MMI Research Ltd v Cellxion Ltd & Ors

For an infringement claim under section 60(1)(b) of the Patents Act 1977, offering a device with user-settable parameters can amount to offering a range of processes, including processes whose use would obviously infringe.

For novelty, a prior sale or use must make the relevant subject matter available to the public and must disclose the claimed invention. A sale alone does not establish what information the purchaser could derive from the machine. Confidentiality may arise from the circumstances of a demonstration or supply.

Obviousness must be assessed without hindsight. The existence of a recognised need does not make an invention obvious where the skilled team would not appreciate that the problem could be solved, or where the claimed solution requires several non-obvious steps.

The claimant and the fifth defendant jointly owned a patent concerning a method of identifying mobile telephones on a GSM network by using a virtual base station. The claimant alleged that the defendants’ DX918 or GX918 device infringed claim 1.

The defendants challenged validity for lack of novelty and obviousness, relying on prior supplies and demonstrations, the Dirk Fox article, Nokia patent application EP 0827356 and GSM test equipment. Personal liability was also alleged against a consultant who had designed the device.

The central issues were the construction of claim 1, whether the prior material was confidential or sufficiently disclosing, whether the invention was obvious, and whether the consultant was jointly liable.

1. Construction. The expression “virtual base station” was not limited to equipment built around test apparatus. It meant a false base station introduced into the network. The proximity requirement required sufficient closeness for the virtual base station to transmit with enough real power to be reselected by the target mobile. “Public network” included a private network possessing the relevant technical features. The court applied the approach in Kirin Amgen v TKT [2005] RPC 9.
2. Infringement. The DX918 was a virtual base station and satisfied the claim. Under section 60(1)(b) of the Patents Act 1977, it was enough that the defendants offered a method whose use would obviously infringe. A device with user-settable power and cell-reselection-offset settings offered a range of processes, some of which necessarily infringed.
3. Novelty. The GA900 supplies were confidential or insufficiently proved to disclose the claimed method. The GSM-X demonstrations were subject to an obligation of confidence and showed the result, but not the claimed method. A high-level description such as “IMSI catcher” was insufficient anticipation. The court applied the disclosure and enablement requirements explained in Synthon BV v SmithKline Beecham plc [2005] UKHL 59.
4. Obviousness. Applying the structured approach in Pozzoli v BDMO SA [2007] EWCA Civ 588, the court held that the invention was not obvious from common general knowledge, the GA900, Fox, Nokia or HP8922 equipment. The skilled team would not necessarily appreciate that GSM could be broken into, and the use of an out-of-area LAC to provoke an immediate location update was not obvious.
5. Personal liability and order. Mr Timson shared a common design with the CellXion companies, intended and procured the infringing sales, and was jointly liable. The patent was valid and infringed by the DX918.