Optis, Unwired Planet win patent dispute against Apple
Optis Wireless Technology and Unwired Planet have secured a victory in a dispute with Apple at the English High Court, which rejected a challenge to a patent that covers handovers between different telecommunications systems.
The technology companies had accused Apple of infringing a patent owned by Optis, which in turn counter argued that the patent was inessential and was obvious under prior art.
The disputed patent covers the handover between different "RATs" or Radio Access Technologies. GSM (2G), UMTS (3G) and LTE (4G) are different RATs because the ways in which the radio signals are used to make the communication link between a mobile phone and a base station are different.
Optis argued that its patent, EP (UK) number 1,230,818, entitled "Method for improving handovers between mobile communications systems" was valid and essential to the part of the GSM standard which relates to hand over to UMTS and to LTE.
In a decision handed down on October 16, Mr Justice Colin Birss sided with Optis and Unwired Planet, ruling the patent was essential, that “the distinction between this and the previous standard does not make a material difference”, and that “accordingly enhanced measurement reporting falls within the relevant claims and the patent is therefore essential to that standard”.
He also rejected Apple’s prior art argument, stating that while a “skilled person would be well aware of the standardisation work which was being actively pursued at the time (November 1999),” they would not be immersed in the detail, or “following closely every document presented to the various meetings and tracing the relationship between them.”
He added: “Their knowledge would be of the broad outline of what was going on. If they wanted to delve into the detail of how an aspect of the standard was developing, they would know who to ask (or how to do it themselves) but the skilled person would need a reason to embark on that exercise before undertaking it.”
While the 818 patent expired on October 20, Justice Birss indicated that, if this had not been the case, he would have considered granting an injunction against Apple for the short, remaining life of the patent.
Justice Birss concluded: “I find claim 1 of EP (UK) 1 230 818 valid and essential to the various standards….concerning GSM. The claim for infringement brought by Optis succeeds. Apple's counterclaim for revocation fails.”
Gary Moss, head of litigation at EIP, which represented Optis, said: “Technical success at the first opportunity combined with the undertaking provided by Apple is a significant step forward in Optis’ battle to secure proper compensation for Apple’s use of its portfolio consistent with its ETSI undertakings.”
In August, a Texas jury told Apple to pay Optis more than $506 million in patent royalties for wilfully infringing patents covering 4G technology.
The jury—at the US District Court for the Eastern District of Texas—found that Apple had failed to prove any of the challenged patent claims were invalid, and then concluded that Apple wilfully infringed five patents.
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