Facts

The claimant, Optis Cellular Technology LLC, is a member of the Optis group, which is the proprietor of a European Patent (UK) entitled “Method for improving handovers between mobile communications systems” (the Patent). Optis claimed that the Patent was valid and essential to the then relevant mobile telecoms standards and that it was therefore being infringed by the defendant, Apple Retail UK Ltd.

Apple denied that the patent was essential and contended that it was invalid for obviousness. One of the grounds of obviousness relied on by Apple was Agrevo obviousness (Agrevo UK Ltd (T 0939/92 (Triazoles) (12 September 1995)).

The Patent was previously the subject of the judgment in Unwired Planet International Ltd v Huawei Technologies Co Ltd [2016] EWHC 576 (Pat) in which Mr Justice Birss had found that the Patent was valid and essential to the then relevant mobile telecoms standards.

Decision

Considering the relevant standards in this case, Birss J concluded that the Patent was indeed essential and therefore had been infringed by Apple.

Birss J noted that Apple’s allegation of Agrevo obviousness involved a point of principle arising from the judgment in Samsung v Apple [2013] 468 (Pat), in which Mr Justice Floyd (as he then was) had held that a Samsung patent was invalid on a number of grounds, including Agrevo obviousness.

The Samsung decision was notable, Birss J said, because hitherto it might have been thought that Agrevo obviousness was an issue that only really arose in chemical/pharmaceutical patents, when the claimed compounds or sub-classes of them were arbitrary and did not amount to a solution to the problem to be solved. Birss J agreed with Floyd J that there was no reason why Agrevo obviousness could not apply to telecommunications or to any other technical field, as the principle was a general one.

However, Birss J said, care needed to be exercised when stating what the principle actually is. The principle is not that a claim which contains an arbitrary feature is invalid. Merely having an arbitrary feature in a claim is not a ground of invalidity, Birss J said. The point of Agrevo obviousness is that if a claim is found to contain an arbitrary limitation in it, then that limitation cannot assist the patentee in defending an obviousness case. The claim still has to be obvious over something in the state of the art, e.g. common general knowledge or prior art.

For example, a claim to a 9½ inch plate would be Agrevo obvious, but not just because the 9½ inch diameter is arbitrary and irrelevant, but also because plates are obvious.

In Apple v Samsung, Floyd J had said that in his judgment “the claim is to a class of configurations which do not have any common technical benefit. It is obvious on the Agrevo basis as well”. Birss J said that, taken out of context, this might be read as if the claim was invalid simply because it claimed a class with no common benefit (and was therefore arbitrary) and for no other reason. However, Birss J did not think that that was what Floyd J had meant. The sentence was a brief summary of the conclusion and did not seek to lay down a wider principle based on Agrevo than that explained above.

In this case, Birss J said that if conversion of measurements (to render them comparable on handover) was an arbitrary feature then the claim in question would be Agrevo obvious. However, Birss J found that conversion was not arbitrary. Conversion had the result that the converted values had two beneficial properties, which were shared by everything within the claim. Where the beneficial properties existed across the full width of the claim, there was no reason based on Agrevo or anything else why the inventors should have limited their claim to particular instances of the taking advantage of those benefits.

Therefore, Birss J found that the Patent was valid and essential to the relevant standards. The claim for infringement brought by Optis succeeded and Apple’s counterclaim for revocation failed. (Optis Cellular Technology LLC v Apple Retail UK Ltd [2020] EWHC 2746 (Pat) (16 October 2020) — to read the judgment in full, click here).