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

An amended patent must not present the skilled person with technical information which is not directly and unambiguously disclosed, expressly or implicitly, by the application as filed. A feature taken from an embodiment may be omitted only where the skilled person would recognise that it is non-essential, not indispensable to the invention’s function, and removable without compensating modification.

Obviousness requires the structured assessment to be undertaken without hindsight. An invention may lie in achieving known functionality by a technically useful and less resource-intensive arrangement. Patent claims are construed in their full specification context, not by isolating words or confining them to preferred embodiments.

Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg concerned a European patent for controlling mobile-phone access to a shared random access channel in a UMTS network. The claimed system allowed mobiles in authorised user classes to gain access independently of a lottery, while other mobiles could obtain access by succeeding in the lottery.

Floyd J held the patent partially valid after amendment, found that Nokia’s A2 device infringed, and found that certain other devices did not infringe: [2011] EWHC 1470 (Pat). Nokia appealed the findings on added matter, obviousness over common general knowledge, GSM/GPRS and Farsta, insufficiency, and infringement by the A2.

The central issues were whether the amended claim was directly and unambiguously disclosed by the original application, whether the two routes of access were obvious, and whether the A2’s delayed-access calculation met the claim.

1. Appeal dismissed. Kitchin LJ, with whom Etherton and Laws LJJ agreed, upheld the judge’s conclusions on validity and infringement.

2. The court applied EPC, article 123(2). The decisive question was whether the amendment conveyed new information about the invention which the skilled person could not derive directly and unambiguously from the application. The original application disclosed the 13-bit embodiment as capable of operating independently of the 10-bit embodiment. It also disclosed the essential two routes of access: class-based access independent of the threshold evaluation, and lottery-based access for other mobiles.

3. The omitted service bits and the omitted enquiry whether a mobile belonged to a class did not add matter. The application showed that information components could be omitted. The omitted features were neither explained as essential nor indispensable to the claimed two-route functionality, and their removal required no compensating alteration. Nor did the claim prescribe a particular order of processing.

4. The patent was not obvious. The known GSM/GPRS system used class barring followed by a lottery. The claimed arrangement instead provided dynamic horizontal control of privileged groups and vertical control of other users through the threshold. IS-95 provided broadly similar functionality but with greater signalling complexity. The court accepted that achieving the same functionality in a different, less bandwidth-intensive way could involve an inventive step. It also rejected a hindsight-based attack built from common general knowledge and held that Farsta taught class barring in extreme overload, not a lottery bypass.

5. On construction, the claim required that some classes be permitted to access the channel independently of the lottery. It did not encompass GSM/GPRS class barring. The reference to a UMTS network meant the draft UMTS standard at the filing date; a workable system could then be built, so the claim was sufficient.

6. The A2 infringed. Its formula made an indirect comparison between the random number and threshold. The result determined whether access was immediate or delayed, which was a determination of access permission within the natural meaning of the claim.

• Court of Appeal (Civil Division) Dismissed Nokia’s appeal and affirmed the judgment below: [2012] EWCA Civ 567.
• High Court of Justice, Chancery Division, Patents Court Floyd J held the patent partially valid following amendment, found infringement by the A2 device, and rejected infringement by certain other devices: [2011] EWHC 1470 (Pat).