HTC Corporation v Gemalto SA

A patent claim must be construed purposively in the context of the specification, while respecting deliberate limitations expressed in the claim. Priority is a distinct, substance-based inquiry: the claimed subject matter must be directly and unambiguously derivable, and enabled, from the priority document. A broad claim may retain priority even though it covers undisclosed alternatives, unless those alternatives owe nothing to the priority disclosure. A claim requiring a process consisting of several steps cannot receive partial priority merely because some steps are separately disclosed. Obviousness remains a fact-sensitive assessment of the statutory question. A computer-implemented invention is not excluded as a computer program as such where it solves a concrete technical problem and gives the computer a new technical capability.

HTC sought revocation of two Gemalto patents concerning programming smart cards and communications between smart cards and readers. Gemalto counterclaimed for infringement by HTC smartphones. The court determined validity and infringement issues concerning the 865 patent, which related to running high-level-language applications on a microcontroller, and the 9062 patent, which related to a reader managing exchanges with a smart card while the card managed a transaction.

The issues included construction, priority, novelty, obviousness, excluded subject matter and infringement. The court also considered whether GSM 11.PQ had been made available to the public and whether HTC’s devices supplied means for putting method claims into effect under section 60(2) of the Patents Act 1977.

1. 865 patent—construction and priority. “Microcontroller” referred in the claims to a chip normally containing a CPU, memory and other functional elements on the same chip. A chip with only a CPU, registers and cache, but no other on-chip memory, was not a microcontroller. “Resource constraints” was not limited to memory constraints. “Loaded in memory” referred to placing code in the microcontroller’s memory for retention and later execution, not copying blocks into cache during execution. A converter was simply the thing which post-processed compiled code into a minimised form suitable for interpretation.
2. The claims were construed purposively in context, applying the approach summarised in Samsung v Apple [2013] EWHC 467 (Pat). Claim 8 required a process including all five specified steps, although the converter had to perform at least one of them.
3. Priority entitlement depended on succession in title at the relevant filing date. The entire beneficial interest was sufficient. The 865 patent’s claims directed to Java alone were entitled to priority, but claims extending to high-level languages generally were not. The converter disclosure was enabling and sufficiently general. Claim 8 was not entitled to multiple priorities because its five steps were not clearly defined alternative subject matters.
4. 865 patent—validity and infringement. Claims losing priority were obvious over Cyberflex. Claims 1 and 15 lacked novelty over the Caron article. Claim 3 retained priority and was not obvious over the cited prior art. The claims were not excluded computer programs as such because they solved a concrete technical problem and gave microcontrollers a new technical capability. The HTC devices did not contain microcontrollers as construed and therefore did not infringe.
5. 9062 patent. Claim 1 covered a reader capable of generating alternate and repetitive requests and reports, even if it could operate in other modes. GSM 11.PQ had been made available to the public, disclosed the claimed arrangement and anticipated the claim. The claim was also obvious over GSM 11.PQ on the alternative construction advanced by Gemalto. Diehl did not make the claim obvious.
6. The formal conclusions were that the 865 patent was not infringed; claims 1, 8, 15 and 18 lacked priority; claims losing priority were obvious over Cyberflex; claims 1 and 15 lacked novelty over Caron; claim 3 was valid; and the 9062 patent was invalid for lack of novelty over GSM 11.PQ.