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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2020] EWHC 2746 (Pat) (16 October 2020) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2020/2746.html Cite as: [2020] EWHC 2746 (Pat) |
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2020] EWHC 2746 ( Pat) | ||
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS
COURT
The Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL |
||
2020 |
B e f o r e :
____________________
| (1) OPTIS CELLULAR TECHNOLOGY LLC (2) OPTIS WIRELESS TECHNOLOGY LLC (3) UNWIRED PLANET INTERNATIONAL LTD |
Claimants |
|
| - and - |
||
| (1) APPLE RETAIL UK LTD (2) APPLE DISTRIBUTION INTERNATIONAL LTD (3) APPLE INC |
Defendants |
____________________
Guy Burkill QC, and Brian Nicholson QC (instructed by WilmerHale) for the Defendants
Hearing dates: 5th-7th, 12th, 13th October
2020
____________________
Crown Copyright ©
Mr Justice Birss:
patent
action. The judgment relates to the first in a series of trials between these parties. This trial (Trial A) is about
patent
EP (UK) 1 230 818 entitled "Method for improving handovers between mobile communications systems". The application was filed on 20th October 2000 claiming priority from a US filing dated 17th November 1999. The
patent
therefore expires on 20th October
2020,
7 days after the scheduled end date of the trial.
patent
is part of a portfolio of declared standards essential
patents
held by the Optis group of which the claimants are each members. Optis contends the
patent
is valid and essential to versions of standard 3GPP TS 45.008 concerning GSM. The particular aspects relied on are (i) 3GPP TS 45.008 v.5.22.0 relating to enhanced measurement reporting about UMTS cells, (ii) 3GPP TS 45.008 v.8.12.0 relating to enhanced measurement reporting about both UMTS and LTE cells, and (iii) the same 3GPP TS 45.008 v.8.12.0, this time relating to normal measurement reporting about UMTS cells. Aside from essentiality, there is no distinct issue of infringement. If the
patent
is valid and essential, then it is being infringed by Apple.
patent
is essential and also contends it is invalid. The grounds on which invalidity are alleged are obviousness and insufficiency. The obviousness case has three bases: (i) International
Patent
Application published in 1998 as WO 98/50909 ("Losh), (ii) an ETSI Tdoc published in September 1999 as Tdoc SMG2 1145/99 ("Tdoc 1145/99), and (iii) Agrevo obviousness. The insufficiencies are (i) Biogen insufficiency, (ii) insufficiency by uncertainty.
patent
in 2016. My judgment was given on 22nd March 2016, finding the
patent
valid and essential to the then relevant mobile telecommunications standard. It is [2016]
EWHC
576 (
Pat).
It was Trial C of the overall dispute between Unwired Planet and Huawei, which led to the recent judgment of the Supreme Court on FRAND. Some of the arguments in the present case are similar to issues I addressed in that judgment and some are different. For example in 2016 the two obviousness attacks (which failed) were based on common general knowledge alone and on Tdoc 1145/99. This is a distinct case and Apple are not bound by any findings in the 2016 case. Some passages of the text in this judgment were written by starting from related passages in the 2016 judgment and editing them to my satisfaction. Nevertheless, I have considered all the arguments and evidence afresh.
Summary of what this case is about
patent
is about handover between different "RATs" or Radio Access Technologies. GSM (2G), UMTS (3G) and LTE (4G) are different RATs because the ways in which the radio signals are used to make the communication link between a mobile phone and a base station are different. Optis contends that the
patent
is essential to the part of the GSM standard which relates to hand over to UMTS and to LTE. It is useful to understand at a high level how different these different RATS are from GSM, focussing mostly on UMTS.
patent,
ETSI (which was responsible for GSM) and 3GPP were working in parallel.
Handover
patent
is most concerned with is handover from GSM to UMTS (but it is not limited to that). The claimed invention works in this way. The phone has a GSM connection with a serving GSM base station. The phone makes measurements of local GSM neighbour cells and also local UMTS neighbour cells. The GSM measurements measure different things from the UMTS measurements because GSM and UMTS work in different ways. The invention requires the phone to "convert" the UMTS measurements into GSM measurements, compare the converted measurements to a threshold and if they pass to send converted measurement(s) to the GSM base station. That way the network has the information needed to make inter-RAT handover decisions. For present purposes I am ignoring significant arguments about claim construction.
