Nokia GmbH v Ipcom GmbH & Co KG

In construing a patent claim, the court determines what the skilled person would understand the patentee to mean from the claim language read in context. A forward handover requires the mobile station to identify the target base station; a base-station-initiated handover concerns the instruction to attempt handover and does not require unquestioning compliance. Handover is complete only when the active end-to-end connection has been re-established. Novelty requires a clear and unambiguous disclosure of the claimed subject matter. Obviousness is assessed on the facts and in all the circumstances, normally using the structured approach. Amendments are impermissible where they add matter by extracting technically or functionally related features from a specific embodiment. The court may grant a declaration of non-essentiality where it serves a useful commercial purpose.

Nokia GmbH sought revocation of European Patent (UK) No 1 018 849, owned by Ipcom GmbH & Co KG. The patent concerned handover of a mobile connection between base stations, including retention of connection data and resources until successful handover and restoration of the original connection if handover failed.

The granted claims were not defended. The defendant advanced a main amendment application and two auxiliary applications. The issues included construction, novelty, obviousness, added matter and whether the claims were essential to the UMTS, GSM and LTE standards.

1. Validity. The claims as granted were invalid. The claims in the main amendment application lacked novelty over, or were obvious in light of, the DECT standard. They were also obvious over Ojaniemi and PACS. The court applied the clear and unambiguous disclosure test for novelty and the structured, fact-sensitive approach to obviousness.
2. Construction. “Base station” included the relevant transceiver and associated network links, so the claims were not confined to handovers between separate controllers. “Connection” meant the active end-to-end connection. “Forward handover” required the mobile station itself to identify the target base station. A base-station-initiated handover was initiated by a request to attempt handover; the patent did not require absolute compulsion. Handover was complete only when the active end-to-end connection had been re-established.
3. Restoration. Claim 3 required that, if handover failed, the mobile station could return to the first base station using the retained data and resources. It imposed no additional requirement that restoration be possible at every moment before the resources were released, nor any causal requirement that return occur only because handover had failed.
4. Added matter. The first auxiliary amendments impermissibly extracted features from the Figure 4 embodiment while omitting technically and functionally related features. The second auxiliary amendments overcame the intermediate-generalisation objections, but the specification required deletion of identified passages before allowance. The main application was refused because the amended claims were invalid.
5. Essentiality and orders. The court exercised its discretion to grant declarations where they would assist commercial and technical planning. None of the claims in any amendment application was essential to UMTS, GSM or LTE. The second auxiliary amendment application was allowed subject to amendment of the specification, and declarations of non-essentiality were granted.

First-instance judgment. No prior appellate decision is stated in the judgment.