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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> IPCOM GmbH & Co Kg v Vodafone Group Plc & ors [2021] EWCA Civ 205 (19 February 2021) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2021/205.html Cite as: [2021] Bus LR 813, [2021] RPC 10, [2021] WLR(D) 105, [2021] EWCA Civ 205 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE,
BUSINESS AND PROPERTY COURTS, INTELLECTUAL PROPERTY LIST (ChD), PATENTS COURT
Mr Recorder Douglas Campbell QC
Strand, London, WC2A 2LL |
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B e f o r e :
LADY JUSTICE ASPLIN
and
LORD JUSTICE ARNOLD
____________________
IPCOM GMBH & CO KG |
Claimant |
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- and - |
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(1) VODAFONE GROUP PLC (2) VODAFONE LIMITED (3) VODAFONE UK LIMITED |
Defendants |
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- and - |
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SECRETARY OF STATE FOR DEFENCE |
Intervener |
____________________
Thomas Mitcheson QC and Stuart Baran (instructed by Hogan Lovells International LLP) for the Defendants
Michael Silverleaf QC and Azeem Suterwalla (instructed by Government Legal Department) for the Intervener
Hearing dates : 26-28 January 2021
____________________
Crown Copyright ©
Covid-19 Protocol: This judgment was handed down remotely by circulation to the parties' representatives by email, release to BAILII and publication on the Courts and Tribunals Judiciary website. The date and time for hand-down is deemed to be at 10:30am on 19 February 2021
Lord Justice Arnold:
Contents
Topic Paragraphs
Introduction 1-6
The skilled person 7
Common general knowledge 8-22
The Patent 23-42
The conditionally amended claims 43-46
The inventive concept 47-52
Construction of the claims 53-73
Extension of protection 74-80
Essentiality and infringement 81-119
Crown use 120-173
De minimis 174-185
Obviousness 186-205
Form of declaration 206-209
Disposition 210
Introduction
The skilled person
Common general knowledge
Contention on a shared channel
The "lottery"
Access classes
Transmission capacity
Class barring in GSM/GPRS
i) access class 15 for PLMN staff ("PLMN" stands for Public Land Mobile Network and is just the network operator);
ii) access class 14 for the emergency services;
iii) access class 13 for public utilities (e.g. water/gas suppliers);
iv) access class 12 for the security services; and
v) access class 11 for PLMN use (for example, for test mobiles while setting up a cell).
IS-95
The Patent
"[0007] … the inventive subscriber station, and the inventive telecommunications system with the features of the independent claims have … the advantage that, with the information signals, access authorization data are transmitted to at least one subscriber station, that, upon receipt of the access authorization data in an evaluation unit of the at least one subscriber station, a check is carried out as to whether the access authorization data comprise an access threshold value, wherein the access threshold value is compared to a random number or a pseudo-random number, and that the right of access to a telecommunications channel is granted to the at least one subscriber station on the basis of the comparison result, preferably on the condition that the random number or a pseudo-random number is greater than or equal to the access threshold value. It is advantageous if in this manner a random distribution of the access authorization to this telecommunications channel is produced for one or more subscriber stations. This access control demands a minimum of transmission capacity for transmitting the information signals, since it is effected merely by transmitting the access threshold value.
…
[0009] It is particularly advantageous that checking is carried out in the evaluation unit of the at least one subscriber station as to whether the access authorization data comprise access authorization information with access class information for at least one prescribed user class, with, in this case and on the assumption that the at least one subscriber station is associated with the at least one prescribed user class, access to a telecommunications channel being granted to the at least one subscriber station on the basis of the access class information for this user class. This permits subscriber stations of a prescribed user class to be authorized to use the telecommunication even if the random distribution by means of access threshold value would not authorize them to access this telecommunications channel. Thus, by way of example, subscriber stations for emergency services, such as the police or the fire brigade, can be associated with such a prescribed user class and can then access the telecommunications channel with priority irrespective of the random distribution by corresponding access threshold value information.
…
[0013] Another advantage is that access to this telecommunications channel is enabled for the at least one subscriber station on the basis of the volume of message traffic on at least one telecommunications channel. This make it possible to achieve an optimum distribution of the resources of the telecommunications network over the subscriber stations with the best possible use of the transmission capacity."
