IPCom v Vodafone Suprisingly successful crown use defence

Summary/background

IPCom commenced proceedings against Vodafone in October 2018 for infringement of its patent EP(UK) 2,579,666 (the Patent) in relation to its network infrastructure equipment for 4G. The case revolved around whether this patent was infringed by Vodafone, by its use in the Mobile Telecommunications Privileged Access Scheme (MTPAS).

Following parallel opposition proceedings at the EPO, IPCom asserted two claim sets, an unconditionally amended set of claims, following the preliminary decision of the EPO, and a set of conditionally amended claims, filed in the course of the oral hearing.  A surprising outcome at first instance was reached, the Patent was held valid, essential and infringed in amended form by Recorder Douglas Campbell QC (Judge Campbell), sitting as a judge of the Patents Court. However, Vodafone succeeded in relying upon the unusual defence of Crown use in respect of several of the patents uses.

The Patent

The Patent is part of the same patent family as a previous patent which has been extensively litigated in the UK and found valid and essential to the 3G standard.

This Patent, however, relates to a method for controlling whether a particular mobile device is granted authorisation to access a given telecommunications channel at a given time. Via a SIM card, a mobile device is assigned a class number. These are grouped into "normal” device classes and “special” device classes. When access authorisation data is transmitted to the base station, a check is carried out as to whether the access authorisation data comprise of an access threshold value. This information allows the base station to give priority to the special group to immediately access the channel, thereby giving them priority access. Any remaining devices in the ordinary group must conduct a "lottery" to determine whether or not they can access the channel.  If an emergency incident occurs, this level of filtering is extremely useful, as devices used by the emergency services can then be given priority access to the telecommunications network in that area. 

Judgment

The judge found that conditional claim 1 to be valid and essential. It was concluded that added matter all turns on what is "directly and unambiguously disclosed in the original application" whereas infringement by equivalence is a difference concept. The judge agreed that no additional disclosure about the invention was submitted. "The fact that the claim uses more general language does not necessarily mean there is added matter, it just means the scope of the claim is more broad."

Analysis of crown use defence

In a comprehensive judgment, Judge Campbell had to consider a crown use defence. Vodafone surprisingly successfully relied on this defence, pleading that its use of the relevant access control mechanism when responding to an MTPAS request was covered by the defence of the crown. MTPAS provides privileged access to mobile phone networks to organisations involved in responding to an “Emergency” as defined in the Civil Contingencies Act 1994.  Once a request has been sent to mobile phone networks on or on behalf of a senior police officer in charge of the emergency response, it is activated. When Vodafone receives such a request, it activates access control in line with the request it has received. 

Section 55 of the Patents Act 1977 provides for the defence under which any government department, or any person authorised in writing by a government department, may use this defence against use of the patented invention for the purposes of services of the Crown. Submissions from the Comptroller were also heard as this case involved a point of public interest.

It was agreed between the parties that Vodafone had written authorisation from the Crown to provide priority access to its network to the emergency services under the MTPAS scheme. However, two fundamental questions were disputed:

• Firstly, when does a "use" fall within the scope of “for services of the Crown”?
• Secondly, for that use, what must be detailed in the written authorisation to fall within the protection of section 55?

IPCom argued that s56(2) provides an exhaustive list of the activities which may constitute "for services of the Crown". Both the Comptroller and Vodafone argued that the use of the word "includes" in the statute indicated that the list was unlimited. The judge agreed that the list was non exhaustive. In addition, the judge commented that the words “for services of the Crown” do not necessarily mean that the use has to benefit the Crown itself directly.  The whole purpose of the exercise is to provide the emergency services with priority access to the mobile phone network in an emergency situation. This is done so that the emergency services can best help the public, as well as helping and protecting the emergency responders themselves.  The judge was satisfied that this constitutes use for the services of the Crown. 

IPCom raised the issue that the authorisation made no mention of any particular patents. However, as Vodafone pointed out, any requirement that the relevant patent should be expressly identified might place a heavy burden on the Crown in a field, such as mobile phones, where a large number of patents might potentially be infringed by any given product or process.  The judge decided that provided that the written authorisation identifies the relevant act then Crown use is established. In particular it need not be shown that it is necessary to infringe patent X when carrying out that authorised act in order for there to be a defence of Crown use to a claim of infringement of patent X.

Finally, Vodafone raised a second defence of de minimis, (where the infringing act is so insignificant). The judge found that this defence could not be relied on, as although the network was used infrequently, it was a signification part of Vodafone's obligations as a network. The commercial aspect was found irrelevant.

Crown use has rarely been considered in UK patents cases. Following this case, it will be interesting to see how often and in what circumstances it arises.