Apple fails to invalidate Optis cellular SEP
The English High Court has ruled that Apple had infringed a cellular standard-essential patent, marking the second loss for the company over multi-jurisdiction infringement claims.
Apple failed to argue that the patent was invalid, with Justice Richard Meade saying in the judgment, handed down on June 25, that he was unconvinced of Apple’s arguments that Optis’ EU patent number 2,229,744 was obvious or anticipated.
The Optis patent covers a “method and arrangement in a wireless communication network” and was first registered with the European Patent Office (EPO) in 2008.
Broadly, the court was asked to rule on three issues; whether the patent is valid, whether it is essential and infringed and whether Apple’s defence of estoppel is valid.
Prior to the trial, Apple dropped a number of issues. Primarily it conceded that the Optis patent was essential and decided to drop a prior art R2-073538 from its argument after it was levied against Optis unsuccessfully in litigation with Huawei.
Meade ruled that the patent was valid and that no amendments were necessary and denied Apple’s estoppel and acquiescence defence.
This is the second loss Apple has suffered against Optis at English courts in the last 12 months. In October last year, the English High Court rejected a challenge from Apple to an Optis patent (UK number 1,230,818) that covers handovers between different telecommunications systems.
The decision saw Justice Birss side with Optis and its fellow defendant Unwired Planet, ruling that the patent was essential.
Disputed issues
In this week’s ruling, Apple brought arguments concerning the scope of general knowledge, Optis’ claim construction, anticipation over a patent application, and whether its amended claims are allowable.
According to Meade, there were only “minor disagreements” over both the scope of general knowledge and skilled person arguments.
Regarding claim construction, Apple’s argument hinged on prior art referred to as “InterDigital”, which was first submitted in May 2007. Apple alleged that claims 1, 6 and 9 of Optis’ patent were invalid on the grounds that InterDigital anticipates them and was filed a year prior.
Meade rejected this, saying that claims 1 and 9 were not anticipated, and as claim 6 relied on the wording in claim 1 it “did not in itself matter”.
The InterDigital art was also used as an argument for the obviousness of the claims of Optis’ patent. Meade said that both Optis and Apples’ arguments over whether InterDigital made claim 1 of the patent obvious were “finely balanced” but preferred Optis’ position that it did not., But it sided clearly with Optis that it did not invalidate claim 9.
Regarding anticipation, Apple argued that a patent application referred to as “Pani” (World Intellectual Property Organization number 2008/097544) formed part of the novelty found in Optis’ SEP. The dispute centred on how applicable the application—which covered “PDU Counting”—was to Optis’ patent.
On this issue, Mead also sided with Optis, claiming that there was not “sufficiently clear disclosure” to support Apple’s arguments.
As Meade upheld the validity of the patent, he did not address Apple’s claim amendments to narrow the claims of the patent to LTE technology.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
Oatly v PureOaty: cereal killer
