, and not his compliance with legal formalities, that matter".
Gemalto
relied was paragraph 98. This was the conclusion of a section in which Arnold J considered what would happen if another company, Mediscus, was a co-applicant with KC Inc. He said:
"98 Counsel for KCI accepted that he could not point to any written assignment, or even an oral agreement, but argued that the correct inference to be drawn from the circumstances surrounding the filing of the PCT Application was that KC Inc had agreed by conduct to transfer part of its interest in the invention to its subsidiary Mediscus. He submitted that this was sufficient to make Mediscus a successor in title for the purposes of claiming priority, and that no greater degree of formality was required. I accept that submission.
99 For these reasons I conclude that it would not adversely affect the claim to priority if Mediscus was held to be a co-applicant".
Priority entitlement – the facts
Assessment
Gemalto
submitted that it was plain that an invention he was employed to devise must belong to his employer, STC in law. Thus, for the same reasons as above, the STI can derive title via STC and so STI were a successor in title to Mr Guthery as well.
Gemalto
had refused on the ground that no US law was pleaded and so English law applied or should be presumed to apply.
Gemalto
to submit a note on the point after the trial.
Gemalto
's counsel (Mr Burkill and Mr Copeland) submitted that this argument about s39, s43(2) and a lack of evidence of US law should not be accepted. They pointed out that neither side had led any evidence of US law and that the court should and can only proceed on the assumption that the applicable law is the same as English law. Section 43(2) contains limitations on the application of s39 to non-UK employees but that is on the obvious basis that foreign law, if proved, would apply instead. Absent any evidence that a different provision applies, the presumption means that a provision equivalent to s39 should be assumed.
Gemalto
's counsel are right that the reason s43(2) of the 1977 Act disapplies s39 cannot be to create a different English law of the ownership of foreign inventions, the section is disapplied because as a matter of English law, the correct law to apply to that question is the local foreign law. Since I have no evidence of the applicable US/Texan law the only basis on which I can decide this issue is to assume US/Texan law is the same as what English law would be applied to events which took place in England. On that basis section 39 would have the effect that the invention belonged to STC. In taking this approach, as
Gemalto
's counsel submitted, I am not applying s39 to an employee in the USA, I am presuming that the corresponding law is the same and applying that.
Substantive priority
High level language
i) The point pleaded is:
"The priority document does not clearly and unambiguously disclose (in an enabling manner or at all) the use of any high-level programming language (or any compiler, converter or interpreter therefore) other than Java. The priority document accordingly does not support the breadth of claim 1."
Microcontroller
ii) The point pleaded is:
"The priority document does not clearly and unambiguously disclose any device (or the programming of any device) other than a microcontroller, as defined at page 1 lines 22-28. If the defendants contend that claim 1 is to be construed as extending to a device other than a device of the type defined at page 1 lines 22-28 then the priority document does not support a claim of such breadth."
Converter etc.
iii) The point pleaded is:
"The priority document does not clearly and unambiguously disclose "a converter for post processing the compiled form [of the application] into a minimised form". In particular:
[…]
(b) The reordering of bytecodes described in section 2 on page 6 (and at page 5 lines 27-28) and shown in Figure 1 does not reduce the size of the compiled form of the application.
(c) Section 3 on page 7 (and page 5 lines 15-16) does not contain an unambiguous (or enabling) disclosure of any converter for post processing the compiled form of the application into a minimised form.
(d) Page 5 lines 35-38 refers to the minimisation of the size of the interpreter, not to the minimisation of the compiled form of the application.
Even if (which is denied) the priority document discloses any "converter for post processing the complied form [of the application] into a minimised form", it is only a converter which performs the processes referred to in sub paragraphs 1.3 (b)-(d) above, and the priority document does not support a claim of the breadth of the claim 1 which refers to any "converter for post processing the compiled form [of the application] into a minimised form".
Gemalto
denies all these points.
Gemalto
. Although the point did not emerge clearly until the end, by the close
Gemalto
's case was that claim 8 was entitled to multiple priorities, with sub-paragraphs (c) and (d) being entitled to maintain the priority date even if (a), (b) and (e) were only entitled to the filing date. HTC did not agree that multiple priorities could be assigned in this way for this claim and did not accept in any event that sub-paragraphs (c) and (d) were entitled to the priority date. The same arguments applied to claim 18, which has the same sub-paragraphs as claim 8.
Substantive priority - the law
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, [2001] OJ EPO 413; [2002] 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 [2004] EWCA (Civ) 1021; [2005] FSR 6 at [48]:
"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 [2008] 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."
(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 relevant claim can be derived directly and unambiguously from the disclosure of the priority document.
"49. Before going to the details of the priority document in this case I should deal with Mr Carr's submission about the main claim or consistory clause of the priority document, i.e. that although not determinative it is nearly so. That he could not get out of 02/98 or indeed any other authority. 02/98 refers to "the previous application as a whole," not the main claim nor the "main statement of invention" nor the "consistory clause". Likewise there is nothing in Art.87 which compels or suggests this conclusion. And Art.4H of the Paris Convention is positively against it. The claims (if any—there is no rule that there should be) of the priority document are not determinative. They are just part of its disclosure. For the purposes of priority one just looks at the disclosure as a whole.
50. If the rule were otherwise one of the main functions of a priority document would be lost. Inventors and their advisors would have to start worrying not only about the technical information disclosed in the document but how it was to be claimed: have I drafted my main claim or consistory clause broadly enough? That is not the purpose of the system: the purpose at this point is to get the information justifying the later claim into a patent office of a Union country. If you do that, you can have your priority, whether you express that in a proposed claim, consistory clause, statement of invention, other text or drawing or in any combination of these. Time is of the essence because the world-wide system (except for the Americans) works on the first to file basis. The detailed framing of a claim based on that information may then be done within the Convention year."