The claims
[a] A method for conveying measurement information from a terminal in a first communication system to a second communication system, characterised by the steps of:
[b] converting a plurality of downlink measurement values associated with said first communication system to a plurality of down link measurement values for said second communication system;
[c] comparing said converted plurality of downlink measurement values with at least one threshold measurement value; and
[d] if at least one of said converted plurality of downlink measurement values exceeds a predetermined threshold measurement value, sending said at least one of said converted plurality of downlink measurement values on a control channel to a control node in said second communication system.
The witnesses
The person skilled in the art
Common general knowledge
UMTS
Message design, mappings and formats
Textbooks
The 818
patent
patent
starts by explaining that the technical field relates to handover. Paragraphs [0002] – [0003] describe the background under the heading "related art". Paragraph [0002] explains that GSM has been established for a number of years and UMTS is under development. In order to offer global coverage for UMTS when it starts, it will need to be possible to carry out handovers between UMTS and GSM. In this way, GSM networks will be able to provide coverage in those regions where UMTS network coverage has not, or has not yet, been provided. So when a phone sets up a call in a region where there is only GSM, it will set up a GSM connection but then if the phone moves into an area with UMTS coverage it will be "handed back" to a UMTS network.
patent
explains that currently, the GSM standard provides no spare signalling capacity on the uplink in the relevant circumstances. "Consequently", states the
patent,
the transport of UMTS measurement information from a phone to the BSC will have to be performed at the expense of other information.
patent
describes a proposed solution and the drawback of that proposal. The proposed solution is to send the measurement information on the FACCH. However "a significant problem" with the FACCH is that it operates in stealing mode, exchanging speech data for signalling information required for the handover. This would "severely reduce the quality of the speech information being conveyed". The paragraph ends by stating that the invention "successfully resolves this pressing handover problem and other related problems".
patent
presented the problem it was setting out to solve. His view was that the statement in paragraph [0003] that there was no spare signalling capacity on the uplink was not wholly accurate, amongst other things this because in his opinion there was 50% spare capacity on the SACCH. His view was also that the skilled person would not agree with the statement in paragraph [0004] that the need to avoid using the FACCH was a pressing problem and that the skilled person would consider the statement in the same paragraphs that the use of the FACCH would "severely reduce" speech quality was something of an exaggeration.
patent
is setting out to solve. The skilled person reading these paragraphs as a whole would understand that the problem was, as the last sentence of paragraph [0003] puts it, that the transport of UMTS measurement information from a phone to a GSM BSC will have to be performed at the expense of other information. They would know that sending occasional FACCH messages in good conditions did not cause a severe reduction in speech quality, but they would also believe that, as the
patent
explains, using the FACCH in this context had a drawback because it was based on stealing speech frames.
patent
calls "important technical advantages" of the invention, namely (i) that measurement information can be conveyed effectively between different mobile communication systems without sacrificing the quality of speech information being conveyed, (ii) that handovers between different types of mobile communication systems can be effectively performed and (iii) that coverage for a UMTS network can be expanded using GSM network coverage. The same point can be made about advantage (i) as has been mentioned above, namely that claim 1 is not limited to a system which requires (rather than permits) no sacrifice in speech quality. Also for advantage (iii), only claims 2 and 3 are limited to those particular systems.
patent
contains two figures. Figure 1 depicts a phone (22) in a car. On the left of the figure is a GSM network (10) with a central VLR and MSC, a BSC (14) which controls the cell, and a base station (16). On the right of the dotted line 18 is a UMTS cell (20). The Node B for that UMTS cell is not shown. Figure 1 is:


patent
states (p3 ln32-33): "Notably the UMTS measurement information being reported is different from the typical GSM measurement information being reported." In paragraph [0014] the
patent
explains this in more detail:
"For example, a typical GSM MS continuously measures and reports (on the [uplink]) signal strength (dBm) and quality (Bit Error Rate or BER) of its own cell, and signal strength of the Broadcast Control Channel (BCCH) carriers of the neighboring cells. On the other hand, instead of measuring signal strength in a UMTS cell, a UMTS MS measures and reports (on the [uplink]) the Code Energy-to-Interference Ratio (Ec/I0) or Received Signal Code Power (RSCP in dBm) of the UMTS cell."
patent
specification, which is presented simply as an example, would be understood by the skilled person to have the significance Apple proposes.
"At step 106, the MS 22 compares the converted UMTS signal strength values (derived from step 104) with the set of stored GSM signal strength values (derived from step 102b). The MS 22 then retrieves a predetermined number (e.g., 6, or the maximum number of neighboring cells included in a GSM measurement report) of the "best" measurement values from step 106 to be reported in a measurement report to the GSM BSC 14. At step 108, for this exemplary embodiment, the MS 22 sends a GSM-type measurement report for receipt at the BSC 14 (via BTS 16) on the GSM SACCH over the radio air interface 23. The GSM-type measurement report can include signal strength information about UMTS neighboring cells."
