“Contention on a shared channel 194. Where the uplink from a mobile station is a shared random access channel, there is a danger of collision between users’ signals, allowing stronger signals through and preventing weaker ones. This competition is called “contention”
“UMTS is a code division multiple access system (CDMA). The details of CDMA do not matter for present purposes except in very limited respects. One aspect of CDMA is that of frequency sharing between channels. This means that there is at least the potential for channels to interfere with each other. Interference is a function of the load carried by the channel. A second point is that it was envisaged at the priority date that, in UMTS, the use of the RACH would not be restricted to the sending of channel requests. It would also be used to send small data packets. Thirdly, it was clear that UMTS would offer multiple services, including voice and at least one type of data service. These are points which are relied on by Nokia to suggest that a random access scheme for UMTS required more in the way of flexibility than was necessary for earlier schemes.”
“This access control uses a minimum of transmission capacity for transmitting the information signals, since it is effected merely by transmitting the access threshold value.”
“The measures cited in the subclaims permit advantageous developments of and improvements to the method specified in the independent Claim 1.”
“This permits subscriber stations of a prescribed user class to be authorized to use the telecommunications channel even if the random distribution by means of access threshold value would not authorize them to access this telecommunications channel. Thus, by way of example, subscriber stations for emergency services, such as the police or the fire brigade, can be associated with such a prescribed user class and can then access the telecommunications channel with priority irrespective of the random distribution by corresponding access threshold value information.”
“33. These figures represent alternative bit patterns which are transmitted by the network to the mobile stations on a broadcast channel. The first bit in each pattern is an evaluation bit S4. In figure 3a, S4 is 0 and will be used when the network desires to control access by lottery. In figure 3b, S4 is 1 and will be used when it is desired to control access by a class method. When S4 is 0, the following four bits, S3, S2, S1, and S0, are access threshold values. These four bits can be used to transmit 16 different access threshold values to the mobile stations (16 is the number of options that four binary bits gives you). Of course, the same access threshold value will be sent to all the mobile stations. The access threshold value can be set to a greater or lesser value so as to throttle back access to the network. 34. In figure 3b the evaluation bit S4 is set to 1. In this case the second, third, fourth and fifth bits are not defined as access threshold value bits but rather as access class bits. So this pattern will be used when it is desired to control access by means of access classes. Each of the access class bits Z3, Z2, Z1 and Z0 represents a particular user class. The arrangement is such that if the access class bit has a value zero, then all the mobile stations in the associated user class can access the random access channel. If the access class bit is set to 1, then none of the mobile stations in that user class can access the channel. 35. At the end of paragraph [0033] [corresponding to paragraph [0035] of the application], the specification explains in summary that the S4 bit determines whether the second to fifth bits are interpreted in line with the first bit pattern (figure 3a) or in line with the second bit pattern (figure 3b). It would accordingly be understood that when the specification spoke earlier about granting access irrespective of access threshold value, it could be referring to sending the figure 3b bit pattern, that is to say simply basing access on access class, when there are no received access threshold value bits.”
“It is possible to arrange for a telecommunications service to be able to be used when the associated telecommunications service bit has been set.”
“In a second exemplary embodiment, in figure 3c, a third bit pattern 55 having a bit length of 13 bits is transmitted from the base station … to the mobile stations … with the information signals. The third bit pattern 55 does not have an evaluation bit S4 and therefore comprises both the access threshold value bits S3, S2, S1, S0 and the access class bits Z3, Z2, Z1, Z0. In addition the third bit pattern 55, like the first bit pattern 45 and the second bit pattern 50 as well, comprises the telecommunications service bits D2, D1, D0 and the priority bits P1, P0. Mobile stations belonging to a user class for which the associated access class bit = 0 are able to access the RACH … irrespective of the access threshold value S and of the priority threshold value P and hence possibly without evaluation thereof in the evaluation unit 60. Mobile stations belonging to a user class whose associated access class bit has been set to 1 and mobile stations which do not belong to a user class, need to perform the access threshold value evaluation already described in the first exemplary embodiment and possibly, in addition, the priority threshold value evaluation described in the first exemplary embodiment, in order to ascertain their access authorisation for the RACH …”
“In contrast to the first exemplary embodiment, the second exemplary embodiment allows access to the RACH 30 not only by mobile stations which can access the RACH 30 on account of their association with a user class but also by such mobile stations as draw a random or pseudo-random number R greater than or equal to the access threshold value S and possibly have a priority value above the priority threshold value P.”
