Date: 16 September 2019
In its recent decision in Conversant Wireless Licensing Sàrl v Huawei Technologies Co Ltd, the Patents Court held a European patent for 3G mobile phone technology invalid on the ground of added matter.
The defendants made five allegations of added matter, but only the fourth allegation succeeded. Mr Justice Arnold found that a certain granted claim feature was not disclosed in the application as filed, and the attempt to make the claims robust against added matter attacks failed. Conversant’s patent was therefore found to be invalid for added matter.
Had the patent been valid, it would have been essential to the implementation of an aspect of the third-generation mobile phone Universal Mobile Telecommunications Standard (UMTS) referred to as “Uplink DRX” and, consequently, both Huawei and ZTE would have infringed, as both had marketed mobile phones using this UMTS.
This decision is interesting in that application of the doctrine of equivalents to interpretation of a claim cannot mean that subject-matter is added to the claim, but any amendment (whether pre-grant or post-grant) must be made with great care so as not to add matter. Here, it seems, Conversant came unstuck by relying on an unsupported amendment that should not have been allowed pre-grant and could not be saved by merely adding words to the claim as supporting “glue”.
Our full article is published in C.T.L.R. (2019) 25: Issue 7; pages 177 - 180.
Contact our Wireless and Mobile Communications team for more information.