IPcom GmbH & Co Kg v Vodafone Group Plc & Ors

Infringement and essentiality of a telecommunications patent must be assessed claim by claim and by reference to the patent’s proper construction. Added matter and infringement by equivalence involve distinct legal tests. A strict novelty-type disclosure test applies to added matter; prosecution amendments do not prevent an equivalent from falling within the amended claim where the ordinary Actavis questions are satisfied.

For Crown use, a written authorisation to perform an identified act is sufficient even if it does not identify the patent and infringement is not necessary to perform the authorised act. The statutory examples of services of the Crown are non-exhaustive. Rare use of patented emergency-access technology is not necessarily de minimis, particularly where maintaining readiness is commercially significant.

IPcom GmbH & Co Kg alleged that Vodafone’s 4G network systems infringed EP(UK) 2,579,666. The patent concerned access control for a telecommunications channel using privileged-user bypass access and a random threshold lottery.

The court considered construction of unconditional and conditional amended claims, added matter, extension of protection, obviousness over GSM/GPRS and IS-95, essentiality to an LTE standard, direct and indirect infringement, Crown use, de minimis, and declarations of non-infringement. The central issues included whether the amended claims were allowable, whether the LTE access-control option was essential, and whether Vodafone’s emergency-access and network activities were protected by statutory defences.

1. Construction and validity. “Access right” included an allocation which resulted in either access or denial following the lottery. Claim 1 identified three routes through the claim, and privileged and normally privileged users were mutually exclusive classes for the claim’s operation. The claims required access-class bits for privileged classes, not every user class. “Set up to send” meant appropriately programmed, adapted or configured to send the relevant signals.
2. The unconditional claim 1 disclosed a single combined check, whereas the application disclosed only a two-stage check. It therefore contained added matter and was invalid, together with claims dependent on it. The conditional claim 1 was allowable. The remaining added-matter attacks and the objection based on extension of protection failed.
3. Obviousness. Vodafone’s combination of GSM/GPRS and IS-95 required a succession of choices. Even if earlier steps were obvious, the later sequence was unrealistic and hindsight-driven. Neither prior-art system disclosed or suggested the claimed lottery-bypass mechanism. The obviousness attack failed.
4. Essentiality and infringement. Where the LTE access-control option in 3GPP TS 36.331 was implemented, conditional claim 1 and unconditional claim 13 were essential. Conditional claim 1 was not infringed on its ordinary construction because the standard used one check, but it was infringed under the doctrine of equivalents. The amended claim did not make strict compliance with two checks essential. Claims concerning systems requiring only power to operate the access-control function could be infringed; systems requiring additional programming were not “set up to send”.
5. Crown use and de minimis. The statutory examples in section 56(2) were non-exhaustive. A written authorisation identifying the relevant act established Crown use even without identifying the patent or proving that infringement was necessary. The MTPAS emergency-access scheme, including reasonable testing and keeping equipment ready to respond, fell within the defence. The rare nature of the use did not make the relevant acts de minimis.
6. Indirect infringement and declarations. The supply of SIM cards did not satisfy the knowledge and intention requirements of section 60(2). Vodafone’s applications for declarations that the Alpha, Beta and Gamma base stations did not infringe succeeded, subject to limitation to LTE/4G operation. Certain Group 1 methods infringed, subject to the Crown-use defence for MTPAS; Group 2 apparatus did not infringe.

The court recorded that an earlier application to adjourn the expedited trial and amend the case had been refused: [2019] EWHC 3323 (Pat). The present judgment was a first-instance determination of the infringement trial.