Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors

Obviousness is assessed by asking whether the claimed invention would have been obvious to the objectively defined skilled person or team, having regard to the state of the art and all relevant circumstances. The existence of several possible implementation routes does not itself establish obviousness; the court must evaluate the routes and the surrounding technical context. A patent’s level of detail does not alter the skilled person’s level of skill for inventive-step purposes. For added matter, the question is whether the amended subject matter can be derived clearly and unambiguously from the application as filed, read with common general knowledge. A claim amendment may refer to a network-side consequence without requiring the claimed mobile terminal itself to perform that consequence, provided the wording clearly limits the terminal’s report or capability.

Unwired Planet alleged that Huawei and Samsung infringed two patents concerning self-configuring and optimisation of neighbour cells in wireless telecommunications networks. The patents had been declared essential to LTE, and infringement was not disputed if the relevant claims were valid.

The defendants challenged validity on obviousness over a Qualcomm standardisation proposal and common general knowledge. They also raised sufficiency, added matter and clarity objections to proposed amendments. The central issues were whether the claims were obvious over Qualcomm, whether the amended claims introduced matter not disclosed in the application as filed, and whether conditional amendments were clear.

1. Obviousness. The court applied the structured approach to obviousness and evaluated the relevant circumstances, including the skilled team’s motivation, possible avenues of research, technical effort and expectation of success. The Qualcomm document was a good starting point. It disclosed using a phone to obtain a unique identifier for a neighbouring cell and sending it to the serving eNode B, which could obtain the neighbour’s IP address and establish a transport connection. It did not disclose receiving a non-unique identifier, deciding from that identifier that a unique identifier was required, or instructing the phone to obtain it.
2. The skilled team would nevertheless regard it as obvious to use normal detected-set reporting based on a non-unique PCI, followed by an instruction from the serving eNode B to obtain the unique identifier when appropriate. The alternative of obtaining unique identifiers for all detected cells was also obvious, though less attractive because of the additional resource burden. The claimed approach therefore involved no inventive step. Common general knowledge alone did not make the invention obvious because it would not lead the skilled team to use the unique identifier in this way.
3. Sufficiency. The objection failed. The defendants identified no specific implementation problem which could not be solved by the skilled team. The amount of detail in the specification could not raise the level of skill assumed for the obviousness inquiry.
4. Added matter. Claims 11 and 17 of patent 514 did not add matter. The application as filed, read in context and with knowledge of LTE, disclosed establishing a transport connection after receiving the unique identifier and using a lookup map to obtain the relevant network address.
5. Clarity and disposition. Amendments to claims 1 of patents 287 and 514 were clear because the network-side consequences described the purpose and suitability of the mobile terminal’s report. The proposed amendment to claim 6 of patent 514 was unclear because it was uncertain whether the phone had to determine, or be capable of determining, whether the neighbouring cell was on the serving cell’s list. The patents were invalid for obviousness and were to be revoked.