Unwired Planet International Limited v (1) Huawei Technologies Co. Limited, (2) Huawei Technologies (UK) Co. Limited, (3) Samsung Electronics Co. Limited, (4) Samsung Electronics (UK) Limited & Others
The English Patents Court has upheld the validity of EP (UK) 2 229 744, which relates to an efficient polling system for a wireless communications network and has has been declared as essential to the LTE 4G telecommunications network standard. The Court also held that the patent is infringed by wireless telecommunications networks which operate in accordance with the relevant standard. Of particular interest in this case are the Judge’s findings in relation to whether simply the date, or the date and time, of the filing of a priority document should be considered when assessing the relevance of a potentially novelty-destroying piece of prior art.
The patent is part of a portfolio acquired by Unwired Planet from Ericsson. Unwired Patent alleged that Huawei and Samsung infringed the patent by manufacturing and selling equipment which complies with the relevant standard. The defendants denied infringement and counterclaimed for invalidity of the patent on the grounds that it was not entitled to priority, lacked novelty and was obvious in the light of the prior art.
Of particular interest in this case are the Judge’s findings in relation to novelty and the effect of the publication on the internet of a potentially novelty-destroying document which would have been available in some parts of the world the day before the date on which the priority document for the was filed. The priority document was filed at the USPTO when the date in Europe and in the US was 8 January 2008. The defendants relied on the “Ericsson TDoc” as prior art. This was uploaded to a publicly accessible server in preparation for a meeting of a standards committee at 08.36am CET on 8 January 2008, but, argued Huawei and Samsung, was made available on the internet in some parts of the world, such as Hawaii, when the date was 7 January 2008. They therefore submitted that it formed part of the state of the art before the priority date and was relevant prior art.
Birss J favoured Unwired Planet’s submission that the legislation (paraphrasing section 2(2) Patents Act 1977 and Article 54(1) EPC) provides that the state of the art shall be held to comprise everything made available to the public before the priority date, not a calendar date. The priority date should be the date on which the priority document was filed at the patent office. There is no requirement to know the date and time of filing, therefore the date or time in other parts of the world is irrelevant. In this case therefore, the frame of reference should be the date on which the priority document was filed at the USPTO i.e. 8 January 2008. The Ericsson TDoc was made available to the public at 02.36 am EST on 8 January 2008. The fact that it was 7 January 2008 in some parts of the world is irrelevant. The Ericsson TDoc was not, therefore, made available to the public before the priority date.
Read the entire decision (in English) here.
Head note: Sarah Routledge, Marks & Clerk Solicitors LLP