In a judgment yesterday, Mr Justice Birss of the High Court found European patent 2,229,744 valid, and said it was essential to the relevant 4G telecoms standard (3GPP TS 36.322 release 8 version 8.8.0). This meant that Huawei’s and Samsung’s standard-compliant products infringe the patent. A parallel case brought against Google had been settled.
Unwired Planet has launched five patent infringement cases relating to standard-essential patents in the UK courts, after it acquired a portfolio from Ericsson.
The cases are due to be heard between now and next July. A sixth case will address the non-patent competition issues including FRAND licensing and damages, and there is also parallel litigation in Germany.
Huawei and Samsung had argued that compliance with the standard did not fall within the patent claims, and also that the patent was invalid.
Birss spent some time constructing the relevant claims of the patent, coming down in favour of Unwired Planet’s view. By contrast, in a decision on the same patent in January this year a court in Dusseldorf, Germany reached the opposite conclusion. Birss attributed this to different evidence before the two courts.
Once the claims were construed this way, Birss said it was common ground that standards-compliant systems would infringe and that the patents were essential to the standard.
In assessing the validity of the patent, the judge discussed challenges based on (1) whether the relevant claims were entitled to priority based on a US patent application dated January 8 2008; (2) novelty over a piece of prior art published on the day the priority document was filed at the USPTO (which prompted an interesting discussion about time zones); and (3) obviousness.
On each point, he found in favour of Unwired Planet, though he did note that the obviousness issue on one claim was “quite finely balanced”.
The trial took place over seven days in October.
Unwired Planet was represented by barristers Adrian Speck QC, Mark Chacksfield and Thomas Jones, and by EIP Legal.
Huawei was represented by barristers Andrew Lykiardopoulos WQC and Ben Longstaff and Powell Gilbert.
Samsung was represented by Charlotte May QC and Brian Nicholson and Bristows.
The defendants can apply for permission to appeal the judgment