“In comparison with the first bit pattern and the second bit pattern, the access authorization information in the case of the third bit pattern contains both the access threshold value bits S3, S2, S1 S0 and the access class bits Z3, Z2, Z1, Z0.”
“This passage is explaining that, in this embodiment, there are mobiles which will be permitted to access the RACH due to their class, as well as mobiles which will be able to access the RACH only if they “win” the lottery. The skilled person would therefore appreciate by this stage that, in this embodiment of the invention, the network can discriminate between groups of users, for example ensuring that the emergency services are permitted access without having to do the lottery. He (or she) would also appreciate that at the same time the network can control the unfavoured users’ access to the RACH by means of the lottery, by appropriate setting of the access threshold value. It would be clear that this functionality is additional to that provided by the first embodiment.”
“Mr Gould [IPCom’s expert] summarises the invention as providing, in a bandwidth efficient manner, a means for the network dynamically to adjust specific groups of users into a population with a priority access to the network independent of access threshold while at the same time using that access threshold to dynamically control the access of other users. He explains that it is bandwidth efficient by saying that it is possible only to send a single access threshold value, although of course the claim is not so limited. Again, I think this summary is a fair one to have in mind when considering the issues in the case, although it is not, of course, a substitute for the claims.”
“The numbers of bits used in the first, second and third bit patterns 45, 50, 55 for the access threshold value S, for the access class information Z0, Z1, Z2, Z3, for the priority threshold value P and for the subscriber service information D0, D1, D2 are to be understood merely by way of example and can be increased, for example for more extensive signalling and can be reduced for bandwidth reduction. In this case, the total length of the bit patterns 45, 50, 55 may also change. If appropriate, individual information components can also be omitted entirely.”
“222. The specification then goes on to describe, by reference to figures 4a, 4b and 4c a flowchart for the way in which the evaluation unit in the mobile works. I first set out figure 4a substantially as annotated in the expert report of Dr Cooper [Nokia’s expert]: SIM contains 42. read S, user class? 43. get R User class permitted? (enable access) 223. The evaluation unit is capable of evaluating both types of bit pattern, that is to say the 10 bit pattern and the 13 bit pattern. Nokia say this supports their view of the structure of the specification. To a degree it does, as it is undoubtedly the sort of evaluation unit one would need if one were arranging a network to receive both the 10 bit and 13 bit embodiments. But I do not think that alters the fact that the skilled person would appreciate that the 13 bit embodiment could be used on its own in a simpler evaluation unit, just as he would appreciate that the 10 bit embodiment could be so used on its own. 224. The first check which the unit performs is to determine which of the two lengths of bit pattern is being transmitted. The flowchart then divides at box 200 to provide appropriate processing for the different bit patterns. 225. For the 10 bit pattern, the first step is to evaluate the S4 bit to ascertain whether the four bits which follow are access threshold value bits or access class bits. There is a further branch at box 205 to accommodate each of these two possibilities, and the logic follows the appropriate course thereafter. 226. For the 13 bit pattern the evaluation unit knows that it will be receiving both access threshold information and access class information. This is shown in Figure 4c: SIM contains privileged user class? 227. So the unit checks the four access class bits (at box 285) to check whether the user class ascertained for the mobile is authorised for access. If so, access is granted subject to some further hurdles. If not, there is a second branch which leads back to the processing of threshold value at box 210 in Figure 4a. The processing of the 10 and 13 bit patterns is therefore intertwined to this extent, but again the skilled person would appreciate that this is not inevitably the case. An adapted evaluation unit just for 10 or just for 13 bits would be envisaged.”
“A European patent application or a European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed.”
