Introduction

In the landmark case of Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd & Ors ([2020] EWCA Civ 1292), the England and Wales Court of Appeal (Civil Division) addressed a critical issue in patent law: the invalidation of a patent on the ground of added matter. Conversant, the proprietor of European Patent (UK) No 1 797 659, challenged the High Court's decision to revoke its patent, which was primarily concerned with "Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA)." The core dispute revolved around whether amendments made to the patent claims introduced information beyond what was originally disclosed in the application, thereby constituting added matter.

Summary of the Judgment

The appellate court upheld the High Court's decision to invalidate Conversant's patent. The primary contention was that the amendments to the patent claims, specifically regarding the "transmitting check," introduced new information that was not clearly and unambiguously disclosed in the original application. This violated Section 72(1) of the Patents Act 1977, aligning with Article 138(1)(c) of the European Patent Convention (EPC) concerning added matter.

Conversant argued that the amendments were merely clarifications implicit in the original disclosure. However, the court found that the specific linkage between the "transmitting check" and the "able-to-empty check" was not sufficiently supported by the original application. As a result, the court determined that the amended claims disclosed new information, leading to the revocation of the patent.

Analysis

Precedents Cited

The judgment extensively referenced established legal precedents to determine the validity of the added matter objection. Key cases included:

• AP Racing Ltd v Alcon Components Ltd [2014] RPC 27: Outlined the fundamental principles of added matter under Section 72(1) of the Patents Act 1977 and Article 138(1)(c) of the EPC.
• Bonzel v Intervention Ltd (No 3) [1991] R.P.C. 553: Emphasized the strict comparison between the original application and the amended claims to identify any added matter.
• European Central Bank v Document Security Systems [2007] EWHC 600 (Pat): Elaborated on the necessity to interpret patent documents from the perspective of a skilled person in the art.
• Palmaz’s European Patents [1999] RPC 47: Discussed the concept of intermediate generalization, where features are extracted from a specific context and introduced into claims without their original inventive significance.

Legal Reasoning

The court applied a meticulous analysis to ascertain whether the amended claims introduced added matter. Three primary steps guided this assessment:

1. Understand the original application as a skilled person would, without the influence of the amended claims.
2. Interpret the amended claims to determine if they introduce new information.
3. Compare the two disclosures to ascertain if the claims as amended extend beyond the original application's content.

The pivotal issue was the introduction of the "transmitting check" in the claims, which was performed by checking the "able-to-empty" status of the RLC buffer. The court found that this linkage was not explicitly or implicitly disclosed in the original application, thereby constituting added matter. Conversant's argument that "transmitting" was redefined to mean "able to transmit" was not substantiated, as the original description did not support this interpretation.

Impact

This judgment reinforces the stringent standards patent applicants must adhere to regarding the consistency between their original applications and any subsequent amendments. It underscores that any amendments introducing new concepts or linkages not originally disclosed can lead to patent invalidation. For the telecommunications sector and patent law practitioners, the case serves as a cautionary tale to ensure that all claim amendments are firmly rooted in the original application’s disclosure.

Complex Concepts Simplified

To aid understanding, the judgment included a glossary of technical abbreviations related to telecommunications. These terms are fundamental to the patent's subject matter, dealing with the management of data transmission in mobile networks using the UMTS standard.

Conclusion

The Court of Appeal's decision in Conversant v Huawei [2020] EWCA Civ 1292 underscores the critical importance of maintaining fidelity between a patent's original application and any subsequent amendments. By invalidating the patent due to added matter, the court emphasized that claim amendments introducing new elements not originally disclosed can render a patent void. This judgment serves as a pivotal reference for patent practitioners, highlighting the necessity for meticulous claim drafting and cautious amendments to avoid conflicts with established legal standards on added matter.