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12 July 2018Patents

Philips patent invalidated in SEP fight with HTC and AsusTek

The English High Court has held that a standard-essential patent (SEP) owned by technology company Philips is invalid, two months after it upheld the validity of another related SEP in the same dispute.

Mr Justice Arnold delivered his decision on Tuesday, July 10.

Philips accused two Taiwanese electronics companies, HTC and AsusTek, of infringing three European (UK) patents that it had declared essential to the European Telecommunications Standards Institute’s (ETSI) Universal Mobile Telecommunications System, a 3G standard.

The patents (numbers 1,440,525; 1,685,659; and 1,623,511) cover sections of the 3G standard directed to the operation of the High Speed Packet Access (HSPA) system.

Both HTC and AsusTek sell HSPA-compatible mobile devices, and Philips alleged that the Taiwanese companies are infringing the patents, which are essential to the HSPA standard.

In May, Arnold examined the validity and essentiality of the ‘525 patent. At the trial, HTC and AsusTek argued that the patent, called “Radio communications system”, is obvious in light of two pieces of prior art.

Arnold disagreed. He upheld the validity of the patent and also determined that it had been infringed by the Taiwanese companies, as argued by Philips.

However, earlier this week, in the second trial in this dispute, Arnold determined that the ‘659 patent, called “A radio communications system, method of operating a communications system, and a mobile station”, is invalid.

At trial, HTC and AsusTek again claimed Philips’ patent is invalid due to obviousness.

They argued that prior art discloses a fractional dedicated channel with the aim of minimising code usage which contains transmit power control (TPC) bits and dedicated “pilot bits”, and a skilled person would know that the pilot bits were not necessary.

Philips’ ‘659 patent covers an invention which leaves the pilot bits out of the fractional channel to free up system resources.

In response, Philips said there is “no suggestion” in the prior art that the pilot bits should be omitted, and in fact it would “go against the grain of the skilled person’s thinking” to do so because of the impact it could have on compatibility and implementation.

Arnold agreed with HTC and AsusTek that omitting the dedicated pilot bits from the prior art was a “technically obvious choice” for a skilled person with general knowledge in the area, and ruled that Philips’ ‘659 patent is invalid.

The judge explained that Philips’ argument based on the impact on compatibility is limited, as it is based on the costs of implementing the new channel without the pilot bits. If the skilled person was not concerned with costs, “it would be obvious to remove the pilot bits”, Arnold explained.

He added that as “further technical issues” have emerged, a third—and possibly fourth—trial may be necessary to address the validity of the final patent in the dispute and “issues relating to Philips’ undertaking to ETSI to grant licences on FRAND (fair, reasonable, and non-discriminatory) terms”.

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25 May 2018   The English High Court has said a standard-essential patent owned by Philips is valid and has been infringed by HTC and AsusTek Computer.
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