The Waterfront Partnership

Qualcomm Incorporated v Nokia Corporation

A  case summary

 
The Background

Many in the telecoms industry including lawyers and inventors have waited with bated breath for the outcome of yet another battle between Qualcomm and Nokia, this one being waged in the High Court in London. This case is but one of many being contested between these two companies worldwide.

The Facts

Qualcomm brought an action in the UK High Court against Nokia for the contributory infringement of its European Patent (UK) No. 0,629,324 ("324") and primary infringement of its European Patent (UK) No. 0,695,482 ("482"). Nokia on the other hand counterclaimed for the revocation of both of these patents.

The 324 Patent is a system which allows Nokia's mobile handsets to reduce power consumption by intermittently monitoring a channel for incoming messages. The 482 Patent on the other hand relates to a method and device for the correction and limitation of the transmitted power of a mobile telephone.

The issues in question are:

(i) whether the 324 Patent and 482 Patent are valid;

(ii) if valid, then whether Nokia has infringed these patents; and lastly

(iii) in respect of the 482 Patent, whether such patent was essential to the standard set out by the European Telecommunications Standards Institute ("ETSI"). (With Nokia claiming it was essential and Qualcomm claiming it wasn't)

The High Court Decision

(i) The 324 Patent

The validity of the 324 Patent was precariously dependent on the validity of its first claim. The court stated that if the first claim fails the objection to its validity, then any further consideration in respect of other claims in the 324 Patent is futile and irrelevant.

Upon consideration of the first claim, the court held that the 324 Patent is invalid for lack of novelty over two prior art publications: (i) the Cognito document; and (ii) Nippon Telegraph publication.

The court also decided that the 324 Patent lacked obviousness as a result of the NEC prior art document.

(ii) The 482 Patent

In respect of the 482 Patent, the principle attack against its validity predicated mainly on the issue of obviousness.

The court held that the Claims 1, 2, 9 and 11 were invalid for lack of inventive step (obvious) over three prior art documents, namely the "IS-95 standard" document, the Wheatley documents and the Soliman document.

In respect of the "IS-95 standard" document, the court accepted Nokia's arguments that in the course of designing a mass produced phone for use in accordance with the standard, digital implementation would be used for the purposes of digital calibration; as such there was obvious implementations of the "IS-95 standard" document for Claims 1 and 9.

Driving more nails into the coffin, the court went on to state that both Claims 9 and 11 were also invalid for insufficiency.

(iii) Essentiality

Under the ETSI Intellectual Property Rights policy document, where a standard can only be implemented by technical solutions, all of which infringe on intellectual property rights, then all such intellectual property rights will be considered essential.

The application of this standard relates to the claim under the 482 Patent about a specific circuit for and method of using a combination of open and closed loop power-control commands. The standard was silent on how to implement its requirements although it did set out that it required the mobile phone to be capable of using both types of power control. Therefore, had the 482 Patent been valid, it would not have been technically essential in accordance with the ETSI standard.

Impact of the Judgement

In this case, the court has clarified that under Section 60(2) of the Patents Act, contributory infringement will take place when a supply of goods is made and the supplier not only knows that the goods can be used to infringe a right, but that he must know (whether actually or constructively) that the goods supplied are intended to be used to infringe.

Although the current use of its mobile handsets is not infringing, the mere fact that the relevant Nokia mobile handsets had the capacity to accommodate the inclusion of an additional channel by the network puts Nokia in a position where it has to consider the risks of infringement in future.

A further clarification made by the court was that documents submitted to a standards-setting body which have been widely circulated internally within the body will not have been deemed to have come into the public domain if they carry confidentiality notices coupled with an express or implied obligation of confidentiality. In addition, a party submitting a document as prior art will arguably have to prove that such obligation of confidentiality has been breached.

The consequence here is that those alleging invalidity using prior art would be bear a heavier burden in proving that the confidential information in the prior art has come to into public domain.

Richard Hill

Waterfront Partnership

 

© The Waterfront Partnership 2008