Unwired Planet International Ltd v Huawei Technologies Co, Ltd & Ors

For patent infringement, “conversion” between measurement systems may require both a compatible reporting format and direct comparability on a common scale. Digital measurements may satisfy an “exceeds” threshold where the standard uses an equivalent greater-than-or-equal test. A claim requiring transmission of at least one qualifying value need not require every qualifying value to be sent where reporting capacity is limited. A claim is not insufficient merely because different implementations produce different marginal outcomes. It is sufficient if the skilled person can perform the claimed conversion and comparison without undue effort. Obviousness must be assessed against the claim as construed.

The claimant alleged that European patent EP (UK) 1 230 818, concerning the conveyance of measurement information between different radio access technologies, was essential to and infringed by specified versions of the GSM standard. The defendants challenged the construction of “conversion”, the threshold and transmission requirements, sufficiency, obviousness and added matter.

The court considered the April 2006 and September 2011 versions of 3GPP TS 45.008, together with common general knowledge and T Doc 1145/99.

1. “Conversion” required both rendering measurements into the appropriate reporting format of the second communication system and making them directly comparable with measurements in that system, enabling values from both systems to be ranked on a common scale.

2. For discrete values, “exceeds” could cover a greater-than-or-equal test where the tests were technically equivalent. The transmission requirement did not require every qualifying value to be sent where reporting capacity was limited.

3. The April 2006 standard encoded UMTS measurements into the same six-bit numerical format used for GSM reporting. Its priority-level 4 process directly compared encoded values and selected cells most likely to be useful in handover. That was conversion within the claims. Enhanced reporting infringed and the patent was essential to 3GPP TS 45.008 V5.22.0.

4. The September 2011 standard also infringed. Its normal and enhanced reporting schemes used thresholds and encoded RSCP, Ec/No, RSRP and RSRQ values in a manner satisfying the conversion requirement. The patent was essential to 3GPP TS 45.008 V8.12.0.

5. The claims were not insufficient. Marginal uncertainty between statistical models did not amount to true ambiguity. The skilled person could implement the conversion and comparison without undue effort.

6. The claims were not obvious over common general knowledge or T Doc 1145/99. Although encoding, thresholds and use of the SACCH were individually obvious possibilities, their claimed combination was not.

7. The added-matter objection failed. Deletion of “said” from claim 9 disclosed no new information to the skilled person.

8. Patent EP (UK) 1 230 818 was valid, infringed by the defendants and essential to the relevant standards.