Vringo Infrastructure Inc v ZTE (UK) Ltd

For patent validity, a claim lacks novelty only where the prior art both discloses and enables the invention. The disclosure must contain clear and unmistakable directions falling within the claim. In assessing obviousness, the court should identify the skilled person, common general knowledge, the inventive concept and the differences from the prior art, then decide whether those differences required invention. The assessment remains fact-sensitive and must be made without hindsight. A protocol feature defined within a technical standard may have concrete technical character where it determines how a telecommunications system operates. A solution is not obvious merely because its benefits appear common sense after the invention has been identified.

The claimant owned EP (UK) 1 212 919, relating to relocation of a protocol termination point in a communication system. The patent was declared essential to several 3GPP standards. The defendant challenged validity on novelty and obviousness grounds, relying on three standards-related documents, and disputed infringement.

The claimant amended claim 1 by incorporating claim 6 as granted. The central issues were the construction of the requirement that a protocol initialisation unit be defined in one protocol and transparent to another, whether the prior art disclosed that combination or rendered it obvious, and whether the defendant’s UMTS and LTE products infringed.

1. Construction. Feature (b) concerned the definition of the protocol initialisation unit within the first protocol, potentially within a technical standard. It was not limited to the computer’s later act of creating the unit. The skilled person was concerned with creating protocol definitions and standards, and the invention had concrete technical character because the protocol definitions determined system operation and provided technical benefits ([84]–[92]).
2. Novelty. Applying Synthon [2006] RPC 10, the prior art had to disclose and enable the invention, with clear and unmistakable directions to do something within the claim. Documents 359 and A61 referred to network transparency, meaning that information passed through the core network without being acted upon. They did not disclose protocol transparency or the claimed protocol initialisation unit. The novelty challenge therefore failed ([93]–[104]).
3. Obviousness. The court applied the structured approach in Pozzoli v BDMO [2007] EWCA Civ 588, [2007] FSR 37, and considered the fact-sensitive approach explained in Conor v Angiotech [2008] UKHL 49, [2008] RPC 28, including the factors identified in Generics v Lundbeck [2007] RPC 32. The ultimate question was one of fact, as emphasised in Medimmune v Novartis [2012] EWCA Civ 1234 ([105]–[108]).
4. Starting from A61, the skilled person would assume that the information would be defined in RANAP. The layer-stack analogy and GSM external handover did not provide an adequate reason to adopt protocol transparency in this different context. The GSM example concerned a different message flow and an already existing message. It did not suggest defining a new protocol-transparent message in RRC. Nor did the uncertain quantity of RRC information make the claimed solution obvious. The obviousness case was tainted by hindsight ([109]–[147]).
5. Infringement and order. The defendant’s UMTS controllers and LTE products operated in accordance with the claimed protocol arrangements. They infringed the patent, including infringement under section 60(2) of the Patents Act 1977. The patent was valid as amended and infringed by the defendant ([148]–[157]).