IPCOM GmbH & Co Kg v Vodafone Group Plc & ors

The Court of Appeal considered validity and infringement of conditionally amended claims of European Patent (UK) No. 2 579 666 concerning access control to a random access channel in mobile telecommunications. Key issues were claim construction (in particular the meaning of the requirement that "each access class bit represents one user class", the distinction between "privileged" and "normally privileged" user classes, the meaning of "access right", and the phrase "set up to send" in a system claim); whether the conditional amendments extended protection contrary to section 76(3)(b) of the Patents Act 1977; whether the claims were essential to the LTE standard (3GPP TS 36.331) and infringed by Vodafone's network (including by operation in certain special modes); Crown use under section 55(1) of the Patents Act 1977 in relation to MTPAS; de minimis; and obviousness.

The court upheld the judge's constructions in most respects: the claim does not require every user class to have an access class bit transmitted (only those classes that make use of such bits in the claimed method); "privileged" and "normally privileged" are mutually exclusive categories in the claim; "allocates an access right" must be understood as granting or refusing access (so the claim contemplates both outcomes); and "set up to send" requires the base station to be so configured or programmed that it will send the barring parameters in ordinary operation without further adaptation. The conditional amendments did not extend protection impermissibly. The claims were essential to the optional ACB method in TS 36.331 and infringed LTE operation save that the judge’s Crown use finding in respect of Vodafone's MTPAS responses was wrong because the correct interpretation of section 55(1) requires either express written authorisation to use the specific patent or an authorisation to do a particular act which necessarily infringes that patent. The court dismissed Vodafone’s de minimis and obviousness attacks.

Background and parties. IPCom, proprietor of European Patent (UK) No. 2 579 666 (divisional of a Robert Bosch family), sued Vodafone for infringement by operation of LTE networks implementing optional access control. Vodafone countered with non-infringement, invalidity and de minimis defences. The Secretary of State for Defence intervened on Crown use. The High Court (Mr Recorder Douglas Campbell QC) had held the unconditional amendments invalid for added matter, permitted the conditional amendments, found some infringement and held Vodafone had a Crown use defence in certain modes. Both sides appealed.

Nature of the claim and relief sought. IPCom asserted patent infringement (method and product/system claims) and sought declarations of essentiality and relief for acts prior to expiry. Vodafone sought declarations of non-infringement and invalidity and advanced defences including Crown use and de minimis.

Issues framed. The court addressed: (i) inventive concept; (ii) construction of conditionally amended claims (access class bit requirement; privileged v normally privileged; "access right"; "set up to send"); (iii) whether conditional amendments extended protection (s76(3)(b)); (iv) essentiality to TS 36.331 and infringement of LTE modes (including special modes A–G; Annex C MTPAS, Annex E Limited Historical Operation, Annex F Anomalous Testing); (v) Crown use under s55(1); (vi) de minimis; (vii) obviousness; and (viii) form of declaration of essentiality.

Reasoning and holdings.

• The inventive concept of the conditional claim equated to combining a bypass mechanism for a privileged group with a threshold lottery for others; the conditional amendments did not change that concept.
• On construction the court agreed with the judge that the claim does not require access class bits for every possible user class — only for those classes used in the claimed method (i.e. those capable of bypassing the lottery). The privileged and normally privileged categories are mutually exclusive for claim purposes. "Allocates an access right" is to be read purposively as granting or denying access. "Set up to send" in claim 7 requires the base station (or the relevant functional base station entity) to be adapted/ configured or have the appropriate programming so that it will transmit the barring parameters in ordinary operation; transient operator-triggered reconfiguration (as in Vodafone's MTPAS scripting) did not, in ordinary use, make the base stations "set up to send".
• Conditionally amended claim 1 did not extend the protection conferred by the granted claim and so complied with section 76(3)(b).
• The court held the Patent was essential to the ACB method of TS 36.331 (when that optional method is implemented) and that LTE operation in the relevant modes infringed the claims, subject to the Crown use point.
• On Crown use, the court rejected the judge’s broader construction. Section 55(1) requires either an express written authorisation to use the specific patent or an authorisation to do a particular act which necessarily involves working the patented invention; mere authorisation to do an act which may or may not involve working the patent is insufficient. Accordingly the judge’s finding of Crown use in respect of Vodafone’s MTPAS operation was overturned.
• De minimis arguments failed: the limited duration or extent of emergency testing or limited numbers of base stations did not render the uses non-infringing in context.
• Obviousness attacks based on combining IS-95 and GSM/GPRS features were rejected; the alleged squeeze did not establish that the putative combination fell within the claim or rendered it obvious absent impermissible hindsight.
• The form of the judge’s declaration of essentiality was a matter within his discretion and was not varied.

Disposition. Vodafone’s appeal was dismissed. IPCom’s appeal was dismissed in relation to "set up to send" but allowed in relation to Crown use: the Crown use finding was reversed.

Appeals dismissed in substance but varied in respect of Crown use. The Court of Appeal dismissed Vodafone’s appeal and dismissed IPCom’s challenge to the judge’s construction of "set up to send"; however IPCom’s appeal on Crown use succeeded: the court held that section 55(1) requires either express written authorisation to work the specific patent or an authorisation to do a particular act which necessarily infringes the patent, and on that basis the judge’s Crown use finding as to Vodafone’s MTPAS operation was erroneous. The court otherwise affirmed the judge on claim construction, extension of protection, essentiality, de minimis and obviousness.

Appeal to the Court of Appeal (Civil Division) from the High Court (Patents Court, Business and Property Courts, Mr Recorder Douglas Campbell QC) [2020] EWHC 132 (Pat). This Court handed down judgment [2021] EWCA Civ 205, allowing in part and dismissing in part the appeals as summarised above.