"It is possible to prevent the RACH 30 from being overloaded by virtue of the network operator restricting, in a targeted manner, access to the RACH by the individual mobile stations 5, 10, 15, 20. In this case, access to the RACH can be permitted, for example, only for particular user classes of mobile stations on a temporarily or permanently privileged basis. In line with the described exemplary embodiments in figure 1, a first user class 35 is provided which comprises the first mobile station 5 and the second mobile station 10. In addition, a second user class 40 is provided which comprises the third mobile station 15 and the fourth mobile station 20. Provision may also be made for a separate user class to be provided for each mobile station, however. It could also be possible to provide user classes containing a different number of mobile stations. It is also possible to provide more than two mobile stations in one user class. The network operator can then enable access to the RACH for the individual mobile stations on the basis of their association with one of the two user classes 35, 40. This means that the two mobile stations 5, 10 in the first user class 35 are assigned equal rights for sending on the RACH. Similarly, the mobile stations 15, 20 in the second user class 40 are also assigned equal rights for sending on the RACH."
i) If the associated access class bit for the user class to which the mobile belongs is 0, the mobile can access the RACH irrespective of the access threshold value. It does not have to do the lottery.
ii) Conversely, if the relevant associated access class bit is 1, the mobile has to participate in the lottery using whatever access threshold value has been transmitted.
"At program point 280, the evaluation unit 60 has recognized that a bit pattern having a bit length of 13 bits has been received, and checks whether the access authorization card 75 stores an affiliation of the associated mobile station to a user class. In addition a check is carried out at program point 280 to determine whether the user class belongs to a first group of user classes or to a second group of user classes. The first group of user classes is also referred to as normally privileged below. The second group of user classes is also referred to as privileged hereafter."
i) If the answer is yes (i.e. there is a "privileged" user class on the card), then the system goes to box 285 and asks whether access is permitted for that user class (as the specification puts it, "whether the user class ascertained for the mobile station is authorized for access to the RACH 30").
ii) If the answer is again yes, then the system proceeds to boxes 245 and 250, whereby the "privileged" user whose access is permitted is given access to the RACH.
iii) If the answer to diamond 280 is no, either because there is no user class stored on the card or because the user is "normally privileged", then the system goes to point E, just above box 210. It then has to perform the lottery in order to see if it is permitted access.
iv) Similarly if the answer to diamond 285 is no (i.e. the user is in a "privileged" class, but access is not permitted for that particular privileged class), the same path is followed.
"The information signals are transmitted from the base station 100 to the mobile station 5, 10, 15, 20 at prescribed times, preferably at regular intervals. The network operator can, in line with the method described, permit or block access to the RACH for the individual mobile stations 5, 10, 15, 20 on the basis of the volume of message traffic in a telecommunications network and hence on the basis of an expected utilization level of the RACH 30. Since the volume of message traffic in the telecommunications network varies over time, the expected utilization level for the RACH 30 also changes over time, so that the various mobile stations 5, 10, 15, 20 are, in general, granted access to the RACH at different times using correspondingly altered bit pattern configuration."
The conditionally amended claims
"[1] Method for ascertaining an authorization for access toat least onea telecommunication channel (30) of a telecommunication network by a subscriber station (5, 10, 15, 20),
[2] wherein information signals sent by a base station (100) with access threshold value and access class information as access authorization data (55) are received by a transmission/reception unit (65) of the subscriber station (5, 10, 15, 20),
[3] wherein the access authorization data (55) are transmitted as a bit pattern (55),
[4] wherein the access authorization data comprise access class bits (Z0, Z1, Z2, Z3) as well as access threshold bits (S3, S2, S1, S0),
[5] wherein each access class bit represents one user class and wherein each of the user classes is assigned one access class bit,
characterized in that
[6] an evaluation unit (60) of the subscriber station (5, 10, 15, 20) has a check (280) performed in it to determine whether an access authorization card (75) of the subscriber station (5, 10, 15, 20) stores an association between the subscriber station (5, 10, 15, 20) and a privileged user class (35, 40) or stores an association of the subscriber station (5, 10, 15, 20) to a normally privileged user class (35, 40), in which it is checked whether an association of the subscriber station (5, 10, 15, 20) to a user class (35, 40) is stored on the access authorization card (75) and whether the user class is a normally privileged user class or a privileged user class,
[7] ifthis is the casean association of the subscriber station (5, 10, 15, 20) to a privileged user class (35, 40) is stored on the access authorization card (75), then the evaluation unit (60) takes the access classinformationbit (Z0, Z1, Z2, Z3) which corresponds to the privileged user class as a basis for checking whether the privileged user class (35, 40) ascertained for the subscriber station (5, 10, 15, 20) is authorized for access to theat least onetelecommunication channel (30) irrespective of an access threshold value evaluation,
[8] if this is not the case because an association of the subscriber station (5, 10, 15, 20) with a privileged user class (35, 40) is stored on the access authorization card (75) but the determined privileged user class (35, 40) is not authorized to access the telecommunication channel (30) independent of an access threshold evaluation or if the access authorization card (75) stores no association with a privileged user class (35, 40) because an association of the subscriber station (5, 10, 15, 20) to a normally privileged user class is stored on the access authorization card (75) or no association to a user class (35, 40) is stored on the access authorization card (75), then the evaluation unit (60) performs the access threshold value evaluation with the following steps:
[9](i) the evaluation unit (60) ascertains an access threshold value (S) from the access threshold bits (S3, S2, S1, S0) of the access authorization data (55),
(ii) draws a random or pseudo-random number (R),
(iii) compares the access threshold value (S) with the random or pseudo-random number (R), and
(iv) allocates an access right for theat least onetelecommunication channel (30) to the subscriber station (5, 10, 15, 20) on the basis of the comparison result,
[10] wherein the telecommunication channel is a random access channel."