"I discern from this passage that the EPO considers it is permissible to afford different priority dates to different parts of a patent claim where those parts represent a limited number of clearly defined alternative subject-matters and those alternative subject-matters have been disclosed (and are enabled) by different priority documents. Further, this principle applies even if the claim has adopted a generic term to describe and encompass those alternatives. I do not detect anything in the decisions of the Court of Appeal in Pharmacia and Unilin Beheer which is inconsistent with this approach and in my judgment is one which this court should adopt."
Gemalto
submitted this was wrong in law because otherwise an opponent, by citing some inventive improvement not disclosed in the priority document but merely covered by a granted claim, would automatically knock out the priority of the claim, a proposition
Gemalto
argued only had to be stated to be rejected. I agree with
Gemalto
up to a point but care is needed not to state things too broadly. If a specific feature is not disclosed in the priority document then a claim that expressly refers to that feature must lose priority. However the fact that a broad claim will cover something (among other things) is irrelevant to priority as long as the priority document supports the broad claim at its level of generality. That conclusion is at the heart of the reason of the House of Lords in Biogen. If the broad claim covers things which owe nothing to the disclosure of the priority document then the priority document will not support the broad claim and priority will be lost, as happened in Biogen on its facts, but that is a different matter. I do not believe Kitchin J was seeking to say anything different. All the passage in paragraph 122 means is that if the claim is one for which partial or multiple priorities are to be ascribed, the use of generic wording does not prevent that from happening.
The priority document
(i) High level language
This invention relates in general to the field of programming, and more particularly to a method of programming a microcontroller using a high level programming language called "Java," and most particularly with programming a central processing unit of such a microcontroller installed in an integrated circuit card or "smart card".
Gemalto
sensibly abandoned trying to squeeze such a disclosure from this sentence. The sentence says no more than the first paragraph. Moreover this particular sentence could not help
Gemalto
anyway since it is not talking about the source code of the application, it is talking about how to program the operating system itself.
(ii) microcontroller
A microcontroller comprises a central processing unit, memory and other functional elements on a single chip. Typical microcontrollers have one to thirty-two kilobytes of memory. with four kilobytes being very common. Only 512 bytes of this memory is RAM memory; the remainder is ROM and EEPROM memory. The latter performs read functions easily but is much more difficult to write to than is RAM memory. One of the uses of microcontrollers is for integrated Circuit cards.
(iii) Converter
It is also the object of this invention to compact an application by use of a pre-defined namespace map to refer to functions existing on the card.
"The namespace is managed by use of a map. Java identifies all objects, classes, fields and methods by using textual strings. This takes far too much space and is unsuitable for the secondary form that will reside on the card. The preferred embodiment of the present invention therefore translates all textual references for these objects into unsigned integers (the size of which depends on the architecture of the microprocessor on the card). Each integer uniquely identifies a particular textual reference in the application. It is necessary to embed parts of the compacted system into the card when it is manufactured while allowing newly loaded applications to make calls to it."
Gemalto
submitted, this confirms that the secondary form of the application program which resides on the card has been made smaller. In other words something (call it a converter) has converted the compiled form of a Java application into a secondary form and made the form which goes onto the card smaller. I reject HTC's case that this section of the priority document is non-enabling.
Claims 8 and 18
Priority - conclusions
i) Claim 1 is entitled to the filing date;
ii) Claim 3 (combined with claim 1) is entitled to the priority date;
iii) Claim 8 is not entitled to multiple or partial priorities and so is only entitled to the filing date;
iv) Claim 9 stands or falls with the claims from which it depends;
v) Claim 15 is entitled to the filing date;
vi) Claim 18 is entitled to the filing date.
865: Obviousness at the filing date
"The development software for preparing applications for loading onto the Cyberflex smart card product made available to the public in about May 1997 together with the Cyberflex smart card product made available and intended to be used together with that development software from about May 1997 and together with the documentation relating to the said product and software made available at least on the website www.cyberflex.austin.et.slb.com as of 30 May 1997 (as evidenced by the state of the said website on that date shown by the Wayback Machine - extracts from which are annexed hereto). The Claimant also infers that the Defendant made available examples of the Cyberflex smart card product with at least one application loaded in memory as samples from about May 1997."
i) A title page headed "Presenting…" above a picture of the Cyberflex card (p.1);
ii) A contents page with various subheads including "What is Cyberflex?" and "Announcements" (p.2);
iii) Four pages headed "Cyberflex / What is it?" (pp.3-6);
iv) Four pages headed "Cyberflex / Announcements" (pp.7-10);
v) Two pages headed "What's New" (pp.11-12);
vi) Three pages headed "The Universe of Smart Cards / Cyberflex / Frequently Asked Questions" (pp.13-15);
vii) Three pages headed "Development Toolkits" (pp.16-18);
viii) Four pages of a further FAQ under the headings "Documentation / Frequently Asked Questions / JavaCard: A Technical Briefing" (pp.19-22).
(1) (a) Identify the notional person skilled in the art;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
"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."
"Ultimately the court has 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. As Aldous LJ said in Norton Healthcare v Beecham Group Plc (unreported, 19 June 1997):
'Each case depends upon the invention and the surrounding facts. No formula can be substituted for the words of the statute. In every case the Court has to weigh up the evidence and decide whether the invention was obvious. This is the statutory task.'"
"182 […] We should stick to the statutory question, which has to be applied in all sorts of circumstances and in all sorts of different fields of endeavour.
183 An invention is, at least usually, either a product or a process. So the statutory question is: was it obvious to make the product or to carry out the process? In order to answer the statutory question it is, of course, necessary to decide what the invention is. [...]"
Skilled person and common general knowledge
Claim 1
Inventive concept
Identify differences
Are the steps obvious?
