Ipcom GmbH & Co KG v HTC Europe Co Ltd & Ors

A patent claim requiring access-authorisation data to be transmitted as a bit pattern does not require one pattern containing both threshold and class information. Separate patterns suffice if each is a predetermined-length sequence whose bit positions carry significance. An access class bit denotes a bit’s worth of logical control information and may be encoded in more than one physical bit. An amendment based on a preferred embodiment does not add matter where omitted features are unnecessary and the amendment gives the skilled person no new information. The discretion to allow amendment of a UK patent is constrained by the Patents Act 1977, section 75(5), and relevant EPC principles.

IPCom appealed from Birss J’s decision that the patent was valid in amended form but not infringed by HTC’s mobile phones: [2015] EWHC 1034 (Pat). The appeal concerned the construction of bit pattern and access class bit, and whether the UMTS system transmitted the relevant information in the required form. HTC cross-appealed on construction, added matter and the exercise of the discretion to allow amendment. The central questions were whether separate bit patterns and logically encoded access-class information fell within the amended claim, and whether the amendments were permissible.

The Court of Appeal allowed IPCom’s appeal and dismissed HTC’s cross-appeals.

1. Bit pattern. A bit pattern is a sequence of more than one bit of predetermined length in which significance is carried by the position of the bits. Information identifying the nature or location of the pattern does not prevent it being a bit pattern. The claim did not require the access-threshold and access-class information to be transmitted in one combined pattern. Each could be transmitted in a separate bit pattern, provided each pattern satisfied the definition. That construction respected the language, transmission-efficiency purpose and the equivalents principle in Article 2 of the Protocol on the Interpretation of Article 69 of the European Patent Convention.
2. Infringement. The unchallenged evidence of HTC’s expert established that the relevant values were transmitted as bit patterns within SIB 5 and SIB 7. There was no tenable reason to reject that evidence. Infringement on this integer was therefore established. The court reached that conclusion without reliance on the German decisions, although it preferred the reasoning of the Oberlandesgericht München.
3. Access class bit. The phrase referred to a conceptual or logical bit’s worth of information. It did not require a single physical binary digit. The UMTS three-bit encoding could therefore satisfy the claim.
4. Added matter. Applying the approach in Bonzel v Intervention Ltd and the subsequent authorities, the amendments did not disclose new information. The skilled person would understand that a single pattern and a single physical bit were not necessary features of the second embodiment, and that the amended claim covered only that embodiment and immaterial variants.
5. Discretion to amend. Section 75(5) of the Patents Act 1977 required regard to relevant EPC principles and limited the former wide-ranging discretion. A formally allowable, valid amendment was not to be refused merely because its scope might differ from the claim approved in the EPO. IPCom’s motive in seeking the amendment was irrelevant. The judge had not erred in principle.
6. The court also approved the judge’s refusal to rely on detailed EPO prosecution history, consistent with the caution expressed in the decision reported at [2015] EWCA Civ 555.

1. Court of Appeal (Civil Division): IPCom’s appeal allowed and HTC’s cross-appeals dismissed.
2. High Court of Justice, Chancery Division, Patents Court: Birss J held that the patent was valid in amended form but not infringed by HTC’s mobile phones: [2015] EWHC 1034 (Pat).