"Method according to one of the preceding claims, characterized in that access to theat least onetelecommunication channel (30) is permitted on a temporarily or permanently privileged basis only for particular user classes (35, 40) of subscriber stations (5, 10, 15, 20)."
"Telecommunication system having
a telecommunication network that is in the form of a mobile radio network and that providesat least onea telecommunication channel (30),
at least one base station (100) that is set up to send information signals with access threshold value and access class information as access authorization data (55) as a bit pattern,
wherein the access authorization data comprise access class bits (Z0, Z1. Z2, Z3) as well as access threshold bits (S3, S2, S1, S0) wherein each access class bit represents one user class and wherein each of the user classes is assigned one access class bit, and each access class bit indicates whether the user class to which the access class bit corresponds is authorized to access the telecommunication channel independent of an access threshold evaluation,
and at least one subscriber station (5, 10, 15, 20) according to Claim 612,
wherein the telecommunication channel is a random access channel."
The inventive concept
"the key inventive concept … is the combination of two different access regimes into one system: a bypass mechanism available to a group of privileged users only; and a threshold evaluation for those users not granted access via this bypass mechanism. The proportion of privileged users that are granted bypass access can be changed dynamically by way of the access class information broadcast by the network, and the proportion of the remaining users who will successfully gain access using the threshold evaluation can be controlled by way of the access threshold value broadcast by the network. This system combines the flexibility of a threshold with a bypass mechanism so that high priority mobiles in privileged user classes can gain direct access to RACH and escape the constraint of the threshold, all with limited signalling overhead."
Construction of the claims
Each of the user classes is assigned one access class bit
A normally privileged user class or a privileged user class
Access right
Set up to send
Extension of protection
"Method for ascertaining an authorization for access to at least one telecommunication channel (30) of a telecommunication network by a subscriber station (5, 10, 15, 20),
wherein information signals sent by a base station (100) with access threshold value and access class information as access authorization data (55) are received by a transmission/reception unit (65) of the subscriber station (5, 10, 15, 20)
characterized in that
an evaluation unit (60) of the subscriber station (5, 10, 15, 20) has a check (280) performed in it to determine whether an access authorization card (75) of the subscriber station (5, 10, 15, 20) stores an association between the subscriber station (5, 10, 15, 20) and a privileged user class (35, 40),
if this is the case, then the evaluation unit (60) takes the access class information (Z0, Z1, Z2, Z3) as a basis for checking (285) whether the privileged user class (35, 40) ascertained for the subscriber station (5, 10, 15, 20) is authorized for access to the at least one telecommunication channel (30) irrespective of an access threshold value evaluation,
if this is not the case or if the access authorization card (75) stores no association with a privileged user class (35, 40), then the evaluation unit (60) performs the access threshold value evaluation with the following steps:
(i) ascertains an access threshold value (S) from the access authorization data (55),
(ii) draws a random or pseudo-random number (R),
(iii) compares the access threshold value (S) with the random or pseudo-random number (R),
and
(iv) allocates an access right for the at least one telecommunication channel (30) to the subscriber station (5, 10, 15, 20) on the basis of the comparison result."
"Vodafone did put forward a fictional example which they said showed that the scope of protection had been extended. This was a notional class 16 user 'that is not Privileged and not required to do the lottery'. But no reason was given as to why the user in the fictional example was not required to do the lottery and I do not consider the example to be a possible one."
Essentiality and infringement
"ac-BarringForSpecialAC
Access class barring for AC 11-15. The first/leftmost bit is for AC 11, the second bit is for AC 12, and so on.
ac-BarringFactor
If the random number drawn by the UE [User Equipment i.e. mobile] is lower than this value, access is allowed. Otherwise the access is barred. The values are interpreted in the range (0,1): p00 = 0, p05 = 0.05, p10 = 0.10,…, p95 = 0.95. Values other than p00 can only be set if all bits of the corresponding ac-BarringForSpecialAC are set to 0."
i) Does the SIB2 block include ac-BarringForSpecialAC and ac-BarringFactor barring parameters?
ii) If yes:
a) Does the SIM card on the mobile have a valid access class between 11 and 15; and if yes:
b) For at least one of those valid access classes on the SIM between 11 and 15, is the corresponding bit in the ac-BarringForSpecialAC set to 0?
c) If yes to both (a) and (b), consider access to the cell as not barred.
iii) If the SIB2 block includes barring parameters and either 2(a) or 2(b) is not satisfied, do the lottery and compare the result to the value indicated by ac-BarringFactor. Winners are considered not barred and losers are considered barred.
iv) If the SIB2 block does not include barring parameters, consider the cell as not barred.
