Court Of Appeal Allows Appeal On Crown Use Defence In Mobile Telecoms Patent Case

• Published date: 14 April 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Mobile & Cable Communications, Patent
• Law Firm: Wiggin
• Author: Mr Calum Smyth

Facts

The claimant, IPCom GmbH & Co KG, is the proprietor of a portfolio of telecommunications patents. IPCom issued proceedings against Vodafone Group plc for infringement of one of its European Patents (UK) entitled, "Allocation of access rights for a telecommunications channel to subscriber stations of the telecommunications network" (the Patent). IPCom contended that the Patent was essential to operating access control in accordance with an optional part of the LTE (4G) standard, and that Vodafone had infringed the Patent prior to a re-design implemented by Vodafone shortly before trial. Vodafone contended that the Patent was invalid and disputed infringement.

As a result of pending opposition proceedings before the European Patent Office also in relation to the Patent, IPCom made two applications to amend the claims of the Patent, the first unconditionally and the second conditionally. At trial the first set of amended claims was referred to as the "unconditionally amended claims" and the second set as the "conditionally amended claims".

At first instance, the judge held that the unconditional amendments were impermissible on the ground of added matter, but that the conditionally amended claims were valid. He held that some of Vodafone's allegedly infringing acts infringed, but that others did not, in some cases due to his construction of the claims and in other cases because Vodafone had a defence of Crown use.

Both parties appealed various of the judge's findings. In particular, IPCom challenged the judge's construction of one of the conditionally amended claims which underpinned his conclusion of non-infringement in some cases and his conclusion that Vodafone had a defence of Crown use in others.

Decision

Lord Justice Arnold dismissed IPCom's appeal on the judge's construction of one of the conditionally amended claims. However, he allowed the appeal in relation to the Crown use defence.

Under s 55 of the Patents Act 1977, any Government department and any person "authorised in writing by a government department" can, "for the services of the Crown" use a patented invention without the consent of the proprietor of the patent.

At trial, the judge had found that one of Vodafone's uses of the invention, which was providing access to its network for use by emergency responders under the Mobile Telecommunications Privileged Access Scheme (MTPAS), was subject to the Crown use defence under s 55.

On appeal, IPCom said that the judge had erred when...