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

Factual and Procedural Background

This appeal concerns two patents relating to a mobile telephony standard known as 4G LTE. The patents, owned by the Respondent, concern a method for uplink control signalling involving mixed resource blocks (MRBs) that carry two types of signals—ACK/NACK and CQI—sent by multiple mobiles. The patents claim a mobile device adapted to spread and transmit these signals according to a code multiplexing structure (CMS) designed to reduce interference.

The Respondent successfully established at trial that the patents were valid as amended, essential to the LTE standard, and infringed by the Appellant’s mobile phones. The Appellant appeals with permission, challenging aspects of claim construction, novelty, and obviousness.

Notably, MRBs are not used in the UK due to spectrum allocation, but the Appellant’s mobiles are capable of operating with MRBs when roaming abroad. The appeal focuses on whether the claim language covers mobiles merely adapted to operate with MRBs versus mobiles actively using the CMS, and on the novelty and obviousness of the claims in light of prior art and standard-setting documents.

Legal Issues Presented

1. Whether the patent claims are limited to mobiles actively using the code multiplexing structure or cover mobiles adapted to use it when required.
2. Whether claim 1 of the first patent lacks novelty over a prior art document known as "Nokia".
3. The proper construction and obviousness of claim 1 of the second patent, particularly regarding implicit signalling and its relation to the "Kobe agreement".

Arguments of the Parties

Appellant's Arguments

• The claims should be construed narrowly to cover only mobiles actually using the CMS, not merely adapted to use it, arguing that the CMS must be in existence for infringement.
• The language distinction between "adapted to" and "uses" in the claims supports this narrower construction.
• The patent specification and nature of the invention suggest the mobile claims should be limited to actual use of the CMS because the invention concerns coordination by the base station to prevent interference.
• The Nokia prior art discloses a CMS that anticipates claim 1 of the first patent when considered in certain parameter settings and circumstances.
• Claim 1 of the second patent should be construed broadly to include implicit signalling via the downlink control channel number, not just the control channel element (CCE) number.
• The Kobe agreement is ambiguous and does not conclusively support the narrower construction of claim 1 of the second patent.
• If novelty over Nokia is accepted, then claim 1 of the second patent is obvious for using the downlink control channel number for signalling.

Respondents' Arguments

• The claims cover mobiles adapted or suitable to operate with the CMS, regardless of whether the CMS is in actual use at any given time.
• The distinction between "adapted to" and "uses" does not imply a temporal limitation that the CMS must be active for the claim to be infringed.
• The patent specification supports the conclusion that mobiles differ slightly depending on the embodiment but are adapted to operate with the CMS when required.
• The Nokia prior art does not anticipate the claims because it lacks the full CMS as claimed; it allows use of additional Walsh codes and lacks the required gaps, so the sets of rules differ.
• The claim 1 of the second patent requires implicit signalling specifically linked to the CCE, not the downlink control channel number, as the two are not necessarily associated.
• The Kobe agreement supports the judge’s construction that the implicit signalling relates to the control channel index, not the downlink control channel number.
• The obviousness argument fails due to lack of evidence that the alleged obvious step would have been obvious to implement.

Table of Precedents Cited

Court's Reasoning and Analysis

The court analysed the language of the claims, focusing on the distinction between "adapted to" and "uses." It held that "adapted to" means capable or suitable for operating with the CMS, not limited to actual use at a given time. The word "uses" in the characterising part naturally refers to what the device does when transmitting signals, not a temporal limitation that the CMS must be active.

The court rejected the appellant’s argument that the claim requires the CMS to be in existence, noting that the mobile must be capable of operating with the CMS when required, consistent with the nature of mobile communication standards and roaming.

Regarding the appellant’s analogy to IPCom, the court distinguished the facts: mobiles automatically adapt to network signals as part of normal use, whereas base stations require manual reprogramming, justifying different claim constructions.

On novelty, the court held that the prior art Nokia document did not anticipate claim 1 of the first patent because the Nokia CMS lacks the required gaps in the code multiplexing structure and permits use of additional Walsh codes, meaning the sets of rules differ fundamentally. The court emphasized that a CMS must be considered as a whole, not by partial application in limited circumstances.

On claim 1 of the second patent, the court found that the implicit signalling must be associated with the control channel element (CCE) itself, not the downlink control channel number, as the two are not necessarily linked. The court relied on the patent specification and the Kobe agreement, concluding that the claim does not cover implicit signalling via the downlink control channel number.

The court further rejected the appellant’s obviousness argument, noting that it depended on premises the court had rejected (novelty and claim construction), and that the appellant failed to identify evidence supporting obviousness even if those premises were accepted.

Holding and Implications

The Court of Appeal DISMISSED the appeal on all grounds.

The court upheld the trial judge’s construction that the patent claims cover mobiles adapted to operate with the code multiplexing structure, regardless of whether the structure is in active use at the time. It rejected the novelty attack based on the Nokia prior art and confirmed the narrower construction of claim 1 of the second patent regarding implicit signalling linked specifically to the control channel element.

This decision affirms the validity and infringement findings for the Respondent’s patents and clarifies the construction of claims relating to mobile telecommunications standards. The ruling does not establish new precedent beyond the application of established principles to the facts of these patents.