This post discusses the Court’s analysis of Section 3(k) concerning Ericsson’s eight patents, against which Lava had filed a counterclaim seeking invalidation based on Section 3(k) amongst others.
Facts
The suit filed by Ericsson against Lava was based on the infringement of eight Standard Essential Patents (SEPs) relating to technology areas as provided below:
- Adaptive Multi-Rate (AMR) speech codec – IN 203034, IN 203036, IN 234157, IN 203686, and IN 213723
- Enhanced Date Rates for GSM Evolution (EDGE) – IN 241747
- Features in 3G – IN 229632 and IN 240471
3(k) Analysis of the first Patent: IN 203034
This patent, titled “Linear Predictive Analysis by Synthesis Encoding Method and Encoder,” according to Ericsson, is one of the SEPs essential for implementing the Adaptive Multi-Rate (AMR) standard. The object of this patent was to increase coding efficiency by vector quantizing the optimal gain parameters of several sub-frames. Based on the summary of the invention and the claims, the Court noted that one of the problems solved by the invention was how to deal with the decrease in coding efficiency at low bit rates when the number of bits available for each parameter decreases and the quantization accuracy suffers. Further, the Court noted that, in the context of the patent, coding efficiency refers to reducing the bitrate for speech encoding while preserving high audio quality, maintaining synchronization between the encoder and decoder, and achieving these objectives without excessively complicating the encoding process.
Independent Claims of the Invention:
- A linear predictive analysis-by-synthesis coding method, characterized by determining optimum gains of a plurality of subframes;
vector quantizing said optimum gains; and
updating internal encoder states using said vector quantized gains.
- A linear predictive analysis-by-synthesis encoder, characterized by
a search algorithm block (50) for determining optimum gains of a plurality of subframes;
a vector quantizer (58) for vector quantizing said optimum gains; and
means (50, 52, 54, 56) for updating internal encoder states using said vector quantized gains.
Analysis:
Based on the analysis of the method claim 1, the Court opined that the method claim 1 comprised steps of (i) determining optimum gains of subframes, (ii) vector quantizing these gains, and (iii) updating internal encoder states using the quantized gains. On analyzing certain portions from the description, the Court stated that the method independent claim 1 was directed towards algorithms as the crux of the invention involves a search algorithm and consequent updating of the states of the encoder and decoder. Regarding the device independent claim 8, the Court opined that the technical advancement on the device was predominantly achieved by means of the algorithm.
Relevant paragraphs:
Strongly opining that the subject matter of the patent was directed at algorithmic processes, the Court stated the following:
“145. The main objective of the invention is to improve coding efficiency at low bitrates and maintain synchronization between the encoder and decoder’s internal states. The algorithms significantly contribute to achieving this goal, while the implementation involves the strategic use of hardware components and specific encoding techniques. In summary, algorithms are integral to the function of the encoder described in this invention. The solution to the problem as presented in the description is centered around algorithms. The algorithms are central to the design choices and functioning of a comprehensive encoding system that includes algorithms as a substantial part of its operation.
146. I have already noted that, in OpenTV (supra), a Coordinate Bench of this Court, has clarified that in India, due to the unique nature of Section 3(k) of the Patents Act, the bar on grant of patents on mathematical or business methods and also algorithms have to be read as an absolute bar without analyzing issues relating to technical effect, implementation, technical advancement, or technical contribution., In the present invention, the specific mention of a ‘search algorithm block’ implies that the algorithm is an essential part of the encoder’s design and functionality. The indications that the invention is about a physical device that uses an algorithm as part of its operation make it clear that the technical advancement of the invention relies on algorithms at the heart of the solution. Therefore, there is merit in the counter-claim of the Lava that IN’034 is liable to be revoked as it conforms to non-patentable subject matter in terms of Section 3(k) of the Patents Act.”
Decision:
Based on the above analysis, the Court stated that the patent was liable to be revoked on the grounds of Section 64(1)(d) read with Section 3(k) of the Patents Act.
3(k) Analysis of the second Patent: IN 203036
The Court noted that the second patent titled “Apparatus of producing from an original speech signal a plurality of parameters” described a speech encoding apparatus which involves three key processes:
(i) generating a further signal closely representing the original speech,
(ii) extracting parameters crucial for reconstructing an approximation of the original signal, and
(iii) determining parameters based on waveform and energy differences between the original and further signals.
Lava challenged the validity of this patent based on the grounds that:
(i) the invention was based on a mathematical method,
(ii) the main inventive feature was an algorithm,
(iii) the speech encoding claimed in the invention was itself an algorithm, and
(iv) the speech codecs are implemented through computer programs.
Though the Court agreed that the invention did involve the use of mathematical methods, the Court stated that the invention processes an original speech signal to generate a further signal and uses a controller to analyze and encode this speech signal, and that therefore, the invention was more than just performing mathematical calculations.