“The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold: (1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application. (2) To do the same in respect of the patent, (3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”
“4. In Richardson-Vicks’ Patent[1995] RPC 568 at 576 I summarised the rule in a single sentence: “I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”
“With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application.” 6. Mr Richard Arnold Q.C. provided a clear articulation as to how the legal security of third parties would be affected if this were not the rule: “The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the “first-to-file” rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.” 7. Kitchin J has recently helpfully elaborated upon the Bonzel formulation in European Central Bank v Document Security Systems[2007] EWHC 600 (Pat) ,26th March 2007 : “[97] A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s. 130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed. [98] Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge. [99] Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed. [100] Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV’s Patent[2001] RPC 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application. [101] Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art. 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties. [102] Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.” “I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.” “With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application.” “The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the “first-to-file” rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.” “[97] A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s. 130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed. [98] Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge. [99] Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed. [100] Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV’s Patent[2001] RPC 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application. [101] Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art. 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties. [102] Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.” 8. When amendment of a granted patent is being considered, the comparison to be made is between the application for the patent, as opposed to the granted patent, and the proposed amendment (see the definition of ‘additional matter’ in s.76(l)(b)). It follows that by and large the form of the granted patent itself does not come into the comparison. This case was to some extent overcomplicated by looking at the granted patent, particularly the granted claim 1. 9. A particular, and sometimes subtle, form of extended subject matter (what our Act calls ‘additional matter’) is what goes by the jargon term ‘intermediate generalisation’. Pumfrey J described this in Palmaz’s European Patents[1999] RPC 47 , 71 as follows: “If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called “intermediate generalisation”.”
“98. We can deal with this quite shortly. The added subjectmatter is said to be contained in claim 6. Mr Silverleaf put it this way: We say that if that claim covers water soluble spheronising agents, it must also disclose the possibility of using them or it does not actually read on to them at all; because otherwise the teaching of the document is to use water insoluble ones. We say if in fact the claim is wide enough to cover water soluble spheronising agents, there must be added matter. 99. The trouble with that submission is that claim 6 does not mention – so cannot possibly teach – water soluble spheronising agents. It just specifies "a spheronising agent." The fallacy in the argument is to equate disclosure of subject matter with scope of claim, a fallacy struck down as long ago as 1991 in AC Edwards v Acme Signs & Displays[1992] RPC 131 (see e.g. per Fox LJ at p.143).”
“3. For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art in what has been expressly mentioned (Guidelines, Part C, Chapter VI, No. 5.4). In other words, it is to examine whether the claim as amended is supported by the description as filed. 4. In the decision T 260/85 ("Coaxial connector/AMP, OJ EPO, 1989, 105) the Board of Appeal 3.5.1 came to the conclusion that "it is not permissible to delete from a claim a feature which the application as originally filed consistently presents as being an essential feature of the invention, since this would constitute a violation of Article 123(2) EPC" (cf. Point 12 and Headnote). In that case the application as originally filed contained no express or implied disclosure that a certain feature ("air space") could be omitted. On the contrary, the reasons for its presence were repeatedly emphasised in the specification. It would not have been possible to recognise the possibility of omitting the feature in question from the application (Point 8). It could be recognised from the facts that the necessity for the feature was associated with a web of statements and explanations in the specification, and that its removal would have required amendments to adjust the disclosure and some of the other features in the case. 5. Nevertheless it is also apparent that in other, perhaps less complicated technical situations, the omission of a feature and thereby the broadening of the scope of the claim may be permissible provided the skilled person could recognise that the problem solving effect could still be obtained without it (e.g. T 151/84 - 3.4.1 of28 August 1987 , unreported). As to the critical question of essentiality in this respect, this is a matter of given feasibility of removal or replacement, as well as the manner of disclosure by the applicant. 6. It is the view of the Board that the replacement or removal of a feature from a claim may not violate Article 123(2) EPC provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change (following the decision in Case T 260/85, OJ EPO 1989, 105). The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the invention. Any replacement by another feature must, of course, be examined for support in the usual manner (cf. Guidelines, Part C, Chapter VI, No. 5.4) with regard to added matter.”
“According to the established case law of the boards of appeal, if a claim is restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see e.g. T 1067/97, point 2.1.3).”
“Herein lies the major source of contention between the parties. Does the second embodiment, as Nokia contend, involve the base station sending all three bit patterns? Or does the second embodiment, as IPCom contends, simply involve the transmission of the 13 bit pattern? The dispute is about whether there is a freestanding embodiment which does not involve the sending of the S4 bit …”
“217. I think both sides were trying to extract too much from the question of precisely what overall system the second embodiment was intended to describe. The real purpose of the second exemplary embodiment is to introduce the 13 bit pattern. In my judgement the skilled reader of the specification would appreciate that access to the random access channel could be controlled by the base station by sending the 13 bit pattern alone. All the information necessary to do an access threshold test and an access class test are present in the 13 bit pattern. The skilled person would also appreciate that access to the network could be controlled in a system in which the base station was capable of sending all three bit patterns. The skilled person would expect that the patentee was seeking to protect a method which involved 10 bit alone, 13 bit alone, or combinations. 218. Nokia make a number of highly semantic points on this passage. For example they lay stress on the fact that the 13 bit pattern is called a "third" bit pattern: but that does not mean that it is a third pattern which always has to be present in the second embodiment. Rather, I think it means that it is the third bit pattern to be mentioned, which it is. They also draw attention to the words "in addition" in the third sentence: but in context these words are simply referring to the additional inclusion of the D and P bits, additional information which it is not necessary to explain here. The patentee is not saying that the third bit pattern is necessarily present in addition to the first and the second. Likewise, Nokia referred to the words "and also" in the third sentence, but this is a flimsy foundation indeed for saying that the first and second bit patterns are required to be present. As IPCom pointed out, the corresponding German text uses the words "wie auch" which do not convey the meaning for which Nokia contend in any event.”