Access class bit
Privileged or normally privileged
Access right
One check rather than two
"i) Notwithstanding that it is not within the literal [i.e. normal] meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?"
Set up to send
"1 Upon receipt of an MTPAS notice, a Vodafone engineer will first log into Vodafone's Network management software (LIMA).
2. In LIMA, the operator maps the location provided by the Police Gold Commander, and identifies the relevant base stations in the vicinity of the event.
3. The operator then selects the access classes to be barred (ensuring classes 11-15 are left unaffected), and networks (2G, 3G, 4G) to be altered.
4. LIMA creates scripts which automate the configuration changes that are required in order to implement the MTPAS response, as determined by the operator. The scripts created by LIMA are loaded onto the operations support system(s) ("OSS") for the relevant base stations (each supplier provides its own proprietary OSS – the MTPAS response may involve configuration changes in one or several OSS systems).
Without LIMA, an engineer would have to manually log in to each relevant OSS to make the changes necessary to cause a change of the settings on each base station (separately). The changes LIMA makes are to the settings/configuration of the relevant OSS
5. Based on the configuration changes caused by LIMA, each relevant OSS sends commands causing configuration changes in each relevant base station. Once the various configuration changes are achieved, the relevant base stations commence transmitting the parameters necessary to implement MTPAS (being the Barring Parameters prior to Vodafone's workaround).
6. Once MTPAS has been invoked, the operator activates call terminate to clear voice and data sessions off sites (that is, to halt all ongoing use of the network by users.
7. The operator must then access the relevant OSS and perform checks on a selection of the cells impacted to ensure MTPAS has been implemented."
I should explain that a "script" in this context is a set of instructions.
"Vodafone's evidence as to how it changed the settings of its LTE base stations was given by Mr White … Essentially Vodafone uses a software control management tool called LIMA to change the relevant settings. LIMA works by generating scripts and loading them on to the base station supplier's proprietary operations support system (OSS) software. The scripts themselves are activated using a graphical user interface on which the user identifies the area to which access control is to be applied (eg the area of the emergency) and the technologies (4G, 3G, 2G) which are relevant. LIMA then generates the relevant scripts based on the user inputs and the cha[n]ges are then automatically applied, via the relevant supplier's OSS software, to all LTE base stations providing coverage in the relevant area."
"103. … claim language of the means plus function type, and I regard 'virtual body modelling apparatus' as an example of that type, is generally taken by the granting authority (the EPO) to be read as means suitable for carrying out the function. That is a good reason on its own to interpret such words in that way.
104. … The fact that a general purpose computer can be programmed to become a virtual body modelling apparatus does not mean that a general purpose computer is a virtual body modelling apparatus nor is it an apparatus suitable for virtual body modelling. It is not. If the right software was installed in the computer but the computer was switched off then that might well be apparatus suitable for virtual body modelling but that is a different point."
"I will start with direct infringement under s60(1). For this purpose I take it that a Wii system with a Balance Board [an item of hardware] running Island Cycling [game software] is an apparatus within claim 1. The pleadings include an allegation that sale of a Wii in the UK is sale of a product within claim 1. I reject that argument. A Wii console sold by Nintendo to customers is not, in the state it is sold, an apparatus within the claim 1. The game software is available on optical disks which are placed in the Wii console in order to play the game. To be within claim 1 it seems to me that the relevant disk, such as a disk carrying the Island Cycling software, at least has to have been inserted into the Wii unit and a Balance Board has to be connected. In that state, whether the unit is switched on or switched off, it seems to me that the claim is satisfied on the assumption I have made."
"225. … changing a base station from one which does not operate an infringing method … into one which does, is not as simple as choosing whether or not to supply power to it. Assume for the moment that the base station is not transmitting any barring parameters. Now assume that the operator wants to transmit the barring parameters for purposes of access control. The fact evidence established that making the change was not a simple matter of supplying power. On the contrary Vodafone's evidence shows that the change requires reprogramming the base station software.
226. IPCom submitted that the reprogramming was akin to flicking a switch. I disagree. I agree with IPCom that the extent of the reprogramming might vary between what Mr Bishop accepted was quite a trivial change (eg a change to the base station software which reads the configuration file, if one has the base station software source code) to a wholesale rewrite of the relevant software, but the fact remains that until the additional programming is done – however extensive or otherwise that additional programming is – the base station does not send the barring parameters. Nor is it adapted or configured to send them. On the contrary, it is adapted and configured not to send the barring parameters."
