Vringo v ZTE: inventive step and the impact of proposed changes to a standard

From Jan Pot (Brinkhof N.V., Amsterdam) comes news of a recent court battle between Vringo and ZTE, which led to a ruling late last month from the District Court of The Hague. The battlefield was Vringo’s EP 1 186 119 (“EP 119”), which the court nullified for lack of inventive step.  This decision [in Dutch here, and with an informal English translation here] contains some interesting considerations on the closest prior art and problem inventions. Jan takes up the story as follows:

Since 2012, ZTE and Vringo have been involved in litigation on a number of patents, which are part of a portfolio of ca. 500 patents which Vringo purchased from Nokia. EP 119 is one of those patents. In the Netherlands, litigation started in 2014 when the Dutch customs stopped several shipments of ZTE equipment. Vringo attached part of these goods, alleging infringement of EP 119. The preliminary relief Judge of the District Court The Hague refused to lift this attachment, inter alia because he considered the outcome of nullity proceedings on EP 119 too uncertain.

In 2007, EP 119 was upheld by the European Patent Office's Technical Board of Appeal (TBA) in opposition proceedings initiated by Qualcomm. It has also been the subject of infringement proceedings in Germany, where in 2013 the Landgericht Mannheim refused to stay the infringement proceedings pending the nullity proceedings before the Bundespatentgericht as it considered the chance of revocation insufficient.

EP 119 claims a method for transmitting a certain sequence of symbols, and is according to Vringo essential for the UMTS standard. More specifically, it pertains to the situation in which a UMTS base stations transmits so-called synchronization information on the synchronization channel when a functionality called time-switched transmit diversity, or TSTD, is in use.

ZTE advanced several nullity grounds, including lack of novelty, lack of inventive step and added matter. The Court only dealt with inventive step. It found the patent obvious, starting from the latest draft for the UMTS standard published before the priority date, referred to as TS 25.211 V2.1.0, as closest prior art, in combination with a document referred to as TSGR1#5(99)677. This document, which was published by one of the working groups working on the UMTS standard at the time, proposed changes to the draft standard. The Court held that the skilled person would read these two documents together, and in doing so would be confronted with the problem for which the patent aims to provide a solution.

Vringo argued that EP 119 was in essence a problem invention. However, the Court held that Vringo failed to make sufficiently clear why that would be the case. A number of factors were only first advanced by Vringo during the hearing, while the same number of factors were only briefly touched upon in a rather difficult to follow declaration by its expert, Dr. Moulsley. Neither the patent nor Vringo’s Statement of Defence mentioned these ‘pieces of the puzzle’ as joint causes of a problem. What’s more, the District Court did not find these arguments persuasive when looking at other prior art publications and an e-mail exchange between several technical experts who already discussed the issue. Although Vringo disputed that interpretation of the e-mail exchange, it did not provide any convincing explanation as to what they would then be discussing. Finally, the Court stated that restraint must be observed in assuming the existence of a problem invention, referring to TBA case law (T 971/92).

The Court then concluded that ZTE had rightly argued that there were essentially two options to solve the problem, both of which were obvious to the skilled person. On this issue the Court disagreed with the TBA, which had held that there were multiple options. The viability of those other options was discussed before the Court by ZTE and Vringo. In the end and having heard both parties’ experts, the Court was of the opinion that the other options were either not viable or less obvious. In other words, the Court was convinced that the two options mentioned by ZTE were the “natural” solution to redress the problem with which the skilled person was confronted due to the change made by TSGR1#5(99)677. The Court concluded that the choice for the one of the two obvious solutions is not inventive and that no pointer to either one is required.

Brinkhof, through a team consisting of Ruprecht Hermans, Richard Ebbink, Gaëlle Béquet and Jan Pot, represented ZTE in these proceedings.  This summary is based solely on the decision itself and not on information from the file not reflected in the decision.

One in the eye for Novartis: EP 258 valid in NL but not UK

In his ruling published today in Novartis AG and Cibavision AG v Johnson & Johnson Medical Ltd and others [2009] EWHC 1671 (Pat), Mr Justice Kitchin (Patents Court, England and Wales) held that Novartis's controversial '258 patent was invalid for insufficiency, through Johnson & Johnson's attacks based on lack of novelty and obviousness failed. J&J's Oasys lens fell in the scope of claims 1 and 24 of that patent, but not claims 8 or 11.

The same patent was held valid and infringed on 11 February 2009 in the Netherlands (see earlier PatLit post here), in a judgment that was very much shorter, possibly because it did not occupy 16 days of court time.

Every decision in which national versions of a European patent are upheld in one country but not another is a nail in the coffin of the opponents of European patent litigation reform.

Obvious to try? Beware!

The full text of the decision is not yet available on the BAILII database, but Mr Justice Kitchin's decision in ratiopharm (UK) Limited and another v Alza Corporation; Alza Corporation and another v Sandoz Limited [2009] EWHC 213 (Pat) -- picked up by LexisNexis Butterworths -- reminds how to go about establishing inventive step.  The dispute related to, inter alia, the validity of a patent for a transdermal patch for the delivery of the opioid fentanyl.   The judge held the patent infringed, but invalid. 

According to the note on this case, the judge's approach to obviousness was as follows:

"In addressing the question of obviousness, it was convenient to use the following structured approach. First, the notional 'person skilled in the art' and the relevant common general knowledge of that person had to be identified. The common general knowledge was the common stock of knowledge of the persons skilled in the relevant art. Second, the inventive concept of the claim in question had to be identified, or, if that was not possible, the claim had to be construed. Third, what, if any, differences existed between the matter cited as forming part of the 'state of the art' and the inventive concept of the claim or the claim as construed had to be identified. Finally, the court should ask whether, when viewed without any knowledge of the alleged invention as claimed, those differences constituted steps which would have been obvious to the person skilled in the art or whether they required any degree of invention. In answering that final question, the court had to take into account all the relevant circumstances. Further, the court should be aware of the danger of allowing 'obvious to try' arguments to invalidate commercially valuable patents in research-intensive fields".

Without seeing the case in full, it is not possible to appreciate the context and strength of the warning in that final sentence. It will be good to see if the judge explains how the commercial value of a  drug patent -- which is not crystallised until a future post-patent phase in which the regulatory niceties have been complied with -- relates to the patent's obviousness, which is an inherently retrospectively measured criterion of validity.

The judge's words also lead to an interesting thought about inventive step. In the UK many approaches have been developed by those who seek to persuade a court that a patent lacks inventive step. These range from highly technical assessments of the prior art and what the notional person(s) skilled in the art might have made of it, through to market-based tests such as "long-felt want" or "commercial success" which pay little or no serious attention to prior art at all. The greater the number of bases for arguing inventive step, the greater the time and cost invested in dealing with them. What would come in handy would be an algorithm for establishing which tests were vital, useful or irrelevant in which situations, which might be drawn to the attention of the parties when an action was still in its case management phase. Would this be feasible, I wonder?