Background

The claimant, Conversant Wireless Licensing Sarl is the owner of a European Patent designating the UK, entitled ““Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA) along with service specific transmission time control” (the Patent).

Conversant issued proceedings against Huawei Technologies Co Ltd for infringement of the Patent, claiming that the Patent was essential to an element of the Universal Mobile Telecommunications Standard (UTMS) and infringed by Huawei’s marketing of certain mobile phones that complied with UTMS. Huawei counterclaimed for revocation of the Patent on various grounds, including that of added matter.

At first instance, the High Court found in favour of Huawei and revoked the patent for added matter. Conversant appealed.

Decision

Giving the lead judgment, Lord Justice Floyd observed that Conversant’s added matter objection arose out of amendments that were made to the claims, partly in the course of the prosecution of the patent and partly in the litigation. No change was made to the technical disclosure in the body of the specification. Therefore, if there was added matter, it was because the amendments to the claim, when considered as a whole, used language that disclosed something further about the invention. It was not a matter of considering what the claim in question covered, but what it disclosed.

Having analysed the relevant case law on added matter and having considered the disclosures of the Patent, Floyd LJ said that, if the word “transmitting” were given its ordinary or literal meaning, then the claims of the patent disclosed matter that was not disclosed in the application as filed.

However, Conversant argued that “transmitting” should be given a different meaning, arguing that it meant “able to transmit” or “active”, rather than actually transmitting, resulting in the skilled person not understanding the disclosure as requiring a check for actual transmission, as the High Court had found.

Floyd LJ said that the Court of Appeal was not shown any material suggesting that the High Court had been asked to interpret “transmitting” in the way Conversant contended. None of the examples raised by Conversant of evidence and arguments from the trial went as far as to suggest that “transmitting” in the claim was not concerned with actual transmission at all. The point was therefore a new one and was “not properly ventilated at trial”.

As for whether, had it been properly raised at trial, there would have been a need for new evidence, Floyd LJ noted that although the meaning of a document is, in the end, a question of law, the correct interpretation of a passage in a patent specification is a matter to which evidence of those skilled in the art can be relevant. This can take a number of forms, he said. Whilst evidence of the meaning of ordinary English words is inadmissible, experts are frequently, and properly, asked to address the consequences of a particular term, on assumptions as to its meaning. They also conventionally address the relevant factual matrix, i.e. the common general knowledge. In Floyd LJ’s view, there were real difficulties with the new construction advanced by Conversant, which it was reasonable to assume that Huawei would have wished to explore with Conversant’s expert and he was not persuaded that Huawei had had a proper opportunity of addressing this potential construction of the claim in evidence at the trial. It was therefore not fair to Huawei to allow the new construction to be raised for the first time on appeal.

Further, the issue of meaning did not appear in Conversant’s grounds of appeal or skeleton argument. It had therefore been raised for the first time in oral submission in the Court of Appeal. Floyd LJ therefore dismissed the appeal. (Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd [2020] EWCA Civ 1292 (8 October 2020) — the judgment is available in full and on the Lawtel website