"… I accept that if the LTE network is in such a state that it merely needs power in order to operate access control as per section 5.3.3.11, then it is 'set up to send' and hence acts done in relation to that network will infringe unconditional claim 13. Unconditional claim 13 is only 'essential' when the network is in this state. Conversely if the LTE network requires some form of adaptation, configuration, or additional programming going beyond the mere supply of power then it is not 'set up to send' and acts done in relation to it will not infringe unconditional claim 13."
Crown use
MTPAS
i) Vodafone are authorised by the Cabinet Office in writing to operate MTPAS;
ii) it is technically possible to comply with MTPAS requests without infringing the Patent; and
iii) during the period of time which is relevant for infringement purposes, Vodafone never received an actual MTPAS request, but they tested their system regularly to ensure that they were in a position to comply with any such request.
The legislative history and previous case law
"… if there was any intention of handing over, with the contract, by others, to supply what the Crown did not think it convenient to manufacture for itself; the power and authority to the contractors of providing themselves with patented articles for that purpose without obtaining a license from the patentee, or without purchasing them from the patentee—I apprehend that if that idea had crossed anybody's mind in framing this invitation to tender, we should have found some reference to patents in it, whereas we find none; we find only a contract to deliver a certain article patented or unpatented."
"I cannot help thinking that, whether the Crown should or should not, in any particular case, desire to take advantage of that immunity, must be a question upon which the Crown is entitled to exercise its discretion, and therefore that any bare contract (supposing that this were one of that character, which I have already pointed out I do not think it is) with an agent to do the work, if the Crown says nothing to the effect that he is to do it without reference to a patentee's rights, will not be sufficient to shew that the Crown was exercising such an election, and consequently the agent, without such express authority, would have no right to infringe the patent. My Lords, I say that with some hesitation, because my noble and learned friend on the woolsack appeared to think otherwise."
(Despite what Lord Penzance said in the last sentence quoted, Lord Cairns LC's speech was silent on this point; he may have been referring to something the Lord Chancellor said during the course of argument.)
"… it was competent for the contractor to have fulfilled his agreement to the letter by paying for the license of the patentee; and the contract does not, on any construction of it, expressly or implicitly declare that the Crown designed or directed the dispensing with that license. The order 'to provide and deliver' involved neither requirement nor approval of illegality, and cannot be assumed to have been issued with the desire that the contractor should act without the permission of the patentee, and therefore, so far as he was concerned, in fraud of individual right and in contravention of the law. Surely, the contrary assumption, if any, should be made. If the work could be done in one of two ways—legally or otherwise—ought we to suppose that the legal mode was not contemplated, in the absence of clear words forbidding it? But there are no such words."
"Nor is it like the case of a direct order to a contractor to do an unlawful act, to the injury of another person. Here there is no order to infringe any patent; and it cannot be inferred that this would have been intended or authorized by a private person entering into this contract, the use of patented articles or patented processes being, in the ordinary course of business, a thing which may be lawfully obtained in the proper market, just as any necessary materials might be, which the manufacturer, taking the contract, might not himself have in stock."
"Patent to bind Crown.
(1) A patent shall have to all intents the like effect as against Her Majesty the Queen, her heirs and successors, as it has against a subject.
(2) But the officers or authorities administering any department of the service of the Crown may, by themselves, their agents, contractors, or others, at any time after the application, use the invention for the services of the Crown on terms to be before or after the use thereof agreed on, with the approval of the Treasury, between those officers or authorities and the patentee, or, in default of such agreement, on such terms as may be settled by the Treasury after hearing all parties interested."
"… the Crown could use by its servants or agents any invention, notwithstanding that Letters Patent had been granted in respect of it, without the consent and notwithstanding the objection of the patentee, and, of course, without having to obtain any licence or make payment of any royalty. This right, however was held not to extend to persons who contracted with the Crown under such circumstances as that they could fulfil their contract by either not using a patented invention, or by using a patented invention. Dixon v. London Small Arms Company (1 App. Cas. 632) was referred to on this point, and especially what was said by Lord O'Hagan on page 658:- 'If the work could be done in one of two ways legally, or otherwise, ought we to suppose that the legal mode was not contemplated in the absence of clear words forbidding it?'"
"[Counsel for the plaintiff] is quite right in saying that the contract does not, in express terms, oblige the Defendants to manufacture the Plaintiffs' patented fire extinguisher. On the other hand, the facts are that the Ministry of Munitions entered into this contract with reference to that extinguisher, and to that extinguisher alone, and the tender which was signed … was in fact a tender for the manufacture of the Plaintiffs' patented extinguisher. The model of the Plaintiffs' machine was produced to Mr. Webb, and he was asked to tender for the making of a machine on that model, and … the prices [were] arranged after bargaining in reference to that very model.