Gemalto
submitted this was an exercise in hindsight. I do not agree. The Cyberflex materials explain that the virtual machine on the card is 4KB in size as compared to the 150KB size of the normal Java Virtual Machine. It is obvious that steps which are carried out by the JVM normally, such as linking, optimisation and verification, are being carried out off-card in the Cyberflex system. No hindsight is involved. I also do not accept the argument that the skilled person in this context does not know the details of what is contained inside a JVM. Since the Solo Virtual Machine is clearly a cut down version of the JVM, in order for the team to even begin to contemplate creating their own version of the Solo Virtual Machine, the team has to have an understanding of the functions carried out inside a JVM. This team will not treat the JVM as a monolithic block.
Gemalto
's opening skeleton. In closing
Gemalto
took a general point about Dr Greaves' approach which would apply to all claims.
Gemalto
submitted that in cross-examination Dr Greaves accepted that his approach to obviousness over Cyberflex utilised a number of building blocks and pieces of deduction that he had used in the section of his report on obviousness over common general knowledge alone at the priority date. This came down to two criticisms. The first was that there was no basis for the idea of using an interpreter on a smart card to run applications originally written in Java - but Cyberflex puts this very idea before the skilled team. The second was about whether all the details of the functions of the JVM were part of the common general knowledge. However starting from Cyberflex the team would find this out if they did not already have that information. Without these points the criticism has little force and I reject
Gemalto
's submission about Dr Greaves' approach in relation to Cyberflex.
Claim 8
Claim 15 and 18
865: Novelty – at the priority date
i) The paper "OCEAN: A C compiler for new smart card applications" by Oliver Caron and Georges Grimonprez of the RD2P-LIFL group in Lille, France published in 1994, ("the Caron article");
ii) The paper "Implementation of Pascal on an 8080 Microcomputer" by W.J.A. Pasman published in Euromicro Journal 5 (1979) 363-369 ("Pasman").
The Caron article
Gemalto
's case was that the focus of Caron and the OCEAN tool was about modelling the instruction set of a processor, and was only concerned with evaluating hardware. I do not accept that. Caron includes other ideas, as I shall explain.
"If the size of the C_Card application is greater than about 500 lines, the size of code from the [Virtual Code] method is more compact."
Comparing the Caron article to the claims
Gemalto
contended that claim 1 was novel over the Caron article because C was not a high level language within the meaning of claim 1 but that argument was dropped and I need not consider it. At one stage it was suggested by
Gemalto
that Caron did not disclose loading the code into the memory of a microcontroller. I am not sure this was formally dropped as a point but it is a bad point in any event. As Prof. Paradinas agreed in cross-examination, the aim of the Caron article is to load applications onto smart cards, in other words onto the memory of the microcontroller (not named as such) on the smart card.
"11.79 Secondly, looking at [Caron's] two different methods:
(a) If you look at the direct translation approach, there is no high level language (because C is not a typed object oriented language), no converter for post processing the compiled code into a minimized form and no interpreter.
(b) If you look at the virtual machine approach, there is still no high level language and there is no converter for post processing the compiled code: the translator described would be regarded as part of the compiler rather than as a separate converter.
11.80 Assembly for the QUAD machine is not the same as post processing by a converter because in a converter you start with compiled code and end up with compiled code, whereas in Caron/Grimonprez you start with compiled code and end up with assembled machine code."
Pasman
Comparing Pasman with the claims
Gemalto
took a number of points relating to Pasman on the issue of inventive step, in particular emphasising the age of the paper and the obsolescence of the 8080 chip by the priority date. That may be so but it is not relevant to novelty. In his first report Prof. Paradinas gave three distinctions between Pasman and claim 1. One was that Pascal was not the right kind of high level language but, as with Caron, that point was abandoned by
Gemalto
. Another was a similar argument to the one I have rejected over Caron that the assembler in Pasman is part of the compilation stage and that the intermediate P symbolic code has no practical use. Both points are irrelevant or are based on a construction of claim 1 I do not accept. Finally Prof. Paradinas said the 8080 was not a microcontroller because all its memory was off-chip. While that accords with the construction I have arrived at, it is not the construction of microcontroller advanced by
Gemalto
in closing.
Gemalto
's construction of claim 1 I do not have to make a finding about novelty on that construction. I will say only that I am not convinced claim 1 or claim 15 would be novel on
Gemalto
's construction of these claims; the Pasman disclosure applies to applications for the 8080 in general, whether they are for dedicated systems or general purpose computing.
865: Obviousness at the priority date
i) Common general knowledge alone.
ii) The Caron article.
iii) Pasman.
iv) French Patent Application 2 667 171 entitled "Support portable ŕ micro-circuit facilement programmable et procédé de programmation de ce micro-circuit" published on 27th March 1992. Although published in French the parties used an agreed translation.
Gemalto
reminded me of the various warnings about obviousness arguments based on common general knowledge alone. I will refer only to one. Recently in HTC v Apple [2013] EWCA Civ 451 Kitchin LJ referred at paragraph 67 to what he had said in Abbott v Evysio [2008] RPC 23 at [180]:
"It is also particularly important to be wary of hindsight when considering an obviousness attack based upon the common general knowledge. The reason is straightforward. In attacking a patent, attention is focussed upon the particular development which is said to constitute the inventive step. With this development in mind it may be possible to mount an attack which is unencumbered by any detail which might point to non obviousness: Coflexip v Stolt Connex Seaway (CA) [2000] IP&T 1332 at [45]. It is all too easy after the event to identify aspects of the common general knowledge which can be combined together in such a way as to lead to the claimed invention. But once again this has the potential to lead the court astray. The question is whether it would have been obvious to the skilled but uninventive person to take those features, extract them from the context in which they appear and combine them together to produce the invention."
