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Apple succeeds in invalidating Optis' patents in latest technical trial (Optis v Apple)

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08 February 2022

On 25 November 2021, Mr Justice Meade handed down the latest judgment in the Optis v Apple SEP/FRAND litigation, ruling that each of the three patents asserted by Optis were invalid for obviousness.

Apple had conceded at the PTR that the patents were essential, so that the only issue for trial was validity. This technical trial, termed 'Trial C', comes in the context of another recent success for Apple in the wider Optis v Apple proceedings, in which the Court of Appeal overturned Mr Justice Birss' High Court ruling on essentiality.

This Trial C saw Meade J consider technical arguments on some of the patents in the proceedings, having already handed down a judgment finding Apple to be an 'unwilling licensee' in September last year. The FRAND trial is scheduled to take place in summer 2022 after further technical trials.

What are the practical implications of this case?

Practitioners may be particularly interested in Meade J's discussion regarding the weight to be given to secondary evidence in relation to the question of obviousness. In particular, Optis sought to rely upon what others in the field did around the priority period armed with knowledge of the Ericsson proposal relied upon as prior art, as evidence of what the hypothetical skilled person would have done armed with the prior art. Only a subset of the workers in the field had spotted the problems with the Ericsson proposal, and none (apart from LG Electronics, the first owner of the patents in issue) had thought of the solution in the patents.

Meade J considered that such evidence would be more likely than usual to play a role in cases such as this, in which workers in the field (specifically, 3GPP RAN Working Group 1 (RAN1) participants) were specifically aware of and working on the prior art. However, ultimately, Meade J concluded that secondary evidence must be 'kept in its place', ie do no more than help the court to decide the primary question of how the ordinary, uninventive skilled person would behave. Without witness statements from the relevant people in the field, the picture was 'far too patchy and inconsistent to draw any conclusion', especially given that the workers were presumably operating under time pressure and with their own interests to serve (such as advocating for the inclusion of their own patented technology). Meade J acknowledged the practical issues of obtaining witness statements from such participants, leaving open how useful such evidence might be considered in future proceedings, were it possible to overcome the practical limitations.

The invalidity case was one of obviousness; in particular concerning where the sequential steps of routine analysis might edge into hindsight. While Meade J was mindful of the hindsight allegations and separately cautioned against overdoing the often-argued principle that an obvious route is not made less obvious by the existence of other obvious routes, he ultimately found in favour of Apple on the issue, concluding that the alleged invention of the patent was obvious despite the existence of alternative solutions to the problem in the prior art. In doing so, Meade J considered that the sequential steps set out by Apple were not an inappropriate use of hindsight but instead represented systematic uninventive work, and warned against 'misguided efforts [by Optis] to elevate the existence of alternatives into positive decisions that had to be made.' Those steps included the skilled person, having appreciated the problems with the Ericsson proposal, then carrying out a literature search and finding the second prior art relied upon.

Notably, Apple sought to reserve the right to argue that it ought to be entitled to mosaic the two pieces of prior art relied upon, even if neither was common general knowledge (CGK) and the one would not be found by obvious research from the other, on the basis that UK law is out of step with the European Patent Office (EPO), and that in the EPO such a mosaic would be allowed by virtue of the problem-solution analysis. While Meade J was not asked to rule (or comment) on this issue, practitioners should be alerted to the possibility of encountering such an argument in future proceedings.

What was the background?

Trial C concerned the validity of the UK designations of three European patents from the same family, EP'953, EP'065 and EP'779, which originally belonged to LG Electronics before they were assigned to Optis, a non-practicing entity. Apple conceded essentiality before the trial, therefore it was agreed that the patents would be infringed if found valid. The parties also agreed that the Court could decide all of the issues in the trial by consideration of claims 1 and 4 of EP'953.