It is not to be wondered at that contracts entered into at the time when this contract was entered were possibly not of the best draughtsmanship … I hold that, notwithstanding the particular wording of this contract, it was a contract which compelled the Defendants to copy as closely as they could the Plaintiffs' patented invention. I further come to the conclusion that it was the intention that the Defendants were not bound to obtain the leave of the Plaintiffs to make their machine …
In these circumstances I hold that this agreement was one which, within the exception admitted by [counsel for the plaintiff], compelled the manufacture of this particular machine without obtaining the leave or licence of the Patentee. In those circumstances … I unhesitatingly hold that the Defendants were contractors with the meaning of Section 29 …."
"Right of Crown to use patented inventions.
(1) A patent shall have to all intents the like effect as against His Majesty the King as it has against a subject:
Provided that any Government department may, by themselves or by such of their agents, contractors, or others as may be authorised in writing by them at any time after the application, make, use or exercise the invention for the services of the Crown on such terms as may, either before or after the use thereof, be agreed on, with the approval of the Treasury, between the Department and the patentee, or, in default of agreement, as may be settled in the manner hereinafter provided. And the terms of any agreement or licence concluded between the inventor or patentee and any person other than a Government department, shall be inoperative so far as concerns the making, use or exercise of the invention for the service of the Crown:
Provided further that, where an invention which is the subject of any patent has, before the date of the patent, been duly recorded in a document by, or tried by or on behalf of, any Government department, (such invention not having been communicated directly or indirectly by the applicant for the patent or the patentee), any Government department, or such of their agents, contractors, or others, as may be authorised in writing by them, may make, use and exercise the invention so recorded or tried for the service of the Crown, free of any royalty or other payment to the patentee, notwithstanding the existence of the patent. If in the opinion of the department the disclosure to the applicant or the patentee, as the case may be, of the document recording the invention, or the evidence of the trial thereof, if required, would be detrimental to the public interest, it may be made confidentially to counsel on behalf of the applicant or patentee, or to any independent expert mutually agreed upon.
(2) In case of any dispute as to the making, use or exercise of an invention under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the court for decision, who shall have power to refer the whole matter or any question or issue of fact arising thereon to be tried before a special or official referee or an arbitrator upon such terms as it may direct. The court, referee, or arbitrator, as the case may be, may, with the consent of the parties, take into consideration the validity of the patent for the purposes only of the reference and for the determination of the issues between the applicant and such Government department. The court, referee, or arbitrator, further in settling the terms as aforesaid, shall be entitled to take into consideration any benefit or compensation which the patentee, or any other person interested in the patent, may have received directly or indirectly from the Crown or from any Government department in respect of such patent.
..."
"It is submitted that the authorisation in writing, required for the first time by the Act of 1919, need not refer explicitly to the patent in question, but may be inferred from the terms of the written contract as was done in Pyrene Co., Ltd, v. Webb Lamp Co. (37 R.P.C. 57) … Provided, therefore, the contract leaves no doubt as to the article which is to be made or the process which is to be used in making it, no specific reference to the patent need appear in it and, indeed, the officers of the department and the contractors may be in ignorance of the existence of the patent."
"In my judgment, the Section is primarily an agency section, that is to say, protection is afforded to the Government department, and to any person or persons, contractors or others, who are acting as agents for, or by the express or implied authority of, a Government department. In each case, it will have to be ascertained … whether the acts of the Defendant Company in that particular case were acts done for the purposes of the Crown, and with the authority, or by the direction, of the Crown. In that case, they will not be liable; but where the acts that have been done have not been done by virtue of some express or implied authority from the Crown, then it seems to me they will be liable."
"It is submitted that such written authorisation need not be directed specifically to the use of the particular patent concerned, and that a written authorisation or requirement of a department that a contractor should supply apparatus of a certain type would be sufficient if it were in fact impossible for the contract to supply such apparatus without infringing the patent concerned (c), that is to say, that the only difference made in this respect by the Act of 1919 is that the authorisation should be in writing and not that any greater or more specific degree of authorisation is required."
The authority cited at c for this statement was Pyrene, and the editors proceeded immediately to quote at length from Autogene. The statement of the law prior to the citation was repeated with only slight modifications in wording in subsequent editions of Terrell down to the 18th edition (2016, edited by Sir Colin Birss and others).
The current statutory provisions
"Use of patented inventions for services of the Crown.
(1) Notwithstanding anything in this Act, any government department and any person authorised in writing by a government department may, for the services of the Crown and in accordance with this section, do any of the following acts in the United Kingdom in relation to a patented invention without the consent of the proprietor of the patent, that is to say—
(a) where the invention is a product, may—
(i) make, use, import or keep the product, or sell or offer to sell it where to do so would be incidental or ancillary to making, using, importing or keeping it; or
(ii) in any event, sell or offer to sell it for foreign defence purposes or for the production or supply of specified drugs and medicines, or dispose or offer to dispose of it (otherwise than by selling it) for any purpose whatever;
(b) where the invention is a process, may use it or do in relation to any product obtained directly by means of the process anything mentioned in paragraph (a) above;
…
and anything done by virtue of this subsection shall not amount to an infringement of the patent concerned.