Person skilled in the art
Gemalto
contended that the person skilled in the art from the perspective of obviousness at the priority date was an individual or team developing code for a microcontroller, such as was used in a smart card. Such a team would consist of good practitioners of hardware specific assembly languages or of C. It submitted that it was in those languages, which produced compact programs, that the programming of microcontrollers typically happened. Typical examples of the person skilled in the art are those who were employed at a smart card manufacturer.
"20. I consider that this would have included a team of people with expertise at the Priority Date in (i) microcontroller hardware; and (ii) programming and software engineering. I can envisage at least two straightforward circumstances in which such a team would be assembled, as follows:
21. In the first, a software developer (or team of such developers) would be very familiar with high-level languages generally and compiler tool chain techniques, and in particular the relatively new (as at the Priority Date) but highly publicised language of Java. They would be aware of the general interest surrounding Java and of the commercial and technical desirability of developing JVMs for many different hardware platforms, including microcontrollers. In order to explore the possibility of developing interpreters and compiler tool chains for microcontrollers, it would make sense for the software developer to approach others with knowledge of microcontroller hardware.
22. In the second scenario, the person or team skilled in microcontroller hardware (forming a development team at an enterprise working with microcontroller hardware, such as a consumer electronics or smart card company, for example) would be aware of the desirability of allowing programmers to write applications for microcontrollers using high-level languages, as opposed to hardware-specific assembly languages known only to a small minority of programmers. It is likely that that person or team would also have heard of Java specifically and be aware of its various benefits. Even if they had not, they would still have ample motivation to explore the possibilities of high-level language programming for microcontrollers. It would be natural to approach others with skill in programming and in developing interpreters and compilation tool chains for such languages. In this latter case, I believe it is also perfectly possible that such a development team might already include one or more persons with knowledge of developing interpreters and compiler tool chains (see below)."
Gemalto
's view of the skilled person.
Gemalto
's definition of the skilled team includes a reference to the language C and seeks to take that into account but I reject
Gemalto
's definition of the person skilled in the art. It gives undue emphasis to hardware, C, and assembly language. In my judgment real research teams in 1996 were seeking to program microcontrollers using high level languages. Such a team would include members with knowledge of microcontroller hardware but it would also include members who were software developers with a computer science background. They would be very familiar with high-level languages generally and also would be familiar with compiler tool chain techniques. The latter is true because the task of the team was not simply to write application code in a high level language, this team was dealing with the programming process itself.
Common general knowledge
Obviousness of claim 3 over common general knowledge alone
i) It was known to be desirable to program microcontrollers using high level languages – for that purpose it was necessary to include in the skilled team someone with expertise in high level languages and developing interpreters and tool chain components for high level languages.
ii) Java was a good candidate high level language, not least because of its security features.
iii) The skilled team knew that if they used Java they would have to write a JVM for a microcontroller. They knew that a standard JVM was too large to fit on a microcontroller, but they also knew that it consisted of various functional components in addition to the execution engine itself, including a linker (which also optimised), a loader and a verifier. They would assess the size of the execution engine itself as being no more than 10KB.
iv) The common general knowledge approach to programming embedded systems such as microcontrollers was to link code before loading.
v) The skilled team knew that one way to reduce the size of a virtual machine was to subset its instruction set.
vi) In the light of that common general knowledge, it was obvious to use Java bytecode on a microcontroller and to achieve that by reducing the size of the virtual machine by subsetting its instruction set and doing the linking, optimising and static verification before loading, in accordance with the standard approach to programming embedded systems. This would have the result that the skilled team created a converter/post-processor which satisfied claim 1.
Dr Greaves' reports
Gemalto
submitted that teams actually tasked with this problem did not exist in fact and submitted that this meant Dr Greaves' instructions necessarily entailed pointers to the idea and objective of using high level languages on microcontrollers. His second report indicated that these early discussions included compilers and interpreters.
Gemalto
submitted this also indicated that impermissible hindsight was involved. Another submission of
Gemalto
's was that a reference to memory constraints before Dr Greaves had read the patent meant he had approached the patent with a mindset exclusively about microcontrollers with memory constraints. Finally, arising from a muddle which Dr Greaves got into in cross-examination,
Gemalto
submitted that it was not clear whether the section of Dr Greaves' report which related to obviousness over common general knowledge alone had been prepared, as
Gemalto
contended it should have been, "free from the influence of the 865 patent".
"2. When I was first contacted by PG, I was initially asked to provide an overview of my qualifications and expertise. Following this, I discussed with PG background information on the technology relating to high-level programming languages generally, and the operation and design of compilers and interpreters specifically. I also discussed the disciplines which would have been involved in programming hardware with memory constraints (such as microcontrollers for embedded systems) and what would have been generally known to people skilled in this field in October 1996. This discussion took place before I had seen the '865 Patent or any of the prior art upon which I now understand HTC intends to rely, and without knowledge of the subject matter of the dispute1. My views, as explained to PG at that time, are set out in Sections C and D of this First Report. Further details of my instructions are set out below."
Gemalto
's main points about this part of Dr Greaves' evidence falls away. It was not hindsight to pose the question in that way. Also given the way in which I have identified the skilled team, the submission about compilers falls away as well. As for the point about how Dr Greaves read the patent. It does not arise in this part of the case but it is convenient to address it here. I reject it. I do not think Dr Greaves gave undue weight to memory constraints in reading the patent. I also note the argument is in danger of getting circular. Dr Greaves is being criticised both for considering common general knowledge before reading the patent and at the same time for not preparing his views on common general knowledge before seeing the patent.
Assessment
Gemalto
's construction of the term microcontroller in any depth. On
Gemalto
's construction the severe memory constraint does not exist. That would have a major impact on the balance of the obviousness argument.
