UK court grants declaration of 'impossible to implement Standard and infringe patent'

11 August 2010

Geoff Hussey

Nokia v IPCom has established that the English High Court is willing to make declarations that a patent claim and a standard are mutually exclusive.

In one of the recent series of cases between Nokia and IPCom in the UK, Nokia obtained a declaration that it was technically impossible to infringe an IPCom patent (previously asserted as standard-essential) by implementation of the UMTS and GSM mobile telecom standards.

The series of cases brought by Nokia included claims of the invalidity of 15 of IPCom’s patents, most of which had been asserted as being essential to the UMTS and/or GSM mobile telecom standards.  The patents were split into a series of five trials.  

The third of the trials was to have been heard in April 2010 and related to the validity of three of the IPCom patents.  Nokia contended that the claimed inventions in two of the patents were mutually exclusive with the Standards to which it had been claimed as essential by IPCom, i.e. that it was not possible to obey the requirements of the Standard whilst working within the scope of protection of the patent claims.  Nokia sought relief in the form of the following declarations:

a) the patents were not essential for compliance with either of the UMTS or GSM Standards; and

b) it was not possible to implement either of the UMTS or GSM Standards in a way that infringed the patents.

The action settled before trial as IPCom submitted to the revocation of the patents. Nokia also asked the court to make the declarations sought in relation to the second of the patents, which concerned the method by which a mobile phone could access the random access channel (RACH) in a telecommunications network.  The invention claimed was, in broad terms, for a mobile phone that had been successful in accessing the RACH to use the same parameters for the next access attempt, whilst a mobile phone that had been unsuccessful in its attempt to access the RACH would be forced to change its parameters for its next attempt. 

The UMTS and GSM Standards do not allow for this approach. A mobile phone attempting to access the RACH will perform the same procedure each time. The same is true of GSM and, further, a successful attempt at accessing the RACH will lead to a transition to another channel and hence no further RACH access. Accordingly, the regime mandated by the Standards did not allow for the rules provided by the patent to be followed.

IPCom accepted the position and consented to the declarations sought by Nokia.  The Court gave the declarations after reading an expert report supporting Nokia’s contentions. The declarations were “as between the parties” so as to not affect the rights of any third party who wished to contend to the contrary.  The declarations granted were as set out below.

IT IS DECLARED as between the parties that:

1. [the patent] is not essential for compliance with any Release up to and including Release 8 of either the UMTS or GSM Standards; and

2. It is not possible to implement any Release up to and including Release 8 of either the UMTS or GSM Standards in a way that infringes [the patent].”

This case establishes for the first time that the UK court is willing to grant declarations of “impossible to infringe” (by reference to the implementation of a particular Standard) and adds a further weapon to the arsenal of the manufacturers of standards compliant equipment.  In recent years there have been a great number of patent cases concerning standards compliant equipment and essential patents, most notably in the mobile telecoms sector.  The Patents Court has been willing to make declarations that patents are “essential” (i.e. implementing the standard would inevitably lead to infringement of the patent) or “not essential” (i.e. implementing the standard could be achieved without infringing the patent).  This development takes the non-essentiality declaration one step further by adding that implementation of the standard cannot be achieved in a way that infringes the patent.