(2) Any act done in relation to an invention by virtue of this section is in the following provisions of this section referred to as use of the invention; and "use" in relation to an invention, in sections 56 to 58 below shall be construed accordingly.
(3) So far as the invention has before its priority date been duly recorded by or tried by or on behalf of a government department or the United Kingdom Atomic Energy Authority otherwise than in consequence of a relevant communication made in confidence, any use of the invention by virtue of this section may be made free of any royalty or other payment to the proprietor.
(4) So far as the invention has not been so recorded or tried, any use of it made by virtue of this section at any time either;
(a) after the publication of the application for the patent for the invention; or
(b) without prejudice to paragraph (a) above, in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence;
shall be made on such terms as may be agreed either before or after the use by the government department and the proprietor of the patent with the approval of the Treasury or as may in default of agreement be determined by the court on a reference under section 58 below.
…
(6) The authority of a government department in respect of an invention may be given under this section either before or after the patent is granted and either before or after the use in respect of which the authority is given is made, and may be given to any person whether or not he is authorised directly or indirectly by the proprietor of the patent to do anything in relation to the invention.
(7) Where any use of an invention is made by or with the authority of a government department under this section, then, unless it appears to the department that it would be contrary to the public interest to do so, the department shall notify the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted, and furnish him with such information as to the extent of the use as he may from time to time require.
…"
"Special provisions as to Crown use during emergency.
(1) During any period of emergency within the meaning of this section the powers exercisable in relation to an invention by a government department or a person authorised by a government department under section 55 above shall include power to use the invention for any purpose which appears to the department necessary or expedient—
(a) for the efficient prosecution of any war in which Her Majesty may be engaged;
(b) for the maintenance of supplies and services essential to the life of the community;
(c) for securing a sufficiency of supplies and services essential to the well-being of the community;
(d) for promoting the productivity of industry, commerce and agriculture;
(e) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;
(f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or
(g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory outside the United Kingdom which is in grave distress as the result of war;
and any reference in this Act to the services of the Crown shall, as respects any period of emergency, include a reference to those purposes.
(2) In this section the use of an invention includes, in addition to any act constituting such use by virtue of section 55 above, any act which would, apart from that section and this section, amount to an infringement of the patent concerned or, as the case may be, give rise to a right under section 69 below to bring proceedings in respect of the application concerned, and any reference in this Act to 'use for the services of the Crown' shall, as respects any period of emergency, be construed accordingly.
(3) In this section 'period of emergency' means any period beginning with such date as may be declared by Order in Council to be the commencement, and ending with such date as may be so declared to be the termination, of a period of emergency for the purposes of this section.
(4) A draft of an Order under this section shall not be submitted to Her Majesty unless it has been laid before, and approved by resolution of, each House of Parliament."
Article 31 of TRIPs
"Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
…
(h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;
…"
The rival interpretations
i) this requires an express authorisation to work the patent in question;
ii) it requires either an express authorisation to work the patent or an authorisation to do a particular act in circumstances where that act necessarily infringes the patent; and
iii) it extends to an authorisation to do a particular act even if that does not necessarily involve infringing the patent.
Analysis
De minimis
"147. In the present case counsel for Napp accepted that the de minimis principle applied to claims for patent infringement. Moreover, he accepted that, to take an extreme example, if only one patch in a trillion (1012) fell within the claim, then the Defendants would not infringe the claim. He nevertheless submitted that the Defendants would infringe if larger, but still very small, proportions of their patches infringed. By way of illustration, he postulated a scenario in which it could be shown that, out of 2 million patches sold by a defendant between now and the expiry of the Patent, 200 fell within the claim (i.e. 1 in 10,000 or 0.01%). He argued that a defendant who sold just 200 patches which fell within the claim would undoubtedly infringe, and that it made no difference if the 200 patches constituted a single hour's production out of a year's worth of production, nor even if the 200 patches were randomly distributed amongst 1,999,800 non-infringing patches.
148. I can only say that I disagree. It seems to me that most people, and specifically the skilled person, would be very surprised by the proposition that selling products only 0.01% of which fall within the claim constitutes patent infringement, particularly where the 0.01% are randomly distributed among the remainder. I consider that this is precisely the kind of situation covered by the de minimis principle.
149. Furthermore, while I accept the force of Lord Phillips' warning [in Sienkiewicz v Greif (UK) Ltd [2011] UKSC 10, [2011] 2 AC 229 at [108]] about the dangers of trying to define a quantitative limit, it seems to me that, for reasons which will become clear, in the present case the court is forced, as a matter of practical reality, to draw a line somewhere. Where that line should be I will consider below."
