Nokia Oyj (Nokia Corporation) v IPCom GmbH & Co Kg

A patent claim concerning access control on a mobile telecommunications random access channel is construed purposively in its technical context. A claim requiring access independent of received threshold bits covers a lottery bypass for specified user classes, although other access hurdles may remain.

Obviousness must be assessed against the skilled person’s actual starting point, including relevant standardised systems and the whole common general knowledge. A conceptual change in the function of prior-art signalling, unsupported by a clear technical motivation, is not obvious merely because its implementation is simple.

For added matter, the application and amended patent must be compared through the eyes of the skilled person. Subject matter must be clearly and unambiguously disclosed, but a feature need not be expressly described as inessential if the skilled person can directly and unambiguously recognise that it is not essential.

Nokia sought revocation of European Patent (UK) No 1 841 268, owned by IPCom, concerning control of access by mobile stations to a random access channel in a UMTS network. IPCom conditionally applied to amend the patent and counterclaimed for infringement by Nokia devices. Nokia also sought declarations of non-infringement for further devices and applied for summary judgment.

The principal issues were construction of claim 1, obviousness over GSM/GPRS, IS-95, Farsta/Thomas and common general knowledge, added matter, insufficiency, infringement and the form of declarations. The court also considered whether the patent could be performed against the background of an incomplete UMTS standard.

1. Construction. Applying the purposive approach stated in Kirin Amgen v TKT [2005] RPC 9 and approved in Virgin v Premium Aircraft [2009] EWCA Civ 1062, feature [G] required the mobile to be capable of determining from access class information that it could access the random access channel without reference to the received access threshold bits. In practical terms, it required a lottery bypass. It did not require access in all circumstances or exclude further non-lottery checks.
2. Obviousness. Applying the structured approach in Pozzoli v BDMO [2007] EWCA Civ 588, the court rejected all four attacks. GSM/GPRS used class barring and a persistence test; changing its absence/presence flag into class-specific instructions to use or ignore the persistence value involved a conceptual change. IS-95 always used a persistence test based on the class-specific value, and separating a guaranteed-pass situation from that value was not shown to have a clear purpose and involved disadvantages. Farsta/Thomas disclosed class exclusion or emergency access in overload situations, not a lottery bypass. Common general knowledge did not make the claimed combination obvious.
3. The court emphasised that obviousness is fact-sensitive and that an invention may lie in achieving known functionality by a different, non-obvious route. Secondary evidence must remain secondary, but may carry greater weight where the attack is based on common general knowledge alone.
4. Added matter. Applying the approach in Bonzel v Intervention (No 3) [1991] RPC 553, the relevant comparison was between the application as filed and the proposed amendment. The application clearly disclosed the combination of access class information with lottery-based access control, including access independent of received threshold bits. The omission of the random-number comparison from the granted claim did add matter, but the proposed amendment restoring it removed the objection. The service bits could be omitted without added matter; the other pleaded objections failed.
5. Insufficiency. The incomplete state of the UMTS standard did not make the patent insufficient. The skilled person would understand that the patent referred to the basic UMTS features known at the application date and could adapt the system as the standard developed. The patent was not analogous to one requiring an unavailable essential ingredient.
6. Infringement and declarations. The A1 and A2 devices fell within claim 1, including because the relevant mapping information permitted access independently of the transmitted persistence value in one class and required threshold-based evaluation in others. The B-G devices did not infringe. A declaration that those devices were non-compliant with UMTS was refused because it would serve no useful purpose and could create further uncertainty. The patent was valid and infringed by A1 and A2; the amendment was allowed, subject to the form of order.

First-instance decision. The judgment itself records earlier proceedings concerning the parent patent, including [2009] EWHC 3482 (Pat) and the appeal decision [2011] EWCA Civ 6; those decisions concerned the parent patent and are excluded from the cited-case analysis as decisions in the same litigation.