IPCOM GmbH & Co Kg v Vodafone Group Plc & ors

Factual and Procedural Background

The Plaintiff is the proprietor of a European Patent related to telecommunications network access control, which expired in February 2020. The Patent was part of a portfolio acquired from another company and is a divisional patent with related litigation history. The Defendants are alleged to have infringed the Patent prior to implementing a redesign. The Patent is subject to opposition proceedings at the European Patent Office, during which the Plaintiff made two applications to amend the claims: one unconditional and one conditional. The High Court Judge found the unconditional amendments impermissible but upheld the conditional amendments as valid, with mixed findings on infringement and Crown use defenses. Both parties appealed certain aspects of the judge's order, with the Plaintiff challenging claim construction and the Defendants disputing validity, infringement extent, and declaration form. The Secretary of State for Defence intervened to challenge the Crown use interpretation.

Legal Issues Presented

1. Whether the conditionally amended claims are valid and properly construed, specifically regarding the interpretation of access class bits and privileged user classes.
2. Whether the Defendants infringed the Patent, including consideration of infringement by equivalents and the extent of alleged infringing acts.
3. The proper interpretation and application of the Crown use defense under section 55(1) of the Patents Act 1977.
4. Whether the Defendants' alleged infringement was de minimis.
5. The appropriate form and scope of the declaration of essentiality of the Patent to the LTE standard.
6. Whether the conditional amendments extend the protection conferred by the Patent.
7. Whether the claims are invalid for obviousness in light of prior art and common general knowledge.

Arguments of the Parties

Plaintiff's Arguments

• The inventive concept involves combining two access regimes: a bypass for privileged users and a threshold evaluation for others, providing flexibility and limited signalling overhead.
• Only privileged user classes require access class bits; normally privileged classes do not, preserving the distinction between these classes.
• The phrase "allocates an access right" includes both permitting and denying access, consistent with the specification and claim language.
• The Defendants' LTE network infringes the claims, including under the doctrine of equivalents, despite the differing number of checks compared to the claim language.
• The Defendants' base stations are "set up to send" barring parameters only when configured, which involves more than mere power supply.
• The Crown use defense was incorrectly applied by the judge; written authorization must be specific or necessarily implied regarding the patented invention.
• The alleged infringing acts are not de minimis given their significance in emergency and testing contexts.
• The conditional amendments do not extend the protection conferred by the Patent.
• The claims are not obvious in light of prior art and common general knowledge.

Defendant's Arguments

• The Patent claims require each user class to have an access class bit, including normally privileged classes.
• The phrase "allocates an access right" means a positive right of access, not covering denial of access.
• The Defendants' LTE implementation does not infringe because of differences in claim construction and operation.
• The Defendants' base stations are not "set up to send" barring parameters in normal operation.
• The Crown use defense applies broadly, requiring only authorization to do the act, not necessarily specific to the patented invention.
• The infringing acts are de minimis in scale and commercial significance.
• The claims are obvious in light of the IS-95 system combined with GSM/GPRS common general knowledge.
• The declaration of essentiality should be limited to the optional implementation of the access control method.

Secretary of State for Defence's Arguments

• The judge erred in construing section 55(1) of the Patents Act 1977, advocating that written authorization must be express or necessarily implied regarding the specific patent.

Table of Precedents Cited

Court's Reasoning and Analysis

The court conducted a detailed analysis of the Patent claims, their construction, and applicability to the Defendants' LTE network. It accepted the Plaintiff's construction that only privileged user classes require access class bits and that the phrase "allocates an access right" encompasses both granting and denying access, consistent with the specification. The court held that the Defendants' LTE system infringed the claims, including under the doctrine of equivalents, despite differences in the number of checks performed compared to the claim language.

Regarding the product claim's "set up to send" requirement, the court found that the Defendants' base stations were not "set up to send" barring parameters in normal operation, as enabling this required configuration changes beyond mere power supply, distinguishing it from cases where software is pre-installed and merely activated.

On Crown use, the court disagreed with the judge's broad interpretation, concluding that written authorization must be specific or necessarily implied regarding the patented invention or acts that necessarily infringe the patent. The court reasoned that the authorization must relate directly to the patented invention to afford Crown use protection.

The court rejected the Defendants' de minimis argument, finding that the scale and context of the alleged infringing acts, including emergency response and testing, were significant enough to constitute infringement.

On obviousness, the court rejected the Defendants' "squeeze" argument that combining prior art would render the claims obvious, finding no evidence that the prior art combination would produce a system including the claimed lottery bypass feature. The court emphasized caution against hindsight and the need for detailed factual analysis.

Finally, the court upheld the judge's declaration of essentiality despite the Defendants' proposed rewording, finding no error of principle in the judge's discretion to frame the declaration as he did.

Holding and Implications

The court dismissed the Defendants' appeal and allowed the Plaintiff's appeal on the Crown use issue.

The direct effect is that the Patent claims, as conditionally amended, are valid and infringed by the Defendants' LTE network under the accepted construction and analysis, including infringement by equivalents. The Crown use defense as applied by the judge was overturned, meaning the Defendants cannot rely on it without specific written authorization related to the patented invention. The Defendants' de minimis defense was rejected, confirming liability for the alleged infringing acts despite their limited scale.

No new legal precedent was established beyond the application of existing principles to the facts, and the court confirmed the appropriateness of the judge's declaration of essentiality as framed.