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

In a patent claim to a product defined by functional language such as “adapted to”, the product is ordinarily within the claim if it is suitable or capable of performing the specified function when required. It need not be performing that function at the relevant time unless the patent clearly indicates otherwise.

Capability must be assessed against the complete set of rules required by the claim, rather than a temporary pattern produced by limited circumstances. A claim requiring an association with a particular control-channel element does not extend to signalling by a different channel index where no necessary association exists. Technical possibility alone does not establish obviousness.

The appeal concerned two patents relating to mobile telephones said to be essential to the 4G LTE standard. Following a trial, Meade J held that the patents were valid as amended, essential to the standard and infringed: [2022] EWHC 561 (Pat).

Apple appealed on three issues: whether claims to mobiles “adapted to” use a code-multiplexing structure required that structure to be in actual operation; whether one patent lacked novelty over the Nokia document; and whether the second patent was narrowly construed by reference to control-channel-element signalling and was obvious over the relevant prior art. The central questions were the proper construction of the claims, the assessment of capability against a complete code-multiplexing structure, and the evidence required for obviousness.

Appeal dismissed. The Court of Appeal upheld the judge’s conclusions on construction, infringement, essentiality, novelty and obviousness.

1. “Adapted to” in a product claim using means-plus-function language ordinarily means suitable or capable of performing the specified function in the appropriate circumstances. It does not confine the claim to periods when the relevant function or code-multiplexing structure is actually in use. The construction remains dependent on the particular patent. The word “uses” in the characterising features likewise described what the mobile would do when transmitting the relevant signal, not a temporal limitation requiring the structure to be operating at all times.
2. The mobile did not need to store the whole code-multiplexing structure, and it could be capable of using more than one structure. It did, however, need to be capable of obeying the complete set of rules, including restrictions on where signals must not be placed. The Apple mobiles satisfied that requirement because they would operate automatically and without reprogramming if the relevant network conditions existed.
3. A possible consequence that the broad construction might expose the patent to prior-art invalidity was not a legitimate constructional guide unless that consequence would be apparent to the skilled reader from the patent and common general knowledge.
4. The Nokia scheme did not anticipate the first patent. Novelty had to be assessed against the complete code-multiplexing structure, not the partial pattern produced when only 18 mobiles were present. Nokia also left a fourth Walsh code available for periodic ACK/NACK signals and did not impose the claimed restrictions.
5. In the second patent, “associated with” was broad enough to allow more than a simple one-to-one mapping, but the claim still required an association with the CCE itself. Because a downlink control-channel number could apply to an aggregate of CCEs, no necessary relationship existed between that number and the CCE. The claim therefore did not cover implicit signalling by the channel number.
6. The alternative obviousness case also failed. Evidence that the proposed signalling step was technically possible did not establish that it was obvious. The court’s additional interpretation of the Kobe agreement was that its reference to the control-channel index meant the channel index, but this was unnecessary to the result.

1. Court of Appeal (Civil Division). Apple’s appeal was dismissed on all grounds.
2. Patents Court. Meade J held that the patents were valid as amended, essential to the relevant standard and infringed: [2022] EWHC 561 (Pat).