In IPCom v HTC [2017] EWCA Civ 90 on 28 February 2017, the Court of Appeal overturned the trial decision of Birss J that IPCom’s standard essential patent EP (UK) 1 841 268 was not infringed. The Court of Appeal found the patent, in amended form, valid and also infringed by certain HTC mobile devices as a result of their compliance with the UMTS standard. In doing so, the Court of Appeal overturned the trial court finding that the patent was valid, in amended form, but not infringed.


EP (UK) 1 841 268 concerns the problem of regulating access by multiple mobile devices to the random access channel (“RACH“) in UMTS. This divisional patent has a complicated history which merits some explanation in the circumstances of this case.

EP (UK) 1 841 268 was the subject of UK proceedings between IPCom and Nokia in 2011/2012 which resulted in a finding (at first instance and on appeal) that the patent was valid in an amended form and infringed by certain Nokia UMTS devices. The patent was, however, also the subject of parallel opposition proceedings in the EPO which resulted in the patent being held to be invalid for added matter by the Opposition Division (”OD“). On appeal, the Technical Board of Appeal (“TBA“) found at oral proceedings in March 2013 that an amended form of the patent (different to the form considered in the Nokia UK proceedings) was valid and did not result in added matter (T 1282/12). As is usual in opposition proceedings, the case was remitted back to the OD for consideration of the remaining grounds of opposition (inventive step etc.). The OD upheld the validity of the amended patent and a final oral hearing in the TBA to determine the remaining grounds of opposition has been scheduled for 18/19 July 2017.

The relevance of this background to the Court of Appeal’s decision is that IPCom sought in the UK proceedings against HTC to amend the claims of the patent to bring them into line with the German language claims approved by the TBA’s at the hearing on added matter in March 2013.

In the UK trial, Birss J ( [2015] EWHC 1034 (Pat) ) held amended claim 1 valid but not infringed by HTC’s mobile devices. IPCom appealed the findings on construction and infringement. HTC cross-appealed on construction and argued that the claim amendments should have been rejected in the Court’s discretion and that, in any event, the construction required by IPCom for infringement rendered the amended patent invalid for added matter.


On appeal, IPCom and HTC argued Birss J’s findings on claim construction were incorrect. One particular IPCom argument was that Birss J had failed to consider important and unchallenged evidence from HTC’s expert which would have resulted in a finding of infringement on Birss J’s construction of “transmitted as a bit pattern”. HTC argued that it was not open to IPCom to take this point on appeal as IPCom had not drawn this evidence to Birss J’s attention during the trial. The Court of Appeal said that whilst IPCom’s failure to highlight the relevant passage to Birss J was “regrettable”, it should not be treated as a bar to IPCom’s success on appeal. The reason given was that HTC had not advanced any tenable reason why its expert evidence should not be accepted at face value.

HTC originally argued that the events that had taken place at the oral proceedings before the TBA in March 2013 formed part of the prosecution history and were admissible evidence on the construction of the claim. In the end, HTC placed no reliance on this material at the appeal hearing. The Court of Appeal observed that this was the correct approach and commented that the fact that the parties had served 5 witness statements regarding what was alleged to have happened at the TBA hearing was an illustration of the “impossible burden” it places on a skilled reader if the prosecution history were to be recognised as a legitimate aid to construction. This is consistent with the Court of Appeal’s previous comments in Actavis UK Ltd v Eli Lilly & Company [2015] EWCA Civ 555 regarding the difficulties which would flow from using the prosecution history as an aid to construction.

Discretion to refuse the amendments

HTC also contended that Birss J should have exercised his discretion to refuse the amendments to the claim. In this regard, HTC argued that Birss J had not taken into account IPCom’s asserted intention to obtain a claim which was equivalent in scope to the German language claim approved by the TBA at the March 2013 hearing.

The Court of Appeal dismissed HTC’s cross-appeal and endorsed Birss J’s finding that IPCom’s asserted intention to obtain a claim equivalent in scope to the German claim was irrelevant to the question of discretion. The main matters to be considered are whether there is a need for the amendments and whether their introduction at a particular stage in the proceedings is procedurally fair. Considerations outside the proceedings are not taken into account.

Part of Birss J’s analysis involved comparing his construction of “as a bit pattern” in the English claim with what he considered to be the “better translation” of that phrase in the German claim. However, the Court of Appeal held that Birss J did not have sufficient evidence before him to make a finding as to the scope of the German claim. The Court of Appeal also criticised the fact that the evidence of a translator included an interpretation of the events at the TBA hearing in March 2013. The Court of Appeal again reiterated its view that the events before the TBA were not a legitimate aid to construction.

As mentioned above, the validity of the amended claims is still to be considered at a hearing before the TBA scheduled for 18/19 July 2017. It will be interesting to see what impact the approval of a different claim set at that hearing could have on any claim for damages brought by IPCom in the UK proceedings.