Relevant paragraphs:
“177. To encapsulate, while the invention indeed leverages mathematical methods, particularly in the encoding phase, its essence is not confined to these techniques alone. It represents a holistic integration of mathematical algorithms, signal processing methodologies, and physical hardware, all coalescing within a communication system. In my view, this synergy elevates the invention beyond the scope of mere abstract algorithms or mathematical methods.
178. … In the present invention, no ground for claiming that the invention is an algorithm is made out as the invention is clearly directed towards an apparatus and a larger communication system, which is ensuring the better transmission and receiving of the speech signal.”
Decision:
The Court held that the challenge to the validity of the second patent does not succeed on the ground that the inventive concept and the claims of the patent are merely algorithms and non-patentable subject matter under Section 3(k) of the Patents Act, 1970.
3(k) Analysis of Ericsson’s third Patent: IN 234157
On analysing the Complete Specification, the Court noted that the inventive concept of the patent titled “A Method of Encoding/Decoding Multi-Code Book Fixed Bitrate CELP Signal Block’, lies in the use of a specified CELP (Code Excited Linear Predictive) encoding and decoding method and apparatus. Further, the Court noted that the patent distinguished between fixed and algebraic codebooks thereby broadening its use in both audio frames as well as subframes. Further, the Court highlighted that the invention provided a technical advancement of presenting a flexible and precise mechanism for enhancing digital speech encoding and decoding, thereby providing a significant improvement over prior arts in the context of quality and efficiency of digital speech communication.
Lava challenged this patent on the following grounds:
(i) The inventive concept was based on mathematical method.
(ii) The invention falls under the preview of algorithms and it does not extend beyond abstract ideas.
(iii) Speech codecs were typically realized through computer programs which are not patentable.
Relevant paragraphs:
After analysing all the key elements of the independent claims, the Court opined as shown below:
“223. In light of the above assessment, the clear position that emerges is that the inventive concept of IN’157 is based on the integration of diverse elements and methodologies which lead to a technical advancement. This integration of various elements is essential in achieving the novel solution described by IN’157. Undoubtedly the solution is technical in nature and not merely an abstract concept.
224. The integration of components as delineated by the Claims of IN’157 is of algorithms, processes and hardware components. One of the specific integration steps in IN’157 is the integration of a deterministic selection procedure, with tailored hardware, exemplified by specialised encoders and decoders. In my considered view, this synergy enables the processing of speech signals in novel and innovative ways, enhancing both efficiency and quality.
225. The deterministic selection process, which I have assessed to be primarily an algorithm, is intricately designed to complement the operational capacities of the encoders and decoders, such that it results in optimal codebook selection for superior speech processing. This precise alignment between algorithms, processes and their integration in a specific hardware, such that the current capabilities of the said hardware are enhanced underscores the contribution of IN’157 in advancing digital speech communication.”
Decision:
The Court held that no grounds for seeking invalidation of the patent have been made out.
3(k) Analysis of Ericsson’s fourth Patent: IN 203686
On analysing the Complete Specification, the Court noted that the inventive concept of this patent titled ‘Method and System for Alternating Transmission of Codec Mode Information’ described a method and system for transmitting and receiving information in a communication system using at least two different codec modes. After analyzing the claims of the invention, the Court stated that the inventive concept was linked to the dynamic adaptation of codec modes for transmitting and receiving information in a communication system, based on mode indications and requests transmitted in specific frame patterns. Further, the Court pointed out that, as per the teachings of the Complete Specification, the invention enables efficient utilization of communication resources and provides an improved system performance due to adaptation of varying channel conditions and data source activity.
Lava challenged the validity of this patent on the grounds that the patent described an algorithm, mainly focusing on the method for transmitting information.
Relevant paragraphs:
After analysing the arguments presented by both the parties, the Court opined as follows:
“280. In my considered view, the Independent Claims of the invention, particularly Claim 1, which describes a method for transmitting information using different codec modes, and Claim 26, which describes a communication station with a processor and a receiver for processing mode indication information, support Ericsson’s contentions that IN’686 is not merely an algorithm. Claim 28, which describes a system for transmitting information, further reinforces the argument that the invention encompasses more than just an algorithmic method, as it involves enhancing the functionality of hardware components and systems for implementing the method.
281. In light of the evidence presented by both the parties and the independent claims of the invention, I hold that IN’686 is not merely directed to an algorithm. While the method for transmitting information does involve algorithmic elements, the invention as a whole encompasses a system and apparatus for implementing the method, addressing a technical problem in digital communication systems, and resulting in a further technical effect on mobile devices.”
Decision:
The Court therefore held that the patent was not barred by Section 3(k) of the Patents Act, 1970.