Claim 1 (the 'unspecified claim') and claim 4 (the 'specified claim') provide as follows:

'Claim 1:

1[a] A method for a User Equipment, UE, to receive control information through a Physical Downlink Control Channel, PDCCH, the method comprising:

1[b] receiving control information from a base station through the PDCCH in units of Control Channel Element, CCE, aggregations, each of the CCE aggregations including at least one CCE in a control region of subframe 'i'; and

1[c] decoding the received control information in units of search space at subframe 'i',

1[d] characterized in that the search space at subframe 'i' starts from a position given based on a variable xi and a modulo 'C' operation, wherein 'C' is a variable given by: C = floor (NCCE /LCCE),

and wherein 'xi' is given by: xi = (A*xi-1 + B) mod D,

wherein A, B and D are predetermined constants, and x-1 is initialized as an identifier of the UE, and NCCE represents the total number of CCEs at subframe 'i', and LCCE is the number of CCEs included in the CCE aggregation, and floor(x) is a largest integer that is equal to or less than x.

Claim 4:

4[a] The method according to claim 1 or 2,

4[b] wherein D, A, and B are 65537, 39827, and 0, respectively.'

The case turned on whether claims 1 and 4 were obvious over two pieces of pleaded prior art: the first being a set of slides from a RAN1 meeting dated 4–8 days before the priority date (Ericsson), which contained a particular function; and the second being a chapter on random numbers from 'The Art of Computer Programming' by Donald E Knuth (Knuth).

What did the court decide?

Obviousness

Meade J ruled that all of the claims were obvious over Ericsson. He accepted Apple's case that it would be clear to the skilled person without invention that although one part of the function in Ericsson (the 'mod C') adequately performed a well-understood and necessary task, the function was overall deficient due to a second part (the 'Kx + L' randomisation part). Having recognised this, an obvious route would be to retain 'mod C' and look to remedy the problem with 'Kx + L'.

The next routine step would be to carry out a literature search for an appropriate random number generator (RNG), which would show the skilled person that linear congruential generators (LCGs), a certain type of recursive random number generator employed in the patent claims, were the best-known option. LCGs, though known to have certain limitations, would also be known to be adequate for the task in hand. In coming to his conclusion, Meade J considered that the existence of other obvious routes did not make it any less natural or obvious that the uninventive skilled person would look for an established RNG (Brugger v Medicaid [1996] RPC 635 at para [661] applied; approved by the Supreme Court in Actavis v ICOS [2019] UKSC 15).

Although the specified claims furthered the gap from Ericsson, they were not enough to save the patent from invalidity. On the evidence, Meade J concluded that each value in claim 4 was an obvious value, with a clear sequence of steps leading to its logical selection for routine reasons. Claim 4 amounted only to 'careful implementation work of the kind for which the notional skilled person is inherently well-equipped'.

Having found for Apple on Ericsson, Meade J flatly rejected Apple's further contention that the patents were also obvious starting from Knuth. This argument required the skilled person to get Ericsson, which since there was no cross-reference from Knuth to Ericsson, failed since Ericsson was held not to be CGK. The Ericsson proposal was held not to be CGK based on Meade J finding that the skilled person was a 'RAN1 person' as Optis contended, rather than someone engaged in the more narrow field of the PDCCH specifically (as Apple contended), since PDCCH was not a field in its own right.

Sufficiency

Apple also failed in its two arguments that the claims were insufficient (which it ran as squeezes against obviousness), but only because Meade J found that the skilled person had a significantly higher degree of aptitude than Optis argued for when defending the inventiveness of the specified claims. Although Meade J had agreed with Optis' definition of the skilled person, he criticised Optis for using the definition 'as an opportunity to carry out some inappropriate dumbing-down through dilution', since their version of the skilled person would lack the basic tools required to carry out the task set out in the prior art.

When it came to sufficiency, Apple argued that the unspecified claims covered combinations of parameters which were so bad that they could meaningfully be said not to work at all. Although Apple lost on its sufficiency arguments (since the skilled person would be able using their CGK to avoid the bad combinations without undue effort (FibroGen v Akebia [2021] EWCA Civ 1279)), Meade J acknowledged that the allegation was an effective squeeze insofar as it pushed the abilities of the skilled person towards a level which helped Apple.

This article was first published by LexisNexis UK.