“… I do not think that alters the fact that the skilled person would appreciate that the 13 bit embodiment could be used on its own in a simpler evaluation unit, just as he would appreciate that the 10 bit embodiment could be so used on its own.”
“143. Mr Meade did not seek to challenge that finding headon. Rather he submitted that that finding did not go far enough to decide the added matter point against him. For that purpose it was necessary to find clear and unambiguous disclosure of using the 13 bit pattern alone. 144. I do not think there is anything in this point. To the extent that there is any doubt at all that the skilled person would understand that the 13 bit embodiment could be used alone, that position is unaltered by the disclosure of the granted patent. That document cannot be read as adding to the disclosure of the application about whether the 13 bit embodiment can be used alone.”
“233. In my judgment the check which is required by claim 1 is a check as to whether the mobile station is to use part of the access information to perform the access threshold evaluation. This occurs in the first embodiment when the mobile checks the S4 bit, telling the mobile that the answer to the question is "yes" if the S4 bit is set to 0 and "no" if it is set to 1. It also occurs in the second embodiment when the mobile looks at the Z bits in box 285. If a Z bit for the user class in which that mobile is included is set to 1, then the answer to the question is "yes" and it will use the access threshold information to do the lottery. If the same Z bit is set to 0, then it will not (in fact it will obtain access based on its class).”
“The difference between this functionality of IS-95 and the inventive concept is that the inventive concept has access class information which tells the mobile whether to do the lottery which is distinct from the access threshold value itself. In IS95 there is always a lottery based on received access threshold value bits, (although the network can rig the lottery in the mobile’s favour and guarantee access). To put it another way, in IS-95 there is no route to access which is independent of the received access threshold value bits. ….”
“146. I think that the skilled person would recognise that [0036] is propounding as inventive, and at a higher level than [0039], some particular features of the second embodiment. Although [0036] mentions the presence of the telecommunications service bits and priority threshold bits, I think the skilled person would recognise from this paragraph that what is being proposed is a system in which (a) both access threshold value bits and access class bits are sent; (b) depending on the setting of the access class bit, the mobile will determine whether access is to be allowed without consideration of the access threshold value, or whether it has instead to use that value and perform the lottery. 147. Both sides emphasised the need to read the application as a whole, and without hindsight. In broad, perhaps even crude, terms, both the introduction and the claims of the application follow the structure: lottery/class/priority/service. With that in mind, the skilled person would see very clearly in [0036] one way in which the first two – lottery and class – can be combined. The interaction of lottery and class is repeatedly emphasised. He would not, in my judgment think that the fact that this concept was being presented alongside the priority and service information, or prior to a more detailed explanation of the processing which involved that information, meant that the other features were essential to his concept. 148. Given that conclusion in relation to the disclosure of the application, I do not think there is any added disclosure in the patent, in the claims or elsewhere. I therefore reject this ground of added matter.”
“158. In [0025] to [0035], which contain the detailed description of the 10 bit embodiment, the three telecommunications bits are part of the 10 bits described in both Figures 3(a) and (b). In the example in [0035] it is shown how a mobile station can have access authorisation for requesting some services but not for others.”
“161. It is true that in [0039], in the description of the flow chart, the evaluation of the service bits takes place before access to the RACH is allowed. But one would expect this description to include the features of the sub-claims. The skilled person would clearly understand that if service information were to be omitted, then it would not have to be processed.”