3(k) Analysis of Ericsson’s fifth Patent: IN 213723
On analysing the Complete Specification, the Court noted that the inventive concept of this patent titled ‘Method and apparatus for generating comfort noise in a speech decoder,’ dealt with improving the quality of artificial background noise in speech codecs, specifically when there was speech inactivity. On analysing the Complete Specification of the patent, the Court noted that the invention disclosed methods and systems for generating comfort noise in a speech decoder by adjusting comfort noise parameters based on variability information from background noise parameters, such as spectrum and energy. The object of the invention was to produce more natural-sounding comfort noise by computing deviation values from the mean of background noise parameters and incorporating them into the generation process. The invention also disclosed an apparatus which includes components for determining the mean and time variability of background noise, as well as an auto-regressive predictor filter for processing noise parameters.
Lava challenged the validity of this patent by contending that the claims of the invention were directed towards algorithm, computer program per se, and mathematical method, and therefore being non-patentable under Section 3(k) of the Patents Act, 1970.
The Court opined the following regarding the assessment of patentability in the context of mathematical method:
“The question of assessment of patentability would depend on the nature of the Claims, if the Claims apply a mathematical method to a specific technical problem or process, in a physical apparatus, then they will be considered patentable and not liable to be revoked. However, if the mathematical method is an integral part of the novel and inventive process for generating comfort noise in a speech decoder, it shall not be eligible for patent protection in terms of Section 3(k) of the Patents Act as I have already discussed while revoking IN 203034.”
Relevant paragraphs:
After analysing the arguments from both the parties, the Court stated the following:
“357. The Claims demonstrate a technical advancement by incorporating mathematical methods into a specific technical process, addressing the issue of unnatural comfort noise in communication systems. The integration of algorithms within physical components like the variability estimator and modifier, as evidenced in mobile phone implementations, underscores the physical application of the invention. The Claims transcend mere abstract mathematical concepts, providing a tangible technical solution, thereby meeting the essential criteria required for patentability. Therefore, after consideration of all the contentions of the parties and thorough examination of the Claims of the patent in consideration. The method and apparatus for generating comfort noise in speech decoders is held to be eligible for patent protection and the counter claim for revocation on the ground of ineligible subject matter does not succeed.
358. I recognise that inventions based on mathematical methods are typically non -patentable. However, in this case, the invention pertains not only to a method but also to an apparatus that enhances functionality and generates artificial speech or background noise. This production of artificial noise constitutes a physical entity.”
Decision:
The Court therefore held that the counterclaim for revocation of the patent on the ground that the invention falls under algorithm did not succeed.
3(k) Analysis of Ericsson’s sixth Patent: IN 240471
This patent was titled ‘‘A Mobile Radio for Use in a Mobile Radio Communications System’. On analysing the Complete Specification of this patent, the Court noted that the key aspect of the invention was about event-based reporting implemented within mobile phones, involving the measurement of radio-related parameters and transmission of data to the Radio Access Network (RAN) solely upon meeting predetermined conditions or events.
Relevant paragraphs:
With regard to the contentions of Lava, which stated that the subject matter of the claims was not patentable under Section 64(1)(k), Section 3(m) and Section 3(k) of the Patents Act, amongst others, the Court opined the following:
“395. In my considered view, the Claims of IN’471 describe a mobile radio with specific functionalities related to measuring, evaluating, signalling, and controlling handover and power control parameters in a mobile radio communications system. These functionalities involve hardware and software components working together to perform complex operations that are beyond the scope of mere mental acts or simple algorithms. While the invention does indeed incorporate algorithms as part of its operation, for instance for evaluating handover conditions or managing power control, the Claims are directed towards an implementation of various processes, including algorithms in a mobile radio system. This integration of measurement, signalling, and control functionalities within the mobile radio hardware and its interaction with the network cannot be deemed to be a mere mental act or an invention merely directed towards an algorithm.
396. Based on the analysis, the Claims and the inventive concept of IN’471 do not appear to relate solely to an algorithm or a mental act. Instead, they describe a technical implementation of these concepts in a mobile radio system, which is a patentable subject matter.”
Decision:
The Court concluded, based on the analysis, that the claims and the inventive concept of the patent did not appear to relate solely to an algorithm or a mental act.
3(k) Analysis of Ericsson’s seventh Patent: IN 240471
This patent titled ‘Multi-Service Handling by a Single Mobile Station’ was related to 3G standard. Based on the reading of the Complete Specification, the Court stated that the inventive concept of the patent was linked to a mobile station designed to efficiently process multiple data services for transmission to a base station. Further, the Court identified that the key aspects of the invention included the following: combining similar Quality of Service requirements into a single logical channel, multiplexing data portions from these services into transmission blocks, prioritizing data to maintain transmission rates, and mapping logical channels onto physical channels while ensuring transceiver output remains below a predetermined level.
