English appeals court rejects Apple invalidation appeal
Apple has lost its bid to invalidate a standard-essential patent (SEP) owned by Texas-based Optis Cellular Technologies in the UK.
Yesterday, June 13, the English Court of Appeal rejected Apple’s appeal against a June 2021 decision by the English High Court which held that Apple had infringed European patent (UK) number 2,229,744 B1.
At the time, Justice Richard Meade was unconvinced of Apple’s arguments that Optis’ patent—which covers a “method and arrangement in a wireless communication network”—was obvious or anticipated.
The action began as a patent infringement claim brought by Optis against Apple in February 2019. By the time of the June 2021 judgment, it was “common ground that the patent was essential/infringed”, said the Court of Appeal.
Meade gave permission for Apple to appeal on novelty, but rejected Apple’s proprietary estoppel case and refused permission to appeal. The Court of Appeal also refused Apple’s application for permission on the proprietary estoppel ground.
On appeal, the sole question was whether Optis’ patent was anticipated by a prior art document referred to as InterDigital (TDoc R2-071618). According to Apple, claims 1, 6 and 9 of the ‘744 patent were invalid as they lacked novelty.
“In general, Apple submits that the judge failed to take proper account of its language, context and purpose when interpreting the patent,” said yesterday’s ruling.
Apple had claimed that Meade had wrongly constructed (by accepting Optis’ construction) for the words ’counting’, ‘resetting’ and ‘when’.
However, the appeals court sided with the High Court, dismissing each facet of Apple’s appeal.
Concluding, Lord Justice Birss, on behalf of the court, said: “On the construction arrived at above, it is common ground that there is no anticipation of any of claims 1, 6 or 9 by the prior art. It is therefore not necessary to examine the further arguments arising on the anticipation case.”
Birss added that Meade “held that even on Apple’s construction claims 6 and 9 were novel because the fact the prior art method produces the same result as the claim method in special rare but not unrealistic circumstances did not mean it was the same method”.
This point was argued on appeal, which Birss said raised an issue about the relationship for the “purposes of novelty between a method claim and a situation in which the method described in the prior art would (so it was contended) be within the claim in those special circumstances".
Birss said that while this brings up the question as to whether there is an analogy with Hoechst Celanese v BP Chemicals (1998) and also whether and if so how the requirement for an inevitable result works, he would not deliberate on this. Instead, he said would prefer to address them in a case in which they would be decisive.
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