Nokia GmbH v Ipcom GmbH & Co KG

Patent claims are construed as the skilled person would understand them. Specific embodiments do not ordinarily add limitations omitted from general claim language. A claim requiring several steps does not necessarily exclude additional steps or require exact temporal separation. A feature should be implied only when necessary to make technical sense. Sufficiency must extend across the whole claim scope, including a separately defined optional branch. Where claimed integers have no working inter-relation, obviousness may be assessed separately. An access-control claim directed to whether a procedure applies is not limited to checking whether threshold data is physically present.

IPCom brought infringement proceedings against Nokia concerning two telecommunications patents. The 808 patent concerned synchronisation of mobile phones with cellular networks. The 189 patent concerned allocation and management of access rights to shared telecommunications channels. Nokia denied infringement and challenged both patents for insufficiency, lack of novelty and obviousness.

The court considered claim construction, validity, conditional infringement by representative Nokia devices, and essentiality to the GSM and UMTS standards. The principal issues included the scope of optional synchronisation steps, the meaning of access-authorisation checks, and whether the claimed methods were disclosed or suggested by GSM, GPRS, Ericsson and common general knowledge.

The court held as follows.

1. Construction. Claims are construed by asking what the skilled person would understand the patentee to mean, consistently with the approach in Kirin Amgen v TKT [2005] RPC 9, Technip France SA’s Patent [2004] RPC 46 and Halliburton v Smith [2005] EWHC 1623. General language is not ordinarily limited by a specific embodiment. The 808 claim did not exclude additional steps or require the stated steps to be performed in a rigid sequence. No implied adequacy test was required for the optional coarse-frequency step. Other disputed terms allowed averaging of measurements, did not require correction before the equaliser, and did not require oscillator tuning during lock-on synchronisation.
2. Sufficiency. Applying the principle in Mentor Corporation v Hollister Inc [1993] RPC 7 and Biogen v Medeva [1997] RPC 1, sufficiency under section 72(1)(c) had to be assessed across the whole scope of the claim. The 808 patent was nevertheless sufficiently disclosed because ordinary skill, including a simple scanning technique, could implement the coarse-frequency step.
3. Obviousness. Applying the structured approach in Pozzoli v BDMO [2007] EWCA Civ 588, and the collocation principle in SABAF SpA v. MFI Furniture Centres Ltd [2005] RPC 209, the separate synchronisation aspects could be considered independently. Claims 1, 9 and 11 of 808 were obvious over the GSM recommendations. Data pre-processing was also obvious from common general knowledge and, on the adopted construction, from Baier and D’Avella.
4. 189 patent. The relevant check was whether a particular mobile should use an access-threshold or access-class procedure, not merely whether the relevant information was present. On that construction, GPRS anticipated claims 1 and 2. Ericsson anticipated or rendered obvious claims 1, 2 and 11.
5. Consequences. Both patents were invalid. Had they been valid, the Nokia 6300 would have infringed claims 1, 9 and 11 of 808, and the N96 and New Device would have infringed 189. The 808 patent was not essential to GSM; 189 was essential to UMTS.

not stated in the judgment.