Lava contended that the invention disclosed by the patent was algorithmic in nature.
Relevant paragraphs:
Opining that the patent does not fall under the purview of an algorithm, the Court stated the following:
“446. In my considered view, while the Claims of IN’632 do describe a sequence of operations or instructions that the mobile station should perform, they are not limited to just being a sequence of instructions. Instead, they define a combination of hardware and software components that work together to achieve the described functionalities. The Claims of IN’632 specifically mention ‘means for receiving,’ ‘means for processing,’ ‘means for separating,’ and so on, which implies that a combination of hardware and software components have been designed to perform these specific tasks.
447. Therefore, in respect to the submission regarding IN’632 only being a sequence of instructions, I have come to the assessment that IN’632 is not directed solely towards a sequence of instructions. While the Claims of IN’632 do involve certain procedural steps, these steps are integrated within a technical solution that includes specific hardware components and methods for processing and managing data services in a mobile station. Therefore, the Claims and the Complete Specification outline various means and methods that are part of a comprehensive system, going beyond just a sequence of instructions. Thus, the contention of Lava that IN’632 should be revoked on the ground that the patent is only directed towards a sequence of instructions and not a technical solution, does not succeed.”
3(k) Analysis of Ericsson’s eighth Patent: IN 241747
This patent titled ‘A transcieving omit unit for block automatic retransmission request’, which was a Standard Essential Patent related to implementing EDGE standards. Lava contended that the patent disclosed a simple scheme or an algorithm for a communication protocol.
While analysing the claims and description of the patent, the Court provided clarity on using “means” in the claims and also assessed the claims using the means plus function approach.
The Court classified the patent as a product patent and noted that the invention of the patent related to the design and functionalities of a transceiving unit used in communication systems for block ARQ.
Relevant paragraphs:
The Court stated the following regarding the usage of “means” in the claims and the ‘means plus function approach” :
“475. In the context of patents, there is often a debate if ‘means’ claims can be patented. In the context of the present patent, i.e., IN’747, I am of the view that when ‘means’ claims are part of an invention that includes a novel and non-obvious method or system and when the ‘means’ refer to components or elements of an invention that perform a specific function, they can be patentable. In conclusion, ‘means’ can be patented when claimed in the format of ‘means plus function’. To be patentable, these ‘means’ must be part of an invention that meets the standard criteria of novelty, inventive step, and industrial applicability. The patentability also depends on how these ‘means’ are integrated into the overall invention and contribute to its unique functionality.
476. Taking into consideration the present invention, in the ‘means plus function’ approach, Independent Claim 1 specifies a function to be performed, which includes receiving a negative acknowledgement signal, dividing a block and retransmitting blocks. Therefore, the term ‘means’ in the present invention refers to the components or elements that perform these functions. This approach focuses on the functionality of the components rather than their specific physical structure or design details.
477. Before moving on with the analysis of validity of the patents, I would also maintain that ‘means plus function’ claims can exist in a product patent as well. In the context of product patents, ‘means plus function’ claims define a component or part of the product in terms of the function it performs, rather than its specific structure or design. In my considered view, the language of ‘means plus function’ claims language allows for a relatively broader scope of protection, covering various implementations of the function, provided they are equivalent to the described means. However, I would caution that for ‘means plus function’ claims to be valid, the Complete Specification must sufficiently disclose the structure that performs the claimed function, ensuring clarity and enforceability.”
Analysis – relevant paragraphs:
Opining that the invention of the patent was not solely related to an algorithm, the Court stated the following:
“486. Given the evidence and the nature of the claims in IN’747, which detail the components and functionalities of a transceiving unit with adaptive modulation and FEC coding schemes, the patent is focused on the physical embodiment of these methods in hardware components. I am of the view that the essence of IN’747 is embodied in tangible hardware solutions for error correction. Therefore, in my considered view IN’747 is directed towards the enhanced functionality of a transceiving unit in a mobile device, highlighting improvements in communication systems. The focus on the Claims of IN’747 towards a physical embodiment, rather than any algorithm, underscoring the focus of IN’747 on improvement of the functionality of the transceiving unit.
Except in the case of the first patent, IN 203034, the Court ruled that the counterclaim seeking invalidation based on Section 3(k) in case of the other seven patents did not succeed.
Citation: Lava International Limited v. Telefonaktiebolaget LM Ericsson, High Court of Delhi, 28th March, 2024, CS(COMM) 65/2016, CS(COMM) 1148/2016 and CC(COMM) 14/2017.
Authored by Ms. Sowmya S. Murthy, Patent Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Anjali Santhosh, Patent Team, BananaIP Counsels.
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Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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