HTC Corporation v Gemalto SA

Patent claims are construed through the understanding of the skilled person, reading the specification as a whole. Where a patent uses a technical term in several possible senses, the specification may confine it to a narrower sense.

For priority, the earlier application must directly and unambiguously disclose the claimed subject matter to the skilled person, using common general knowledge. That knowledge informs what the document teaches, but cannot convert an obvious development into a disclosure. A disclosed technique may nevertheless support a claim expressed at a justified level of generality where the skilled person would understand it as an example of the general teaching.

Gemalto appealed from Birss J’s decision in a patent action, [2013] EWHC 1876 (Pat). The dispute concerned EP (UK) 0 932 865, relating to the use of a high-level programming language with a microcontroller.

The judge held that claim 3, and certain claims dependent on it, were valid but not infringed by HTC smartphones and a tablet. Gemalto challenged the construction of claim 1, on which claim 3 depended. HTC contended by respondent’s notice for an even narrower construction and also appealed the finding that claim 3 retained its priority date and was valid.

The central questions were the meaning of “microcontroller” in claim 1 and whether the priority document disclosed the claimed post-processing converter at the required level of generality.

Disposition

1. Gemalto’s appeal against the finding of non-infringement was dismissed. HTC’s appeal against the validity of claim 3 was also dismissed.

2. The objective of construction was to identify what the skilled person would understand the patentee to mean by the language of the claim. Although “microcontroller” had several uses in the art, the specification governed its meaning in this patent.

3. The Court accepted HTC’s narrower construction. A microcontroller within claim 1 was a single chip containing a CPU and its memory, with the other functional elements likely also on-chip. It did not encompass a functional unit with access to off-chip memory. The specification contrasted the constrained, on-chip memory of a microcontroller with the external memory available to a microprocessor. Its security discussion reinforced that reading.

4. That construction was narrower than Birss J’s, who had allowed some off-chip memory. It was common ground that, on HTC’s construction, none of the HTC devices infringed claim 3. The non-infringement conclusion therefore stood.

5. On priority, Patents Act 1977 principles required the skilled person to derive the claimed subject matter directly and unambiguously from the priority document. Common general knowledge formed part of the skilled reader’s background, but could not be used to add an obvious development to the document’s disclosure.

6. The priority document taught namespace mapping as a means of compacting an application for time and space efficiency. Read with the skilled team’s background knowledge, it disclosed namespace mapping as a suitable example of the general teaching of compaction. It therefore supported the claim to a converter producing a minimised form, notwithstanding that the claim encompassed compaction methods other than namespace mapping. Claim 3 retained priority and was not invalid on that ground.

1. Court of Appeal (Civil Division): Gemalto’s appeal against non-infringement and HTC’s appeal on priority and validity were dismissed: [2014] EWCA Civ 1335.

2. High Court, Chancery Division, Patents Court (Birss J): Claim 3 of EP (UK) 0 932 865, and certain dependent claims, were held valid but not infringed. The other patent in suit was held wholly invalid: [2013] EWHC 1876 (Pat).