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England and Wales High Court (Patents Court) Decisions |
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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: http://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 |
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- 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
865 – The issues
865: Background
865: Witnesses
865: Person skilled in the art
865: Common general knowledge of the skilled addressee
Smart cards and integrated circuit cards
Instruction sets
The compiler tool chain
Java
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
"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."
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. |
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.
"Microcontroller" in the patent
"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,"
(ii) "having a set of resource constraints"
(iii) "loaded in memory"
(iv) converter
(v) Claim 8
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
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."
"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".
"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
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".
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."
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".
(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."
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?
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
"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
"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
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 à 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.
"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
"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)."
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
"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."
Assessment
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
Claim 1
i) I would have accepted Gemalto'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 accepted Gemalto'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.
Claim 3
Claim 8
"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".
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
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.
9062: Background
9062: Witnesses
9062: Person skilled in the art
9062: Common general knowledge
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:
"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
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".
9062: Novelty
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]
GSM 11.PQ – disclosure
Novelty of claim 1 of 9062 - assessment
9062: Obviousness
GSM 11.PQ
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".
"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."
Diehl
9062: Infringement
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) On Gemalto's construction it would be obvious over GSM 11.PQ.