Obviousness of claim 3 over the Caron article
Obviousness of claim 3 over Pasman
Obviousness of claim 3 over the '171 application
"The main difficulty encountered with microcircuit cards stems from the fact that the microprocessor with which they are outfitted is associated with a working memory (of RAM type, static or dynamic) of low capacity, oftentimes only 128 bytes, and with program memories (ROM: most of the time EPROM or even EEPROM type), also being of low capacity, generally limited to several dozen kilobytes, or even only a few kilobytes."
Obviousness - other claims
865: Patentable subject matter
(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
"For the reasons given in Symbian, I believe we must continue to consider whether the invention made a technical contribution to the known art, with the rider that novel or inventive purely excluded subject matter does not count as a technical contribution. Further, in addressing that issue I believe it remains appropriate (though not strictly necessary) to follow the four stage structured approach adopted in Aerotel."
i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether it falls solely within the excluded subject matter;
iv) check whether the actual or alleged contribution is actually technical in nature.
865: Infringement
Gemalto
and I will not address it.
Claim 1
Gemalto
's infringement case stands or falls with the question of construction I have already decided. In my judgment the chip or chipset in the HTC devices is not a microcontroller. The CPU's memory is not on the chip. The registers and cache are on-chip but as I have found, that does not turn a chip into a microcontroller. I find that the HTC devices do not infringe any of the claims of the patent since there is no microcontroller inside them.
Gemalto
were able to point to one place in which the word microcontroller appeared in a relevant context. In the "ARM Systems Developers Guide" by Sloss, Symes & Wright (2004) Chapter 1 discusses ARM embedded systems and the RISC philosophy which has made ARM processors so successful. Figure 1.2 is a diagram of a device. The device depicted has memory (ROM, SRAM FLASHROM and DRAM) which must be off-chip. The figure legend reads "An example of an ARM-based embedded device, a microcontroller". I do not think this helps
Gemalto
. At best it is an example of the use of
Gemalto
's construction of the term microcontroller, which I have accepted is used in the art but is not how I have construed the patent.
Gemalto
's construction of microcontroller then I think a difficult question would arise as to whether the HTC devices were truly dedicated systems. I accept, as Mr Mellor argued, that when GSM mobile phones first started, it would be fair to call the computers in them dedicated systems (c.f. the Analog Dialogue document) but the HTC devices, like many modern "smart" phones are quite different. From the point of view of a user, an Android phone is just as programmable as a laptop computer. It is really a hand held computer which has the ability to be a telephone as one of its capacities. Happily I do not have to resolve that question.
Gemalto
contends then I do not see why the application code is not "loaded in memory" as required by claim 1 by being put into the FLASH memory although
Gemalto
did not argue that it was.
Gemalto
's argument focussed on the cache. It said that the relevant element of claim 1 was satisfied when the phone was turned on and the application code, along with the code for the DVM, was loaded into cache. This led to a lengthy argument about how cache works in the HTC devices, some of which was confidential. I will deal with that argument in case this action goes further but I will say at the start that on my construction of "loaded in memory", the operation
Gemalto
relies on whereby blocks of code are put into cache for execution does not satisfy this part of the claim.
Gemalto
's case that the cache mattered and that putting data in the cache was an act of "loading in memory" within any of the claims, both of which I have rejected, then:
i) I would have acceptedGemalto
's case that when the processor is running from data in the cache, it would have satisfied the claim. The fact that cache misses take place very frequently and are inevitable could not mean the claim was not being infringed when the processor was using the cache.
ii) I would have acceptedGemalto
's argument that in fact even whether there is a cache miss, the device would have satisfied the claim. The data always has to pass through the cache system.
Gemalto
's argument that putting blocks of code into cache is relevant then a further point arises. The DVM is too big to be loaded into the cache. What happens in practice is that only the parts of the DVM and application actually being executed are put into cache and the rest resides off chip in the RAM until needed.
Gemalto
submitted this still satisfied the claim but I am not so sure since claim 1 required "the interpreter" to be loaded in memory. The interpreter in the HTC devices is the DVM as a whole, not parts of it. However I do not have to resolve this point.
Gemalto
also pointed out that the Android SDK converts the apps into a form in which they are smaller than they would otherwise be and results in a very significant saving of resources. This enables the HTC devices to run many more applications that they would be able to if they did not use the DVM and apps converted by the Android SDK.
Claim 3
Claim 8
Gemalto
pointed out the patent expressly states in paragraph [0088]:
"In some embodiments, the card class file converter modifies the original byte codes 60 into a different set of byte codes designed for a different virtual machine architecture, as shown in Fig. 11".
Gemalto
that the argument is really seeking to read words into the language of the claim which are not present. There is no reason to read limitations into the feature which are absent. On that basis the conversion carried out by the Android SDK falls within claim 8(d).
Claim 15
Claim 18
Section 60(2) of the 1977 Act
"(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.
(3) Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above".
Assessment
Gemalto
's case to succeed
Gemalto
had to establish that the steps of compilation and conversion of the relevant code took place in the UK but had not done so. The significance of this argument varies between the product claims and the process claims and I will address it in context.
Gemalto
's infringement case is that a product within those claims does not exist when the power is switched off because the cache is empty. The relevant product is created when a HTC device is switched on and an application is run on a DVM. At that point a product within the claim is created because the relevant code is "loaded in memory" by being placed into cache. I have rejected this argument (above) but if I accepted it (and the rest of
Gemalto
's case on infringement of claim 1) then in my judgment an HTC device, switched off, as supplied by HTC to a customer in the UK is a means relating to an essential element of the invention for putting the invention into effect in the UK. It comprises a microcontroller and a memory (on
Gemalto
's case) as well as an interpreter ready in the FLASH to be used when required. The device is set up to allow users to download apps for themselves. Once a user has downloaded an app, the code stored in the FLASH is code in a minimized form which has been prepared in the manner required by claim 1. HTC also knows this and intends that their customers should download these apps in the UK and use them in the UK. That use is what puts the invention into effect in the UK.