“This is feature [C] of the claim of the granted patent. Nokia submit that IPCom need to go to the detailed description in [0039] to find this feature. But that is not correct. Paragraph [0024] explains, in the general introduction to the embodiments, that the mobile has “an access authorization card, for example a SIM card”. [0033] explains that the mobile “takes the association with a user class from the access authorization card”
“The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
“… there is no invention in stipulating a feature which is arbitrary and serves no useful purpose. It has long been established that a patent cannot be used to prevent a person from doing what is merely an obvious extension of what has been done or was known in the art before the priority date […]. The selection of a number of these products by reference to an arbitrary parameter which has no technical significance does not involve an inventive step and does not create a patentable invention. It involves no technical ingenuity and solves no technical problem.”
“36. …. Suppose the patent claim is for a plate of diameter five-and-a-quarter inches. And suppose no one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so. 37. What then is the answer to the paradox? It is this: the five-and-a-quarter inch limitation is purely arbitrary and non-technical. It solves no problem and advances the art not at all. It is not inventive. And although “inventive step” is defined as being one which is not obvious, one must always remember the purpose of that definition – to define what is inventive. That which is not inventive by any criteria is not made so by the definition. Trivial limitations, such as specifying the plate diameter, or painting a known machine blue for no technical reason are treated as obvious because they are not inventive.”
“It is also particularly important to be wary of hindsight when considering an obviousness attack based upon the common general knowledge. The reason is straightforward. In attacking a patent, attention is focussed upon the particular development which is said to constitute the inventive step. With this development in mind it may be possible to mount an attack which is unencumbered by any detail which might point to non obviousness: Coflexip v Stolt Connex Seaway (CA) [2000] IP&T 1332 at [45]. It is all too easy after the event to identify aspects of the common general knowledge which can be combined together in such a way as to lead to the claimed invention. But once again this has the potential to lead the court astray. The question is whether it would have been obvious to the skilled but uninventive person to take those features, extract them from the context in which they appear and combine them together to produce the invention.”
“Fourthly, allegations of obviousness in the light of common general knowledge alone need to be treated with a certain amount of care. They can be favoured by parties attacking the patent because the starting point is not obviously encumbered with inconvenient details of the kind found in documentary disclosures, such as misleading directions or distracting context. It is vitally important to make sure that the whole picture presented by the common general knowledge is considered, and not a partial one.”
“a means for dynamically allocating specific groups of users to obtain priority access to the network while controlling other users on a threshold value.”
“77. IS-95 is based on the CDMA interface developed by Qualcomm. A mobile station in IS-95 transmits messages on a paging channel following a random access procedure until it receives an acknowledgement from the network. Before attempting access to this channel, the mobiles have to carry out a persistence test to determine whether access is possible. 78. Each mobile is a member of an access overload class. These access overload classes correspond to the access classes of the patent. The network broadcasts a persistence value PSIST for each class. The persistence value for class n is called PSIST(n). It is therefore a class specific parameter. 79. The persistence test consists of a comparison between a random number RP with the persistence value P. P depends on the reason for the access attempt, and is calculated from the value PSIST(n) which is transmitted by the network. The standard provides formulae for the calculation of P in three cases: registration of the mobile on the network, message transmission, and all other cases (including voice)……”
“83. The result of all this is that, in the case of voice calls, the network can use the value of PSIST(n) to control how or whether the mobile class concerned accesses the RACH. Dependent on the value of PSIST(n) for the class in question, the class may obtain immediate access to the network, be effectively class-barred, or will be throttled to some intermediate extent. The mobile is only required to decode PSIST(n) and perform the persistence test to know what its rights are in every case.”
“123. It is of course always necessary, at the end, to take a step back and ask whether the claim embodies an inventive step, both in the case of the attacks based on specific publications and in the case of the common general knowledge. Nokia submitted that the invention achieved nothing in terms of functionality as compared with, say, IS-95. That is correct as far as it goes, but it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way. In the end I was not satisfied that any of Nokia’s four starting points rendered IPCom’s solution obvious.”
“Can you use your class to determine whether you are permitted to access the RACH, without referring to the lottery?”, the answer would be “Yes, I can, and I am not permitted to access the RACH because I am in a barred class. I do not need to think about the lottery to tell you that.”
“The skilled person would appreciate that what is envisaged is a system in which both access threshold value and user class information are sent to the mobile stations. The setting of the user class bit for any given class determines whether that class is able to access the RACH without doing the lottery, or whether instead it must be subjected to the lottery.”
