Optis Cellular Technology LLC & Ors. v Apple Retail UK Limited & Ors.

A patent claim must be construed through the eyes of the skilled person, in its technical context and purposively. General statements that embodiments are non-limiting do not permit a claim term to be given a meaning inconsistent with that context.

In a claim requiring the counting of transmitted data units or bytes, counting denotes a counter-based, one-directional process. It does not include a window-based process that tracks outstanding data and may both increase and decrease. Resetting requires a reassignment distinct from the counter’s ordinary operation. Where resetting is required when a threshold is reached, it must occur at that point, not merely later in consequence of it.

Optis sued Apple for infringement of a standard-essential European patent concerning polling for status reports in wireless communication networks. By the trial, infringement and essentiality were common ground. Apple challenged validity, including for lack of novelty over the InterDigital prior-art document.

Meade J rejected the novelty challenge and granted permission to appeal only on that issue: [2021] EWHC 1739 (Pat). Apple contended that the prior art anticipated claims 1, 6 and 9 if the terms “counting”, “resetting” and “when” were construed broadly enough to encompass aspects of a window-based mechanism.

The central issue was whether that prior-art disclosure fell within the properly construed claims.

1. Appeal dismissed. Birss LJ gave the reasons, with which Phillips and Arnold LJJ agreed. On the correct construction, it was common ground that InterDigital did not anticipate any of claims 1, 6 or 9.

2. The court accepted the established purposive approach to claim construction. It treated Saab Seaeye v Atlas Elektronik [2017] EWCA Civ 2175 as a convenient summary of the applicable principles. It also agreed with the observation in Nokia v IPCom [2009] EWHC 3482 (Pat) that a specific embodiment does not ordinarily write unexpressed limitations into general claim language. Conversely, broad statements that examples are non-limiting do not licence a construction that gives a technical word a meaning it was not intended to bear.

3. “Counting” in claim 1 had the same sense as the cognate references to “counter” and “counts” in the claims and specification. It described a counter-based mechanism that maintains a count of transmitted data units or bytes. A window-based mechanism instead tracks outstanding data. Its relevant value may fall as acknowledgements are received, and is not a count of transmitted data. The fact that a sequence-number variable is incremented on transmission did not make it the claimed count.

4. “Resetting” in claims 6 and 9 required a reassignment of a counter value that was different in kind from its ordinary changes during operation. A value reaching zero because acknowledgements altered ordinary state variables was not a reset.

5. In claim 9, resetting when a threshold was reached meant immediately at that point. This construction avoided the identified type of superfluous polling. The reference to reducing superfluous polls did not permit delay, since other polling mechanisms could cause superfluous polls for different reasons.

• Court of Appeal (Civil Division): Apple’s appeal on novelty was dismissed.
• High Court, Intellectual Property List: Meade J rejected Apple’s challenges to novelty and obviousness, and rejected its proprietary-estoppel case. Permission to appeal was granted on novelty only: [2021] EWHC 1739 (Pat).