Gemalto
's infringement case, it does not matter where the application code was compiled nor where it was converted nor where the app was downloaded. Since these things do not matter, HTC's state of knowledge about where those things might have happened does not matter either. Thus if, which I reject,
Gemalto
's infringement case on claim 1 was sound, HTC would infringe under s60(2). The same goes for claim 8.
Gemalto
's infringement case that is satisfied by putting a block of code into cache during the execution of an app. It happens inside an HTC device when an app is executed.
Gemalto
contends that the HTC device as sold is a means relating to an essential element of the invention for putting the invention into effect in the UK because it will permit users to take that last step of the method in the UK. All the other steps will have been performed by someone else, such as the developer of the app. The best way of putting
Gemalto
's case here is to consider an app developer in the UK, performing all the steps of compilation and conversion in the UK. The HTC device allows the user to complete the claimed process and as a result the whole process will now be or have been performed in the UK. In effect
Gemalto
says that HTC is selling the physical items referred to in the claim (a microcontroller and memory) which are crucial elements necessary for the process to be completed and are configured to facilitate that process.
Gemalto
may be right that on its best case, the HTC devices are a means relating to an essential element of the invention in claim 15 for putting it into effect in the UK.
Gemalto
has pleaded or established that the compilation and conversion steps for any apps have taken place in the UK or that HTC know or intend anything relevant in that respect. It is plain that some apps will have been created in the UK and compiled, converted, downloaded and used within the jurisdiction and that this is all obvious to a reasonable person in the circumstances of HTC. It is true that the jurisdictional element in relation to the s60(2) issue was not developed in the pleadings and should have been but this applies to both sides.
Gemalto
ought to have pleaded the point properly but HTC ought to have covered it properly in their product and process description since otherwise they ought to have given disclosure on the issue of knowledge. If I had to decide the point, I would find that there are some Android apps downloaded in the UK for which all the steps of inputting, compiling and converting in claim 15 have also been carried out in the UK and that HTC know this or it is obvious to a reasonable person in HTC's position such that s60(2) would be satisfied.
The 9062 patent
i) 'European digital cellular telecommunications system (Phase 2); Specification of Subscriber Identity Module – Mobile Equipment (SIM – ME) Interface for SIM Application Toolkit (GSM 11.PQ)'; version 0.0.2, dated April 1995; and
ii) European Patent Application number EP 0 490 445 A2 published on 17th June 1992.
Gemalto
does not accept that this formed part of the state of the art at the priority date. The second citation is known as Diehl. It is agreed that Diehl formed part of the state of the art.
Gemalto
denies that the patent lacks novelty or is obvious over GSM 11.PQ or Diehl. By the closing Diehl was advanced for obviousness only.
Gemalto
contends that the following HTC mobile communication devices infringe the patent: the HTC Sensation, the HTC Sensation XL with Beats Audio, the HTC Sensation XE with Beats Audio, the HTC Explorer, the HTC Rhyme, the HTC EVO 3D, the HTC Cha Cha, the HTC Salsa, the HTC Incredible S, the HTC Desire S, the HTC Desire Z, the HTC Desire HD, the HTC Wildfire S and the HTC Gratia. This list of devices is not the same as the list in relation to the 865 patent. Collectively these have been referred to as "the HTC Smartphones". Nothing turns on any differences between these devices. It is common ground that these devices are capable of operating in accordance with a standard issued by the European Telecommunications Standards Institute (ETSI) number TS 102 223. This standard is known as the 233 standard. The issue of infringement is to some extent a squeeze argument in that HTC says that if operating in accordance with the 223 standard infringes then the patent must lack novelty over GSM 11.PQ because they are the same in all material respects.
Gemalto
does not accept that GSM 11.PQ is the same as the 233 standard. No point on s60(2) arises on the 9062 case. The issue is whether one of the HTC smartphones, with its SIM card installed, falls within the 9062 patent. In the 233 standard a SIM card is called a UICC. Nothing turns on the difference.
9062: Background
9062: Witnesses
Gemalto
submitted that Dr Woodsend was a careful witness and was "on the whole" fair. I thought Dr Woodsend was a careful and authoritative witness and was entirely fair.
Gemalto
relied on Professor Paradinas. My views on Professor Paradinas as a witness in the 865 case have been expressed already above. After giving evidence on 865, the Professor was released from his oath. He returned to the witness box a few days later to give evidence about 9062. On this second occasion he was a different person. I regret to say that I did not find the Professor's evidence on 9062 to be helpful. The views expressed by Prof. Paradinas in the course of cross-examination appeared to be ideas which were simply occurring to him as he sat in the witness box and were not the product of careful thought about the issues in the case. He appeared to have no memory of or even, I regret to say, understanding of the evidence in his reports. He raised new ideas which were not foreshadowed before. I suspect that there is some force in Mr Burkill's submission that Prof. Paradinas was very tired after dealing with the 865 case both as a witness and sitting in court to assist in the cross-examination of Dr Greaves. That may be but I do not believe it is a complete explanation. Moreover even if it is an explanation, it does not allow me to place any real weight on the Professor's evidence. During his evidence I thought Prof. Paradinas might find it easier if he allowed the interpreter to interpret the questions into his mother tongue and answered in the same language but he did not take up my suggestion. I suspect, although Prof Paradinas did not say this himself, that the nature of his expertise meant that he was much more comfortable technically in relation to the issues arising on 865 than on 9062. I will be wary of placing any reliance on Prof Paradinas's opinions on 9062.
9062: Person skilled in the art
9062: Common general knowledge
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Gemalto
accepted that 7816-4 was well known to the skilled person at the priority date but did not accept that it was regarded as a good basis for further action. The reference to "good basis for further action" is a reference to the well known formulation of what represents common general knowledge in General Tire v Firestone [1972] RPC 457 in the passage starting at p482.