"Alternatively, at step 106, instead of comparing the converted UMTS measurement values with GSM measurement values, the MS can convert each stored UMTS measurement value to an appropriate GSM signal strength value, and select each converted UMTS measurement value that exceeds a predetermined signal strength threshold value, for reporting to the GSM BSC 14."
"… the UMTS measurement information from the MS 22 can be converted to a GSM measurement format and sent to the GSM BSC 14 on the SACCH for use in making handover decisions. Consequently, since the SACCH does not operate in a stealing mode, the quality of the speech and on-line data being conveyed between the MS 22 and the GSM network 10 will not be diminished due to the use of speech frames for measurement signalling."
patent
that the rest of the method for the second alternative was indeed to be as shown in figure 2, he maintained it was not what the text says. However the correct approach to construction is to understand what the skilled person would understand the intention of the writer to have been in using the language they have.
patent
discloses is the idea that when the phone does the comparison it may be done using real GSM measurements (first embodiment) or a GSM threshold (second embodiment). Although not stated in the
patent
expressly for the second embodiment, the reader would understand that both embodiments could result in a measurement report containing both UMTS and GSM cells. If (say) only three converted UMTS measurements passed the threshold test and were to be reported in a standard GSM message report with room for six cells, the phone could report the three best GSM cells in the available spaces.
Claim construction
i) Conversion
ii) Comparability
iii) Threshold
Conversion
patent,
the two alternatives are not as different from one another as Apple contends.
patent
as a whole to refer to conversion as a process with both aspects. Its purpose is to render the UMTS measurement in a form both (i) comparable with a GSM measurement and (ii) expressed in a GSM measurement format. The former makes it useful for handover decisions and the latter helps send it on the SACCH in a non-stealing mode. The reader of the
patent
would not think the conversion referred to had taken place if only one of these two things was achieved.
patent
claims may be stated in those claims but it may not. The purpose may only be understood from the specification. In this case the skilled reader understands what the purpose of conversion is from the
patent
as a whole.
patent
overall.
patent
was getting at.
Comparability
patent
as part of conversion, what is required is that the UMTS value be expressed as if it was a GSM measured value, even though it is not, and thereby allow ranking of the cells from both GSM and UMTS on a common scale.
Threshold
Other claims
Essentiality
Patent
is essential to the GSM standard. Two versions of the standard are relied on:
i) 3GPP TS 45.008 release 5, version 5.22.0 dated April 2006; and
ii) 3GPP TS 45.008 release 8, version 8.12.0 dated September 2011.
Standard TS 45.008, release 5 version 5.22.0 April 2006 – enhanced measurement reporting
i) Priority level 1: the relevant GSM cells with the highest reported value (RXLEV) are reported. The phone is told how many such cells may be reported, the maximum number is 3.
ii) Priority level 2: the cells to be reported work in the same way as priority level 1 but for cells in other GSM frequency bands.
iii) Priority level 3: the number of best valid cells whose reported values equal or exceed a pre-defined threshold in each supported other RAT, again up to a maximum of 3 per additional RAT. Where the other RAT is UTRAN FDD, then the non-reported value has to be equal or greater than a distinct pre-defined threshold. This second threshold can be disabled by being set to zero. For each RAT the cells with the highest reported values are reported.
iv) Priority level 4: the remaining valid GSM cells and valid cells of other RATs are reported as long as the cells pass the relevant threshold for that RAT. Within this level, the reporting priority for UTRAN FDD cells is based upon RSCP even if Ec/No is reported and the non-reported value has to be equal or greater than the pre-defined threshold.
i) if there are spaces unfilled within each priority level, those spaces are to be left over for the lower-prioritised cells; and
ii) if there is not enough space in the report for all valid cells, then the cells that shall be reported are those with the highest sum of the reported value and the parameter XXX_REPORTING_OFFSET.