“106. According to the minutes, a number of aspects of the development of the GSM standard were discussed. Section 5 of the minutes is entitled “Random Access Protocol on the CCCH”
“As an extreme measure group(s) of users could be excluded from system access by order of a special BCCH message. The feasability [sic] of such a measure is embedded in the questions to wp1 (annex 5).” 108. Annex 5 is entitled “Limiting access on a heavily loaded CCCH. The Annex notes that the CCCH is a vulnerable channel. It starts by explaining the limitations of reducing the re-transmission rate, namely that there comes a point when the quality of service is reduced to an unacceptable level. It says: “If this rate is reached there is no alternative but to exclude certan [sic] groups of users. On the other hand it might be necessary to allow ‘immediate’ access to special groups of users.” 109. The Annex explains that the first measure may be taken when one of two network operators in a country suffers a failure, so that all its subscribers want to access the network of the surviving operator. The step that would then be taken would be to block all “roaming” users from the malfunctioning network from accessing the other, functioning network. It continues by saying: “The second possibility occurs in emergency cases where ‘every’ subscriber wants to access the system and the overload prevents emergency services (which may be in a closed user group) to access the system.” 110. There then follows this paragraph, the import of which is hotly contested: “Wp1 is asked to give guidance to the L1EG on categories that deserve special control mechanisms to access the system, in order to be able to design signalling messages to cope with overload situations by indicating the groups of users or services that may require special priority to access the system. The L1EG advises though, to limit categories to the vital ones only, in view of the signalling complexity involved.”” “As an extreme measure group(s) of users could be excluded from system access by order of a special BCCH message. The feasability [sic] of such a measure is embedded in the questions to wp1 (annex 5).” “If this rate is reached there is no alternative but to exclude certan [sic] groups of users. On the other hand it might be necessary to allow ‘immediate’ access to special groups of users.” “The second possibility occurs in emergency cases where ‘every’ subscriber wants to access the system and the overload prevents emergency services (which may be in a closed user group) to access the system.” “Wp1 is asked to give guidance to the L1EG on categories that deserve special control mechanisms to access the system, in order to be able to design signalling messages to cope with overload situations by indicating the groups of users or services that may require special priority to access the system. The L1EG advises though, to limit categories to the vital ones only, in view of the signalling complexity involved.””
“Having heard and then re-read the evidence on this document I prefer IPCom’s submissions. The document is not suggesting any form of lottery by-pass. The situations discussed both involve heavy overload of the RACH. Lowering the retransmission rate so as to lower the chance of mobiles getting access is having no effect. So you either reduce the load by removing a big class such as roaming subscribers from another network, or you effectively stop all the traffic to let the emergency services through. It would make no sense to create a lottery by-pass for the emergency services onto the ex hypothesi overloaded RACH.”
“… The patent would not be understood to be pretending that the invention would work without modification in whatever UMTS system was ultimately agreed. This case is nothing like a patent where there is a missing essential ingredient. The cross-examination of Mr Gould did not show that a system could not have been built based on the draft standards: it merely showed that it would not have been possible to guess what choices would be made in the final standards, and that if there was a difference the phone would not work. The insufficiency attack therefore fails.”
“Access permission for the [RACH] is determined on the basis of an evaluation of the access threshold value by comparison of the access threshold value with a random number or pseudo random number.”
“In the original N96 the mobile repeatedly undertook the lottery until successful, comparing the persistence value Pi and the random number. In the New Device the mobile calculates once and for all a timing delay, and the mobile waits that long before attempting access. The delay calculation involves calculating a value of “n” using both R and Pi according to the following calculation: n = log(1− R32769) log1− Pi 32769 If R is less than Pi the result of the equation is less than 1. The software then truncates that value to zero and gives access. Otherwise it is given access after a delay. Nokia says that this means that there are two (additional) differences from the claims of 189. Firstly there is no comparison in the sense of claim 1. Secondly access to the random access channel is not “assigned” on the basis of the comparison in the sense that the mobile decides whether it will get access: the mobile knows it will get access and learns when this will occur. As to the comparison, it is plain that the delay calculation depends critically on a comparison of R and Pi as these are the only variables on the right hand side of the equation. Dr Cooper accepted that the formula provided an indirect comparison of R and Pi. I reject this distinction. As to the second point, access to the channel is still assigned based on a comparison of R and Pi. The fact that a delay is introduced does not alter this. Accordingly the differences introduced by the New Device would not avoid a finding of infringement if the 189 patent were valid.”