Koninklijke Philips N.V. v Asustek Computer Incorporation & Ors

Obviousness must be assessed by asking how the skilled person would proceed from the prior art, without hindsight. The simplicity or generality of the claimed invention does not permit the court to strip away details which would influence the skilled person’s approach to the prior disclosure.

A commercially driven mindset may affect whether the skilled person would contemplate or make a technical change. Once the skilled person would arrive at the claimed invention, however, there is no additional requirement that its commercial exploitation should appear worthwhile.

Patent claims must be construed in the context of the specification as a whole. A technical standard is interpreted as the skilled person would understand it, but its ultimate meaning is for the court.

The claimant owned three patents concerning power control and resource use in mobile telecommunications. The defendants sold mobile telephones compatible with the relevant UMTS and HSPA standards. The Patents Court decided the patents’ validity in three judgments: [2018] EWHC 1224 (Pat), [2018] EWHC 1732 (Pat) and [2018] EWHC 1826 (Pat).

The unsuccessful parties appealed findings on obviousness. The appeal concerning the 511 patent also raised claim construction and infringement. The principal questions were whether the 525 patent was obvious over Shad, whether the 659 patent was obvious over the Nortel documents, and whether the cdma2000 standard rendered the 511 patent obvious on its proper construction.

1. Disposition. All three appeals were dismissed. Floyd LJ gave the judgment, with which Henderson and Patten LJJ agreed.

2. The 525 patent. A trial judge’s evaluative conclusion on obviousness is entitled to great respect where the correct law has been applied. The defendants had to show how the skilled person would proceed from Shad to the claimed invention. The simplicity of the claimed idea did not justify stripping Shad of implementation details or ignoring the path along which its disclosure would lead the skilled person. The judge was entitled to find that the skilled person would investigate and optimise Shad’s mobile-based proposal, rather than think of determining differential gains at the base station. The judge used the alleged implementation difficulties to test whether the proposed route genuinely represented skilled thinking; he did not treat those difficulties as unclaimed features. The finding that the patent was not obvious disclosed no error of principle.

3. The 659 patent. A commercially driven mindset may form part of the skilled person’s attitudes and perceptions and may affect whether that person would make a technical change. It does not create a further commercial-worthwhileness requirement once the skilled person would arrive at the claimed invention. Removing dedicated pilot bits from Nortel’s fractional channel was a technically obvious choice. The skilled person would understand the resulting trade-off between reduced code usage and loss of functionality. The evidence did not establish a sufficiently strong prejudice to prevent the skilled person from contemplating that modest modification. The patent was therefore obvious.

4. The 511 patent—construction. “Data transmit power” was construed using the specification as a whole. The counterintuitive power-control strategy could apply to a single data signal. The claim was not confined to cases where total transmitter power was reduced.

5. The 511 patent—validity. The cdma2000 paragraph permitted data-rate reduction, transmission-power reduction and termination. The skilled person would nevertheless understand power changes to occur at frame boundaries, with clipping in the meantime, rather than as immediate mid-frame alterations inconsistent with maintained power ratios. Although the Court of Appeal differed from the judge on part of the route, the paragraph did not render the patent obvious.

1. Court of Appeal (Civil Division): By [2019] EWCA Civ 2230, unanimously dismissed all three appeals.
2. Patents Court: Arnold J decided the validity and related issues concerning the three patents in [2018] EWHC 1224 (Pat), [2018] EWHC 1732 (Pat) and [2018] EWHC 1826 (Pat). He held two patents valid and one invalid and granted permission to appeal.