"220. I will here summarise the extent of the acts said to be de minimis as follows.
a) MTPAS testing takes place (1) every few weeks, for a few minutes, on a few base stations; and (2) on a larger scale up to 3 times a year, for up to a few hours, on tens of base stations.
b) Annex E acts took place on less than 10 base stations.
c) Annex F acts took place over a 5 month period on 10 base stations.
221. There is no doubt that in each case the actual volume of the acts concerned was very small. However given that access control is not performed in normal operation, but (in general) only in extreme circumstances, the fact that the actual volume of the acts is very small is not surprising. On the contrary it is what one would expect. Moreover Vodafone's intention is not directly relevant, so to characterise them as 'inadvertent' is not an answer either.
222. Finally I do not accept that just because the acts were performed on a small scale they are commercially insignificant, given the context. For instance Vodafone does not charge the Crown for providing its response under MTPAS, nor for its MTPAS testing. However I consider that its participation in MTPAS, taken as a whole, is a small but significant part of Vodafone's commercial operations as a network provider. The same is less true of the other acts said to be de minimis, but I do not accept that they are such that Vodafone must be allowed to use somebody else's invention with impunity (which is the end point of its argument, stripped of the Latin tag). The extent of relief to be granted may be another matter."
Obviousness
"The 2-step version is based on Vodafone's assertion that Dr Irvine made an important admission in his evidence, to the effect that the claim covered a privileged user of the claim who was associated with both a normal class (0-9) and a special class (11-15). It was then said to be common ground between the experts that the skilled person would take the following steps:
i) adopt the IS-95 approach of putting classes 0-9 together in a single large group, offered access by a persistence test;
ii) adopt GSM access barring for the special classes so that the network can signal (i) which of them just proceed to access the RACH (GSM access barring '0') and (ii) which are barred (GSM access barring '1')."
"First, whilst Dr Irvine's views on technical matters were helpful his views on what the claim covers are irrelevant. Secondly I have already explained that the 2 classes themselves are mutually inconsistent. Thirdly, as IPCom pointed out Dr Irvine's views were expressed in the context of LTE, not in the context of the claim. Fourthly, it is another example of the type of argument based solely on common general knowledge which is unencumbered by detail and against which the Court has to be cautious. Fifthly it again involves hindsight. Sixthly this argument was never pleaded nor was it ever advanced in Mr Bishop's evidence. It first emerged in an opportunistic fashion in Vodafone's closing submissions and that approach is unfair to IPCom."
"This is a very simple and attractive argument, untrammelled as it is by any of the details of a practical working system. Mr Gould's fundamental position was that the skilled team would be much more likely to start from one of the known standard proposals, such as GSM/GPRS or IS-95. His cross-examination required him to clear his mental decks of all such proposals and start with a system solely based on the lottery. He plainly thought this whole exercise unrealistic, as I believe it to have been. The skilled person's first port of call would have been to see what methods of control had in fact been used in the past. This is particularly so in a case where such methods have been through standardisation processes. I have already considered whether the methods disclosed in GSM/GPRS or IS-95 would have led to the invention and concluded that they would not. The obviousness argument from common general knowledge requires instead an a priori re-assessment of the problem without reference to these methods. I must take this decision into account in assessing whether the approach adopted in the patent is inventive."
Form of declaration
"Operating access control in accordance with 3GPP TS 36.331, version 12, section 5.3.3.11 by an LTE Base Station (each an eNodeB) transmitting the LTE parameters 'ac-BarringConfig' and 'ac-BarringForSpecialAC' (the 'ACB Method'), necessarily infringes claims 1 and 7 of the Patent. Claims 1 and 7 of the Patent are accordingly essential to the implementation of the ACB Method."
"If and insofar as the option to perform access control in accordance with 3GPP TS 36.331, version 12, section 5.3.3.11 is being exercised by an LTE Base Station (each an eNodeB) transmitting the LTE parameters 'ac-BarringConfig' and 'ac-BarringForSpecialAC' (the 'ACB Option'), then claims 1 and 7 of the Patent are necessarily infringed by such LTE Base Station (eNodeB). Claims 1 and 7 of the Patent are accordingly essential to the optional implementation of the ACB Option by an LTE Base Station (eNodeB)."
Disposition
Asplin LJ:
Lewison LJ:
"There is a modern tendency in the law to break down divisions in the rules on the interpretation of different kinds of document, both private and public, and to look for more general rules on how to ascertain the meaning of words. In particular, there has been a harmonisation of the interpretation of contracts, unilateral notices, patents and also testamentary documents."
"… a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is "yes", there is an infringement; otherwise, there is not."
"… issue (i), as already mentioned, involves solving a problem of interpretation, which is familiar to all lawyers concerned with construing documents. While the answer in a particular case is by no means always easy to work out, the applicable principles are tolerably clear, and were recently affirmed by Lord Hodge JSC in Wood v Capita Insurance Services Ltd … paras 8–15."