Optis v Apple [2023] EWCA Civ 438
This was an appeal by Optis from an order of Meade J dated 10 December 2021 revoking European Patents (UK) Nos. 2093953, 2464065 and 2592779 (concerning the use of Linear Congruential Generators (LCGs) in the Physical Downlink Control Channel of a telecommunications system) for the reasons given in [2021] EWHC 3121 (Pat). The Judge’s decision was made following the third technical trial (Trial C) between Optis and Apple in their dispute over the terms of a FRAND licence of Optis’ portfolio of allegedly standard-essential patents. Apple accepted that the Patents are essential to the LTE 4G mobile telecommunications standard, and therefore infringed if valid. The Judge held that the Patents were obvious over Slides R1-081101 entitled “PDCCH Blind Decoding – Outcome of offline discussions” presented at a meeting of RAN1 (Radio Access Network Working Group 1) on 11-15 February 2008 (Ericsson). The Judge held that the reference text, Numerical Recipes in C 3rd edition (NRC3), did not create a prejudice against the use of LCGs as claimed in the Patents. Optis appealed.
The appeal was heard by Lord Justices Arnold, Nugee and Birss on 14-15 March 2023. The Court allowed the appeal by a majority (Birss LJ dissenting). The successful ground was that the Judge erred in finding that the statements in NRC3 deprecating LCGs were of low relevance to obviousness. The Court construed NRC3 to mean that the skilled person would have been deterred from making the claimed inventions.
Adam Gamsa appeared as junior counsel for Apple, instructed by Wilmer Cutler Pickering Hale and Dorr LLP.