IPCOM GmbH & Co Kg v Vodafone Group Plc & ors

A patent claim is construed purposively through the eyes of the skilled person. A variant outside its normal meaning may nevertheless infringe under the doctrine of equivalents.

For Crown use under section 55(1) of the Patents Act 1977, written authorisation must expressly authorise use of the patent or authorise an act which necessarily involves such use. General authority to perform an act which could be performed without infringement is insufficient.

Whether use is de minimis depends on its context and character, not merely its proportion of total operations. Deliberate emergency testing and discrete operation of individual network units may infringe despite their small scale. Patent infringement is generally a strict liability tort and does not depend on knowledge or profit.

IPCom owned a patent concerning control of access to a mobile telecommunications channel. It alleged that Vodafone infringed conditionally amended claims when operating parts of its LTE network. Vodafone disputed infringement and alleged invalidity.

The Patents Court, in [2020] EWHC 132 (Pat), held that the conditionally amended claims were valid and that some Vodafone operations infringed. It found non-infringement in other instances and held that emergency-response operations and associated testing were protected as Crown use.

Both parties appealed. The issues included claim construction, infringement by equivalents, extension of protection, obviousness, de minimis use, the configuration required by a product claim and the meaning of written Crown-use authorisation under section 55(1) of the Patents Act 1977.

1. Disposition. Vodafone’s appeal was dismissed. IPCom’s appeal was dismissed concerning the requirement that a base station be “set up to send”, but allowed concerning Crown use. Asplin LJ agreed. Lewison LJ expressed reservations about the construction of “access right” but did not dissent.

2. The claims were construed purposively from the skilled person’s perspective. Only privileged user classes needed transmitted access-class bits. An “access right”, read in the context of the binary comparison and the specification, encompassed granting or refusing access. The LTE arrangement also preserved mutually exclusive privileged and normally privileged categories despite special users additionally belonging to an ordinary access class.

3. The LTE implementation used one check rather than the two checks required by the claim’s normal meaning. It nevertheless infringed by equivalence. It achieved substantially the same result in substantially the same way, that conclusion was obvious to the skilled person, and strict compliance with two checks was not essential. Amendment to cure added matter did not confine the scope of protection to literal performance of two checks.

4. A base station was not “set up to send” barring parameters while its settings still had to be changed. Mere capability of operating differently after configuration was insufficient. The product claim was therefore not infringed during normal operation.

5. Section 55(1) of the Patents Act 1977 requires written authorisation directed to use of a patented invention. It is sufficient if the authorisation expressly permits use of the patent or authorises an act which necessarily infringes it. Authority to perform an act which can be performed without infringement is insufficient. This construction accords with agency principles, legislative history, the protection of private intellectual property and article 31 of TRIPs. Vodafone could comply with the emergency scheme without infringing, so it had no Crown-use defence.

6. The Annex C, E and F operations were not de minimis. Emergency testing had to be assessed by its purpose and continuing availability, while the limited historical and anomalous testing operations were discrete uses of independently configured base stations. The small percentage of total network time or equipment was not determinative. Knowledge, inadvertence and absence of profit were irrelevant to infringement.

7. The conditional amendments did not extend protection. Vodafone’s hypothetical example did not identify a feasible method newly brought within the amended claim. The obviousness attack also failed because the proposed combination of IS-95 and GSM/GPRS did not produce the lottery-bypass feature of the claimed invention. The judge’s declaration of essentiality was left unchanged.

1. Court of Appeal (Civil Division): In [2021] EWCA Civ 205, Vodafone’s appeal was dismissed. IPCom’s appeal was allowed on Crown use but dismissed on whether the base stations were “set up to send”.
2. Patents Court: In [2020] EWHC 132 (Pat), Mr Recorder Douglas Campbell QC held the unconditional amendments impermissible, upheld the conditionally amended claims, found infringement in part and accepted a Crown-use defence for certain operations.