Samsung Electronics Co Ltd v Apple Retail UK Ltd & Anor (on 404 patent)

Priority is assessed by asking what invention the priority document discloses directly and unambiguously. Where the document presents code allocation and I/Q channel allocation as a combined scheme for achieving a technical result, an individual feature cannot be extracted merely because the skilled person could later optimise it independently.

For obviousness, the inventive concept must reflect the claim as a whole. The court must not define it by reference to a narrower subgroup possessing a particular advantage. A claim to a class of configurations may lack an inventive step where the claimed configurations do not share the technical effect relied upon to justify the invention.

Samsung alleged that Apple’s HSUPA-enabled devices infringed European Patent UK No 1,714,404, concerning allocation of OVSF codes and I/Q channels in an enhanced uplink system. Apple denied infringement and counterclaimed for revocation.

The principal issues were construction, entitlement to priority from a Korean priority application filed on 17 June 2004, infringement, obviousness over an Ericsson proposal, and an alternative Agrevo obviousness case. Samsung proposed amendments to claim 1 and related claims. The central questions were whether the amended claims were directly and unambiguously disclosed in the priority document and whether they involved an inventive step.

1. Priority. The proposed amended claims were not entitled to the fourth priority date. The priority document disclosed schemes allocating both OVSF codes and I/Q channels to minimise the increase in PAPR. It did not disclose a method allocating merely the I/Q channels independently of the OVSF codes. The skilled person’s ability to carry out further experimentation or optimisation did not alter the content of the disclosure.
2. Infringement and consequences. The amended claims read directly onto the UMTS standard, and the evidence established infringement by the accused devices. However, Samsung accepted that intervening prior art rendered the patent invalid for lack of novelty if priority was lost. The relevant claims were therefore invalid.
3. Obviousness. The inventive concept was the combination actually claimed, including the limitation to a maximum of one legacy data channel, the reversal of the first two enhanced data channels according to whether HSDPA was set, and the allocation of the enhanced control channel to I. The court rejected an attempt to attribute to the claims a broader advantage of balancing all channels, because the claims covered embodiments lacking that advantage.
4. Starting from Ericsson, the skilled team would consider the limited alternative allocation possibilities and would inevitably arrive at the claimed combination. It was no answer that the claimed arrangement might initially be tried and then replaced, particularly since neither side contended that it produced an optimum result.
5. Agrevo. The claim covered a class of configurations without a common technical benefit. The claim was consequently obvious on the alternative basis that the asserted technical effect could not fairly be assumed across the claim as a whole.
6. The patent as proposed to be amended was invalid for loss of priority and obviousness. Had it survived those attacks, it would have been infringed.