Gemalto
argued that because the standard was still a draft and given its history, the skilled person could not know whether it would ultimately be adopted unchanged from the DIS form. Dr Woodsend said that everyone in the industry would know by May 1995 that the vote to accept 7816-4 had been passed. Prof Paradinas said that all the skilled persons knew there was a battle around the standard and knew that if they decided to implement it they were taking some risk.
9062: The patent
"The present invention….relates to a general-purpose reader for various types of smart IC cards, using a single data exchange protocol which is compatible with the one used by unintelligent IC cards for exchanging data with their specialized readers.
It relates to a smart IC card reader which is noteworthy in that it remains in control of the exchanges of information with a connected smart IC card, which take place on its own initiative, while simply having the function of execution in the performance of the transaction, which takes place on the initiative of the IC card."
"Briefly, the reader sends the card a reset command which initialises the card. The card then sends an answer to reset to the reader and begins the transaction management program programmed on the card.
There follows two steps: (A) a processing cycle by the smart card (in which the card is running its transaction management program), and (B) a data exchange cycle between the card and the reader. The processing cycle does not entail any commands being sent between the reader and card. The data exchange part of the process can be illustrated as follows:
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"which it will be possible to communicate to the reader as soon as the latter has asked for it by means of a message provision request in the form of a "get response" command."
"The processing cycles, instigated by the smart IC card, and exchange cycles, instigated by the reader, thus succeed each other according to the transaction management program stored in the smart IC card."
"According to standard ISO 7816-3, the reader is in control of the exchanges in electrical terms, but the transaction runs at the instigation of the IC card which is a smart card."
9062: Claim construction
Gemalto
applied to amend and since there was no opposition to the amendment, on 21st January 2013 the patent was amended. In their form as amended, claims 1 and 2 were said to have independent validity but in the end there was no need to consider claim 2 separately. The only claim which falls to be considered is claim 1. It provides:
Reader (1) for a smart IC card (2), characterised in that it includes:
(a) means for managing, on its initiative, the exchanges of information with a connected smart IC card (2),
(b) means for receiving and processing instructions and data received from the connected smart IC card (2), which manages a transaction on its initiative, and
(c) means for developing and transmitting report messages to the connected smart IC card (2) on execution of its instructions by the said reader (1)
(d) and further characterized in that the said means for managing the exchanges of information with the connected smart IC card (2) alternately and repetitively generate, for the purpose of being sent to the connected smart IC card (2),
(i) on the one hand a request for provision of a packet of instructions and data developed in the said smart IC card (2), this being referred to as the "card message" and,
(ii) on the other hand, a report declaration associated with a report message regarding the execution of instructions previously received in card messages from the said connected smart IC card (2), the said report declaration and the report message being referred to as the "reader report".
Gemalto
submitted that a transaction had to involve two cycles of instructions from the card to the reader. I doubt "transaction" is a term of art but for what it is worth Dr Woodsend said a transaction was a single unit of work that involves sending commands/responses between the reader and the card. Prof Paradinas said that something could not be a transaction if it involves only one command from the card. I do not accept that. The expression "transaction" is not being used in claim 1 in any sort of limiting sense. It is being used simply to refer to whatever task is to be performed. I reject the idea that it is limited to more than one cycle.
Gemalto
submitted that the claim was limited to a reader which could only generate requests and reports alternately and repetitively. HTC did not agree.
Gemalto
's interpretation. The word "only" is absent. Nor is there any passage in the specification which sets out to draw the distinction
Gemalto
seeks to rely on and explain that one is within the ambit of the invention disclosed and the other not.
Gemalto
's construction of claim 1 on this point.
Gemalto
's construction.
Gemalto
contended that the translation of this paragraph was wrong and asked the interpreter assisting Prof Paradinas to provide an alternative. I am not convinced the distinction between the two rival interpretations actually assisted
Gemalto
's argument but it is not necessary to resolve this dispute since even if
Gemalto
are right about the last paragraph it would not advance their interpretation, it would simply neutralise the point being put by HTC. Moreover I am not convinced HTC's interpretation of this paragraph helps anyway because in order for it to have a bearing on construction one needs to construct an elaborate analysis of how what is described in a rather delphic single sentence must work and then draw inferences from that about what the claim must mean. This approach may not be impermissible meticulous verbal analysis but it seems to me it is a similar impermissible kind of analysis. For the argument to work at all the skilled person would have to think it was worth subjecting the relevant sentence to the sort of scrutiny and extrapolation required for HTC's argument in the first place and also to think that concrete conclusions could be drawn from the resulting inferences, none of which are expressed in the document. I reject that. A skilled person who got as far as HTC in the analysis of the last paragraph had no way of knowing if the inventor had thought it through to the same extent and could simply conclude that the inventor had not.
9062: Novelty
Gemalto
does not accept that GSM 11.PQ forms part of the state of the art and, even if it does,
Gemalto
argues that claim 1 is novel over the document.
GSM 11.PQ - made available to the public?
"anything confidential we would have kept within the company and only discussed with other companies under a non-disclosure agreement and so on. We would never mention that within a group like SMG9. It was very much we had to be conscious, and I think all companies were like this, that we were in a public, effectively a public meeting with all our competitors, loads of companies from throughout the industry and no one was under any obligation not to disclose."
"The proceedings of a COMMITTEE shall be regarded as non-confidential except as expressly provided below and all information submitted to a COMMITTEE shall be treated as if non-confidential and shall be available for public inspection unless: - the information is in written or other tangible form; and - the information is identified in writing, when submitted, as confidential; and - the information is first submitted to, and accepted by, the chairman of the COMMITTEE as confidential."
[Mr Clayton's emphasis]
Gemalto
's case to Mr Clayton.
