In a recent decision from the UK High Court, IPCom v HTC, issues of the validity of IPCom’s patent, its alleged infringement by HTC mobile telephones and whether the patent is essential to a third generation mobile telephone system standard, were decided.  This follows a previous battle over this same IPCom patent with Nokia.

Back in 2011, IPCom’s UK validation of their European patent, EP 1 841 268, was held in the High Court to be valid and infringed by Nokia.  On the back of this success, which was fully upheld by the Court of Appeal (although the European patent was in the process of being opposed by multiple parties at the European Patent Office), IPCom sued HTC in the UK for infringement of the patent.  HTC counterclaimed for invalidity of the patent and also put forward some further defences (as had Nokia) including licence issues.

It was agreed to hold a separate FRAND trial, together with Nokia, to determine, among other issues, licence terms and the question of damages, which is still waiting to be held.

The trial for infringement and validity of the patent (initially scheduled for February 2013) was stayed (on HTC’s request) pending an appeal from the opposition at the European Patent Office.  During the stay, the Opposition Division found the patent to be invalid and a request by IPCom to amend the patent was refused.  IPCom appealed this decision and the Technical Board of Appeal allowed the amendment, with the case being remitted back to the Opposition Division, from where a subsequent appeal is now pending.  HTC requested a further stay of the UK trial for this subsequent appeal, but this was refused (and this decision was confirmed by the UK Court of Appeal in November 2013).

In the eventual trial, held in March this year, IPCom applied to amend the EP(UK) patent in the same manner as had been allowed by the EPO’s Technical Board of Appeal.  These amendments meant construction of some terms from previous trials was not suitable, with a number of amended terms having to be considered.

The patent relates to a Universal Mobile Telecommunications System (UTMS), one of the third generation mobile telephone systems.  In particular, the patent relates to a manner of regulating a UTMS mobile radio network so as to distinguish between various user classes and to prioritise certain mobile telephone traffic over others dynamically, based on the user class encoded upon their SIM card.  The prioritised traffic gains direct access to the mobile network, whereas other traffic then gains access at a lower priority through a “lottery”, with the level of chance in the lottery being able to be controlled.

Regarding the construction of the amendments, a large part of the trial turned on the construction of the term “bit pattern”, in the phrase “access authorisation data are transmitted as a bit pattern”.  HTC argued that this term was an obscure and unclear term, particularly as IPCom were contending that it covered more than a single bit pattern being transmitted. However, the judge, Birss J, concluded that this term would have a clear meaning to the skilled person. Another term at issue “access class bit”, was also held to be sufficiently clear.  The amendment was therefore found to be allowable and the patent valid.

Turning to infringement, various classes of mobile telephones were found not to infringe IPCom’s patent.  The reasoning for most of the classes was carried over from the previous judgement in IPCom v Nokia, in which these were not found to infringe IPCom’s patent.  The final class of HTC phones, not previously considered, were also found not to infringe.  As no phones were found to infringe IPCom’s patent, the patent was not found to be essential to the UMTS standard.