June 27, 2022
In an ongoing, multi-trial dispute, Optis alleges that eight of its European Standard Essential Patents (SEPs) are infringed by Apple’s 3G and 4G connected devices. The latest High Court judgment from Meade J relates to the fourth and last of the technical trials, Trial D.
In Trials A and B, the Court found Optis’ patents to be valid, essential, and infringed (although the findings on essentiality and infringement in Trial A were overturned on appeal). In Trial C, the Court found the three patents-in-suit to be invalid (essentiality was not disputed). A decision has also been handed down in the separate Trial F, which addressed the appropriate scope of an injunction following the decision in Trial B. Trial E, listed for June and July 2022, will determine the terms of a global FRAND licence and rule on various allegations made by Apple of anti-competitive behaviour by Optis.
Trial D involved two related patents, whose key claims cover the spread and transmission of certain signals by mobile phones, declared essential to LTE. These signals are sent in accordance with a code multiplexing structure (CMS), which is a set of instructions allowing multiple mobile phones to use the network at the same time without interference.
Skilled person and common general knowledge
Recognising that the characteristics of the skilled person for purposes of an obviousness analysis may differ from that of the skilled addressee of the patent, Meade J found that the skilled person here was a “RAN1 person working on LTE” – in other words, someone focussed on the physical layer of radio interfaces in the context of telecommunications standard development, specifically LTE. This is the same approach Meade J took to defining the skilled person as in Trial C, referencing his decision in Alcon v Actavis  EWHC 1026 (Pat) and that of Birss J in Illumina v Latvia  EWHC 57 (Pat).
Meade J further qualified this definition by noting that the skilled person would include not just the delegates that regularly attend RAN1 meetings, but also occasional attendees and behind-the-scenes players. This analysis fed into the scope of common general knowledge (CGK) in the case, as Meade J found that material available to only a limited subset of the potential skilled persons would not constitute CGK.
The central infringement issue was whether the Patents required the relevant CMS to actually be in existence for a mobile phone to fall within their scope (Apple’s position), or only that the mobile phone was suitable to work with a CMS (Optis’ position). In other words, if the Apple mobile phones already had the necessary logic for the CMS upon which Optis relied (albeit this logic was never put into effect by Apple in the UK), would the devices still infringe? Meade J answered in the affirmative, finding that there was infringement arising by virtue of compliance with the standard, and that the Patents were essential.
Using the Pozzoli approach ( EWCA Civ 588), Meade J rejected Apple’s reading of both pieces of cited prior art, highlighting that Apple’s obviousness analyses suffered from hindsight. However, two general points of principle arose from Meade J’s invalidity analysis.
First, Meade J noted that the fact that one piece of prior art was a “kick off” discussion document rather than a concrete proposal counted against (although did not preclude a finding of) obviousness.
Second, Meade J said the ‘highly diligent skilled addressee’ would consider going to references in a prior art citation, particularly when (as was the case here) the reference would seem to be directly relevant. He caveated this by saying he did not want to make a ‘wide-ranging’ decision and that the skilled person might also immediately discard the reference. However, by virtue of the fact that there might be choices to make, such a situation would engage the law of obviousness.
Apple’s alternative invalidity case also failed. Meade J had already held that the Claims did not require there to be a CMS or for the mobile station to be used with it. Optis accepted that the validity of the Patents had to be tested against this broad scope, meaning that if a mobile phone operating as disclosed in the prior art could work with a CMS according to the Claims in the Patent, then the Claims would be invalid. Apple tried to show how this was possible, but Meade J found that its solution did not comprise a CMS within the meaning of the Claims.
Apple’s objections to Optis’s amendments
Apple also unsuccessfully opposed Optis’ proposed unconditional amendments on grounds of lack of clarity and added matter.
Regarding clarity, Meade J referred to the test from LG Philips v Tatung  EWCA Civ 1774, which states that the Claim “needs to be as clear as the subject matter reasonably admits of”, interpreting this to mean that perfect clarity is not required. Apple’s main objection was that it was not clear whether the CMS was a network feature or a feature of the mobile. But given Meade J had already agreed with Apple’s position that the CMS was a feature of the network, the objection fell away.
Regarding added matter, applying the relevant test from Bonzel v. Intervention (No 3)  RPC 553, Meade J found that a strict comparison of the disclosures of the application and of the specification demonstrated that the relevant disclosures were clearly and unambiguously found in the application as filed.
Meade J found the Patents essential and infringed. He further held that the amendments sought by Optis were allowable, and the Patents in their proposed amended forms were valid. (Optis Cellular Technology LLC v Apple Retail UK Ltd  EWHC 561 (Pat) (15 March 2022) — to read the judgment in full, click here).