In Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others [2020] EWHC 2746 (Pat), the court held that a patent relating to mobile phones was valid and essential to various GSM standards, and therefore Apple devices operating under those standards infringed the patent. Apple’s claim for revocation failed and Optis’s claim for infringement succeeded.
The patent had previously been held to be valid in Unwired Planet v Huawei [2015] EWHC 2097 (Pat) which led to the Supreme Court decision on FRAND.
Apple had argued that the patent was not valid after the decision of the European Patent Office Technical Board of Appeal in Agrevo (T0939/92). That decision applied to chemical compounds in herbicides. There had been a line of cases in the EPO in which claims to broad classes of chemical compounds alleged to have some common technical effect have been rejected under for obviousness when there was nothing to show that they would all have that technical effect. The Agrevo case is best understood in the context of the EPO’s problem and solution approach to obviousness. This approach involves identifying a technical effect delivered by the claim. The focus of the enquiry on obviousness is then centred on whether it would be obvious to the skilled person, on the basis of the prior art, how to achieve that technical effect. The question becomes the more mundane one of whether it would be obvious to produce similar compounds to those in the prior art. The EPO Board of Appeal held that the compounds were obvious.
However, the judge also considered a subsequent judgment in Samsung v Apple [2013] EWHC 467 (Pat), which Samsung made a claim against Apple for infringement of three patents relating to mobile phones/tablet computers. Before that, it might have been thought that Agrevo obviousness was an issue which 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. Floyd J said in Samsung that there is no reason why Agrevo obviousness cannot apply to the field in which he did apply it in that case (telecommunications) or in any other technical field. The principle was a general one.
Birss J agreed, while pointing out that the principle of Agrevo obviousness was 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. 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 does have to be obvious over something in the state of the art –perhaps common general knowledge or some cited prior art.
