Actavis UK Ltd v Novartis AG

A patent claim is construed by asking what the skilled person would understand the patentee to mean, without importing limitations that the claim does not contain. A virtual base station is not confined to equipment built around test apparatus. Spatial proximity requires sufficient closeness to transmit with enough real power for reselection by the target mobile. Under section 60(1)(b) of the Patents Act 1977, offering a process is sufficient where its use will obviously infringe. Novelty requires disclosure, enablement and public availability. Obviousness is assessed using the structured approach in Pozzoli v BDMO SA, without hindsight.

The supplied judgment concerns a patent for identifying mobile telephone users or intercepting calls in a GSM network. MMI Research Limited, co-owner of the patent with Rohde & Schwarz, alleged that CellXion’s DX918/GX918 product infringed claim 1. The defendants challenged construction, alleged lack of novelty and obviousness, and disputed the personal liability of a consultant involved in designing and marketing the product.

The central issues were the meaning of virtual base station, spatial proximity, real power and public network; whether prior sales, demonstrations and publications disclosed or made obvious the claimed method; and whether the consultant was jointly liable.

1. Construction. A virtual base station is a false base station introduced into the network. The claim is not limited to a base station built around test apparatus, and the concluding “thereby” wording does not exclude further steps to obtain the IMSI or IMEI. Spatial proximity means sufficient closeness for the virtual base station to transmit with enough real power to be reselected by the target mobile. A private network possessing the relevant technical features may fall within the reference to a public network.
2. Infringement. The DX918 was a virtual base station and satisfied the claim. Section 60(1)(b) of the Patents Act 1977 is engaged by offering a process where use in the United Kingdom would obviously infringe. It was enough that the equipment would infringe on some occasions, or that its user settings included infringing processes.
3. Novelty. Under section 2(2), prior art must have been made available to the public. The principles of disclosure and enablement in Synthon BV v SmithKline Beecham plc were applied. A sale alone does not establish what information the machine disclosed. The GA900 materials were confidential or insufficiently proved to disclose the claimed method. The GSM-X demonstrations were confidential and did not disclose the claimed method.
4. Obviousness. The structured questions in Pozzoli v BDMO SA were applied, while the statutory question remained whether the invention was obvious and hindsight was excluded. The cited disclosures did not make obvious the claimed combination, particularly the use of an out-of-area LAC to trigger an immediate location update.
5. Liability. Mr Timson shared a common design with the CellXion companies and intended and procured the infringing sales. He was jointly liable. The patent was valid and infringed by the DX918.