IPCOM GmbH & Co Kg v HTC Europe Co Ltd & Ors

A patent claim must be construed purposively, but deliberate claim limitations remain legally significant. A “bit pattern” means a predetermined-length sequence of bits whose position and value carry significance; it is not simply any stream of digital data. A claim requiring an “access class bit” may encompass a conceptual bit’s worth of information encoded with dependent data, rather than requiring one physically separate bit. Added matter concerns disclosure, not merely the wider coverage produced by claim language. A claim is not unclear merely because its construction is technically difficult. On the evidence, UMTS devices did not transmit the relevant access-authorisation data as a bit pattern and therefore did not infringe, although their use of a conceptual access-class bit satisfied the claim.

IPCom sought amendment of European Patent (UK) 1 841 268, concerning access control to a random access channel in a UMTS mobile network. HTC opposed the amendment on added-matter, clarity and discretionary grounds, and sought declarations concerning infringement by several classes of mobile phone.

The principal issues were the construction of “transmitted as a bit pattern” and “the access class bit”, whether the amended claim disclosed added matter or lacked clarity, and whether UMTS phones infringed. The court also considered declarations of non-infringement and essentiality.

1. Construction. The claim was construed purposively in accordance with Kirin-Amgen Inc v Hoechst Marion Roussel [2004] UKHL 46 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062. The express reference to transmission as a bit pattern was a substantive claim limitation, not merely background context.
2. In the technical context, a bit pattern is a format consisting of a sequence of bits of predetermined length, with significance carried by the position and value of the bits. The claim did not require strict contiguity. It could cover two distinct bit patterns carrying the two relevant items of information, provided both were required at the same time.
3. “The access class bit” referred to a conceptual binary decision. A system could satisfy that limitation by encoding one bit’s worth of access information with other dependent data, even though the physical transmission used three bits. UMTS therefore satisfied this aspect of the claim.
4. Nevertheless, UMTS did not infringe. Transmission on the BCCH, or the repeated stream of bits on that channel, was not itself transmission of the access-authorisation data as a bit pattern. The evidence did not establish that SIB 5 or SIB 7 constituted the required bit pattern.
5. The added-matter objection failed. Following AP Racing v Alcon [2014] EWCA Civ 40, the question concerned disclosure rather than coverage. Although the amended claim covered more arrangements than the narrow embodiment, it disclosed nothing beyond that embodiment when read with the specification. The clarity objection and discretionary objection under the Patents Act 1977 also failed.
6. Classes B to G did not infringe. Declarations of non-infringement were granted. Since the class A phones did not infringe, the patent was not essential to the UMTS standard. The amendment was allowed and the patent was held valid.