Facts

InterDigital Technology Corporation issued proceedings against Lenovo Group Ltd in relation to five patents claiming inventions in 3G and 4G telecoms technology, which Interdigital said were essential to Release 8 LTE standard.

This trial, the first in a series of trials to be heard, concerned InterDigital’s European Patent (UK) entitled ““Method and apparatus for providing and utilizing a non-contention based channel in a wireless communication system” (the Patent).

The parties had been in discussions regarding licensing of the Patent, together with other patents in InterDigital’s portfolio. InterDigital said that it had made offers of a worldwide licence on FRAND terms, but that Lenovo was not a willing FRAND licensee. It also claimed that Lenovo had imported 4G devices into the UK and had marketed them here, thereby infringing the Patent.

Lenovo denied that InterDigital’s offers of a licence were FRAND. It also denied infringement and counterclaimed for a declaration that the Patent was invalid for lack of novelty, lack of inventive step and insufficiency.

Decision

His Honour Judge Hacon summarised the Patent’s invention, in broad terms, as concerning a non-contention based (NCB) uplink control channel, how it is set up and how it is used by the user equipment (UE), i.e., a mobile phone, tablet or laptop.

Lenovo cited two items of prior art, one of which was a T-doc submitted by Samsung at a meeting of the 3GPP TSG RAN Working Group 2 held at Cannes on 10-14 October 2005 and published before the meeting. This T-doc stated that the message sent was described as an “E-DCH SI-like” message, which was interpreted by the expert witnesses as an 18-bit message sent at the MAC layer in the context of high-speed uplink packet access (HSUPA) in the European UMTS system.

Lenovo argued that it was obvious to the skilled person to reduce the size of the 18-bit message proposed by the Samsung T-doc to a 1-bit message, which solely by its presence indicated a scheduling request, as described by the Patent. The motivation was to minimise resource allocation and to maximise the number of UEs that a cell could service.

HHJ Hacon disagreed, finding that the skilled person would have had an open mind on the topic, which did not imply a motivation one way or the other. Accordingly, the Patent had inventive step over Samsung.

Overall, HHJ Hacon found that the Patent did not lack novelty nor inventive step over either of the pieces of prior art and dismissed Lenovo’s arguments on insufficiency. The Patent was therefore valid.

On essentiality, Lenovo submitted that the invention of the Patent was not essential to Release 8 of the LTE standard. This turned on whether LTE required the implementation of integer 1C of Claim 1. In particular, the arguments revolved around the meaning of “indicates” in integer 1C. Neither expert said that “indicate” in this context was a term of art. Further, the body of the Patent specification did not use either “indicate” or “indicates” in relation to the NCB uplink control channel configuration.

HHJ Hacon found that, in the LTE standard, the resource parameter sent to the UE “indicates” which resource was to be used by the UE. Therefore, the method of the LTE system fell within Claim 1 of the Patent, meaning that the Patent was essential to LTE. Given that Lenovo used the LTE standard, its devices infringed the Patent.

In conclusion, HHJ Hacon found that the Patent was valid, essential to Release 8 of LTE and was infringed. (InterDigital Technology Corporation v Lenovo Group Ltd [2021] EWHC 2152 (Pat) (29 July 2021) — to read the judgment in full, click here).