Gemalto
's case is that, understood as a whole, the ETSI rules and procedures treated documents like GSM 11.PQ as confidential. They were available only to members of ETSI. However Mr Clayton's position was that irrespective of whether it is a correct statement vis a vis ETSI, it did not apply to SMG.
Gemalto
. As Mr Burkill pointed out, the line being taken by Mr Clayton involved him contradicting even his own C.V. since that characterised him as an ETSI person at the relevant time when in fact, based on his testimony, he was not.
Gemalto
took a fair point based on the front page of GSM 11.PQ. It has an ETSI front sheet which purports to show ETSI asserting their rights over the document. However Mr Clayton explained that this was an error (by Dr Woodsend) and Dr Woodsend agreed he had used the wrong style sheet for the document.
Gemalto
took another fair point that ETSI was a "members only" club and so documents were only distributed to members. Whether or not that limited circulation might have a bearing on the issues does not matter because Mr Clayton explained that in SMG he would circulate SMG documents very widely and not just to members but to non-members as well. Mr Burkill pointed out that this evidence was general and not specific to the GSM 11.PQ document. That is true but Mr Clayton was making the point to emphasise his position about SMG's independence from ETSI. It supports HTC's case that the participants in SMG meetings were not obliged to keep such documents confidential.
Gemalto
argument that GSM 11.PQ was not made available to the public by being distributed to SMG9 at the Nynashamn meeting must fail. It is plain, taking the evidence of Dr Woodsend and Mr Clayton together, that the document formed part of the state of the art.
GSM 11.PQ – disclosure
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Novelty of claim 1 of 9062 - assessment
Gemalto
submitted that what is disclosed in GSM 11.PQ did not fall within claim 1 because although the equipment described in the document was capable of generating different sequences of requests and reports, that did not always happen. Thus on
Gemalto
's construction of claim 1, GSM 11.PQ did not anticipate. However I have rejected
Gemalto
's construction of the claim. In my judgment claim 1 covers what is disclosed in GSM 11.PQ. The reader (ME) described in GSM 11.PQ is a reader which has a means for managing the exchanges of information with the SIM which alternately and repetitively generates the request and response messages called for. Case 4 proves that. The fact that in other circumstances it does other things is irrelevant.
9062: Obviousness
Gemalto
submit. That is not relevant to the argument over Diehl anyway.
GSM 11.PQ
Gemalto
contends is that although the equipment described in GSM 11.PQ can operate by generating requests and reports alternatively and repetitively, in other circumstances it acts differently, for example by acting in the sequence "request, report, report".
Gemalto
's point on construction of claim 1 had not crystallised until trial. Nevertheless the parties' rival positions and the views of the experts were clear enough by the closing.
Gemalto
's position was that the GSM 11.PQ proposal was confusing and ill thought through in a number of respects. In summary the difficulties said to exist in GSM 11.PQ are:
i) At some points the reader can decline to respond to commands which the SIM has issued;
ii) The reader can stack more than one command. This has a number of difficulties. The card has no way of determining how many commands can be stacked. No matter how big the stack, it is always possible that it will be full and if so then ASK RESULT will not be able to be handled using the GET RESPONSE mechanism; and
iii) The "result pending" message from the ME is useless. If there is no stacking it is pointless. Even if there is stacking, there is no provision for the card to decide to abort or continue after "result pending".
Gemalto
's construction the result is still one which is outside claim 1. Dr Woodsend did not agree with the proposition put to him. He accepted that stacking/queuing would lead to problems but his view was that the skilled person would appreciate that and would implement the system without queuing / stacking. He pointed out that GSM 11.PQ itself states that stacking is optional. The thrust of his evidence can be seen from the following answer (at day 8 p969-970):
"A. A lot of these problems are related to queuing, or handling more than one command. It is clearly written that that is an option and I think a skilled person that has some knowledge of readers and how constrained they were in terms of memory and processing power and so on, they would think seriously about which option they want to go down, the sort of minimal option of just doing one command at a time or possibly doing several commands at a time. I think it would cause them to think about the possibilities and consequences."
Gemalto
submits, was obvious.
Diehl
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9062: Infringement
Gemalto
pointed out, there are differences between the 223 standard and GSM 11.PQ. Under the 223 standard commands cannot be stacked, there is no equivalent in the 223 standard of the ASK RESULT command in GSM 11.PQ and the RESULT PENDING response in GSM 11.PQ has been dropped. So at least in theory it could be the case that a claim which covered the 223 standard may or may not also cover GSM 11.PQ.
Gemalto
submitted that on their construction of claim 1 the claim was novel over GSM 11.PQ but the HTC smartphones were covered. Although it does not arise on my findings in this case I will state that I was not convinced that the HTC smartphones would infringe on
Gemalto
's construction. The HTC smartphones under the 223 standard are capable of operating in a way which has only a single cycle of a request and a report. In that case the reader would have sent alternate requests and reports but they would not be repetitive. Although Mr Burkill said that was within his construction of claim 1 I do not see how it can be. If the claim means that the reader must only operate by sending requests and reports alternately and repetitively then it seems to me the HTC smartphones do not satisfy that requirement.
Conclusions overall
The 865 patent
i) The 865 patent is not infringed by any HTC devices.
ii) Claims 1, 8, 15 and 18 are not entitled to priority.
iii) All claims which lose priority and therefore take the filing date are obvious over the intervening Cyberflex materials.
iv) Claims 1 and 15 lack novelty over the Caron paper available at the priority date.
v) Claim 3 is entitled to priority and is not obvious over the cited prior art available at the priority date.
vi) None of the claims are unpatentable computer programs as such.
The 9062 patent
vii) If the 9062 patent were valid, the HTC smartphones would infringe.
viii) The 9062 patent is invalid in that it lacks novelty over GSM 11.PQ.
ix) OnGemalto's construction it would be obvious over GSM 11.PQ.