Today, the UK court (Mr. Justice Floyd) rendered its decision in the Qualcomm vs Nokia case. The case in the UK is slightly different than similar fights that take place in Netherlands and Germany in that Qualcomm is suing Nokia in the UK under 2 patents (EP 0,629,324 and EP 0,695,482) both related to power control. European Patent 0,629,324 (“’324”) relates to an apparatus for controlling the way in which the mobile telephone reduces power consumption by monitoring a channel for incoming messages intermittently. The second, European Patent 0,695,482 (“ ’482”) relates to a method and device for the correction and limitation of the transmitted power of a mobile telephone.Qualcomm’s claim under ‘324 is limited to contributory infringement as the product claims require both a handset and a base station. Qualcomm also sought a declaration of essentiality in respect of ‘324 re the 3G standard.As to ‘482 the UK court comes to the conclusion that Qualcomm’s patent ‘482 is invalid. Had the patent been valid, Qualcomm would have established infringement by Nokia of claims 1, 2 and 9. Although essentiality did not form part of this litigation as yet, the court ruled in an obiter dictum:(…) Essential is defined in the ETSI IPR Policy document as follows:
“ESSENTIAL” as applied to IPR means that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the time of standardization, to make, sell, lease, otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD without infringing that IPR. For the avoidance of doubt in exceptional cases where a STANDARD can only be implemented by technical solutions, all of which are infringement of IPRs, all such IPRs shall be considered ESSENTIAL.”
The Court preludes to non esentiality in finding that the ‘482 Patent would not, if valid, be “technically essential”
“ ‘482 claims a specific circuit for and method of using a combinationof open and closed loop power control commands. Whilst the standardrequires the phone to be capable of using both types of power control, it issilent on how to implement its requirements. For example it does notspecify calibration, far less how calibration is to be achieved. Theevidence also established (see for example document X21) that there were otherways of achieving this objective. I was not satisfied that these were nottechnically possible.
The overall findings of the court, are:*** Qualcomm patent ‘324 is invalid as granted for lack of novelty over two prior art publications (“Cognito” and “Nippon Telegraph”) and obviousness over another prior art document (“NEC”). Qualcomm submitted during trial that it could amend the claims, but that does not help either. The patent would remain invalid as proposed to be amended, for lack of novelty over Cognito and obviousness over NEC, the Court found. As a Dutch comfort for Qualcomm (for what it is worth) ‘324 would, if valid, be infringed by GSM/GPRS in combination with Nokia’s phones.*** Qualcomm patent ‘482 (that is, claims 1, 2, 9 and 11) are invalid for lack of inventive step over three other prior art documents (“IS-95”, publications relating to patents of Mr. Wheatley, an inventor and “Soliman”, and claims 9 and 11 for insufficiency. Again, Dutch comfort, as the Court held that, had the Qualcomm patent been held valid, Nokia would have infringed claims 1, 2 and 9, but, at the same token, had Qualcomm’s patent been held valid the court would not have found it to be “essential” to the standard. paragraph 15 of the ETSI IPR Policy (blogger), the first part of the cited sentence I could find in the ETSI document, not the second sentence