Does this fall within the claims?
| A | B | C | D |
|---|

patent
does give, as an example, an equation in which a constant offset is added to the RSCP to make it comparable to RXLEV does not mean that the existence of a method which allows constant offsets to be used for prioritisation between RATs (or frequency bands) proves that the values before those offsets were added were not comparable. They may or may not have been. Moreover using a constant offset is clearly not the only way of converting measurements in such a way as to make them comparable. Another way expressly disclosed is to use an offset which varies as a function of RSCP and another way, which does not involve offsets at all (or not really) is mapping measurements to appropriate integers. That is how it is done in this case. Further, the contention that the fact offsets are added in level 4 proves that before the offsets were added the numbers were not comparable simply does not follow as a matter of logic. Moreover, as Optis pointed out, part of the same offsetting process involves applying offsets to RXLEV measurements from different frequency bands of GSM. Those RXLEV measurements plainly were directly comparable, prior to the application of the offsets.
3GPP TS 45.008 release 8, version 8.12.0 dated September 2011
patent
is therefore essential to that standard.
Obviousness
patent
is to find a way of conveying measurement information without using the FACCH, because that operates in stealing mode. Paragraph [0005] explains that a preferred embodiment of the invention solves that problem because with it the information can be conveyed on a channel which can function in non-stealing mode. For example in GSM, UMTS information is capable of being conveyed in a GSM message on the SACCH.
So far as the features that are in claim 1 are concerned, the claim has two elements:
a) Conversion of measurement values from one system, to measurement values for a second system […]
b) Sending values that exceed a threshold to the network in the second system [in their converted form].
Losh
patent
application published in November 1998. It relates to subscriber handover between multiple access communication systems, in other words inter-RAT handover. In Losh handover is called handoff. They are the same. The particular circumstance considered in detail in Losh is a phone capable of operating in the AMPS analogue system and the CDMA system called IS-95, and to handover from IS-95 to AMPS. The reason that circumstance was relevant was to handle a case in which the newer IS-95 network was expanding but a user would reach the edge of the IS-95 coverage and then have to connect to AMPS. This is depicted in figure 1. Each RAT in Losh is called an "MA". The idea is to do away with the need for beacons in the current MA which mark its edge.

patent
in suit.
Is claim 1 obvious in the light of Losh?
patent
in suit. The skilled person reading Losh would see that one approach to handover in the GSM to UMTS context could be for the phone, connected to the GSM system, to make measurements of signal characteristics of UMTS. One obvious one would be RSCP. I should say that for this purpose a dual band phone which is physically capable of operating in both GSM and UMTS would be a given for the skilled person, just as the
patent
takes that for granted.
Tdoc 1145/99
"This document describes a concept for a packet and circuit switched handover from GSM to UMTS with focus on release 99 of GSM specifications. The basic concepts outlined are downloading of measurement orders, the UE measurements, the UMTS measurement reporting and the Handover execution. The handling of the userplane is seen as a separate issue."
Is claim 1 obvious over Tdoc 1145?
path
which in fact leads to converting values in any way in the context of handover. To end up with conversion for comparability, the only conceivable prompt for the skilled person in the document is the section on cell selection. However this is not the handover the skilled person is concerned with. They are different things. Critically, no report of measurement values needs to be sent to the network in cell selection. Mr Simmons' opinion on obviousness was based on taking the idea of comparing GSM and UMTS values in cell selection and applying it in the context of handover as described elsewhere in the document. I reject that as an obvious thing for the skilled person to do. Nor am I persuaded that the common general knowledge of how the normal GSM measurement reporting compares RXLEV measurements makes it obvious for a skilled person in this context to start making comparisons between measurements in different RATs. In truth there is no reason, other than hindsight, to do that over Tdoc 1145.
path
but still based on aspects of Tdoc 1145, the most the case gets to is an event driven, threshold triggered UMTS measurement report with unconverted values sent to the BSS. I don't believe that is really obvious over Tdoc 1145 but even if it is, it is not within claim 1. Even if the skilled person decided to use the SACCH and not the FACCH for the message (which I doubt was obvious) they would not see any reason to use GSM formatting for the UMTS measurements. To get within claim 1 requires further steps (conversion both for formatting and comparability), neither of which are obvious.
Internal invalidity
Pat).
There Floyd J (as he then was) held a Samsung
patent
was invalid on a number of grounds. One of them was Agrevo obviousness. The decision is notable because hitherto it might have been thought that Agrevo obviousness was an issue which only really arose in chemical/pharmaceutical
patents
– when the claimed compounds or sub-classes of them were arbitrary and did not amount to a solution to the problem to be solved. I respectfully agree with Floyd J that there is no reason why Agrevo obviousness cannot apply to the field in which he did apply it in that case (telecommunications) or in any other technical field. The principle is a general one.
patentee
in defending an obviousness case. The claim still does have to be obvious over something in the state of the art –perhaps common general knowledge or some cited prior art.
patent, owing to their use of converted values.
Conclusion