The post on Novelty and the Inventive Step analysis of Ericsson’s eight patents has been divided into two parts – Part A and Part B.
Part A covers the assessment of novelty and inventive step analysis involving Ericsson’s patents which are based on adaptive multi-rate (AMR) speech codec technology, i.e., IN 203034, IN 203036, IN 234157, IN 203686, and IN 213723, hereinafter referred to as “AMR patents”. Part B covers the novelty and inventive step analysis pertaining to Ericsson’s patents essential for implementing 3G standards (IN 229632 and IN 240471) and EDGE standard (IN 241747).
This post discusses Part A of the analysis of Novelty and Inventive Step in Ericsson Vs. Lava case which covers the AMR patents.
1) IN 203034
In order to invalidate this patent, Lava relied upon the ITU-T Recommendation G.729 titled ‘Coding of Speech at 8kbit/s using conjugate-structure algebraic-code-excited linear prediction (CS-ACELP)’ issued by the ITU-T (Telecommunication Standardization Sector). The Court provided a tabular chart comparing the different elements of the prior art and the invention in IN203034. Based on a comparison between the G.729 document (prior art) and the claims of IN 203034, the Court noted that there was a significant overlap in the methodology and the technology.
Relevant paragraphs:
“151. In my considered view, the novelty of the patent is indeed tested by the prior art document G.729 due to significant overlaps in methodology and technology. Both the prior art and IN 203034 address linear predictive analysis-by-synthesis encoding, employ vector quantization of gains, and process speech in subframes, which are foundational to the Claims of IN 034. While IN 034 introduces specific mechanisms for internal state synchronization and error weighting, these are incremental enhancements at best and not groundbreaking departures from the established G.729 standard, which has been relied upon as a prior art by Lava”.
Decision:
The Court held that the patent granted to IN203034 was liable to be revoked and that there was no requirement to proceed with a further analysis on lack of inventive step.
2) IN 203036
Novelty:
The objective of patent application IN203036 was to improve the efficiency and accuracy of speech signal processing and transmission in communication systems through a specific speech encoding technique that focuses on key differences in waveform and energy parameters. In order to invalidate this patent, Lava relied upon the same prior art i.e. G.729 document which was applied for the first patent as lacking novelty. On comparing these two documents, the Court noted that the patent application IN 203036 introduces a specific technique for gain quantization, which significantly enhances the efficiency and quality of speech encoding beyond what has been disclosed in the prior art.
Relevant Paragraphs:
“186. However, I deem that it is necessary to highlight the differences between that IN 036 substantially distinguishes itself from prior art, particularly the methods detailed in section 3.9 of the referenced document, through several innovative facets. It introduces a specific technique for gain quantization, which significantly enhances the efficiency and quality of speech encoding beyond what has been disclosed in the prior art. Additionally, IN 036 integrates new parameters and considerations into the quantization process, aspects not explored in the Section 3.9 of the prior art cited by Lava. Moreover, the unique integration and interaction in IN 036 with other components of the speech encoding system provide distinct advantages and features, setting it apart from conventional methodologies described in IN 036”.
Decision:
The Court held that the patent IN203036 substantially distinguishes itself from prior art G.729.
Inventive step:
The Court then moved on to analyze the next prior art ETS 300 726 (1996) which outlines the procedures and requirements for converting speech into a digital format that can be efficiently transmitted over the GSM network. It was agreed by the Court that the patent application IN 203036 and the prior art ETS 300 726 (1996) shared similarities in the context of speech encoding. However, some differences in the specific processes, techniques, and the integration within the broader communication system in both the documents were noted by the Court. In view of the same, the Court opined that the patent application IN 203036 provided significant advancements and novel contributions to the field of speech encoding and introduced a unique approach that adaptively adjusted the balance between waveform and energy matching, thereby enhancing the encoding process.
Relevant paragraphs:
“192. In light of the detailed comparison between the Claims of IN 036 and the specifications outlined in ETS 300 726, it is evident that IN 036 presents significant advancements and novel contributions to the field of speech encoding. In my considered view, IN 036 introduces a unique approach that adaptively adjusts the balance between waveform and energy matching, enhancing the encoding process beyond the capabilities described in ETS 300 726, which relies on the ACELP coding scheme. This adaptive adjustment for encoding of various speech signals, particularly for improved noise-like signal encoding at reduced bit rates, underscores the innovative step beyond the cited prior arts. Further, IN 036 indicates a clear advancement in integration within communication systems, offering potential unique features not contemplated by the prior art of ETS 300 726.”
The Court further proceeded to evaluate the second prior art relied upon by Lava which was an IEEE research paper titled “Code-Excited Linear Prediction (CELP): High-Quality Speech at Very Low Bit Rates” authored by Manfred R. Schroeder and Bishnu S. Atal (hereinafter referred to as ‘Schroeder’). The research paper presented a novel approach to speech coding and aimed at achieving high-quality speech reproduction at very low bit rates. On analysis, the Court noted that Schroeder primarily focuses on the general codebook-driven linear prediction of speech signals and does not specifically address the issue of noise segments at low bitrates. The Court opined that the technical advancements claimed in IN203036, particularly in addressing of noise segments at low bitrates and the employment of different error criteria and balancing, would not have been obvious to a person skilled in the art at the time when IN203036 was filed.
“199. Consequently, the technical advancements claimed in IN 036, particularly in addressing of noise segments at low bitrates and the employment of different error criteria and balancing, would not have been obvious to a person skilled in the art at the time when IN 036 was filed. While Schroeder discloses a general approach to CELP coding, it does not provide any guidance or suggestion on how to specifically handle noise segments or employ different error criteria and balancing in the context of low bitrate speech encoding.”
Decision:
By evaluating both the prior art documents, ETS 300 726 and Schroeder individually and collectively, the Court held that there were no grounds for revocation of the patent IN203036. The Court also directed to issue a certificate of validity of the complete specification of IN 203036 in accordance with section 113 of the Patents Act.
3) IN 234157
Novelty:
In order to invalidate this patent, Lava relied upon the same prior art document i.e. G.729 for lacking novelty. The claim of lack of novelty was made in respect of a specific identified extract of the G. 729 document in the written statement and counterclaim.
Relevant paragraphs:
“230. Upon a comparison of the cited portion of the standard and the Claims of IN 157, it becomes clear that Claim 25 of IN 157 aligns with the cited portion of the standard. However, Claims 1, 12, 19, and 22 emphasize a deterministic selection procedure for codebook identification, independent of signal type, which is not addressed in the cited prior art. However, the cited portion of the standard provides some technical aspects of a codebook structure, while the Claims of IN 157 encompass broader encoding/decoding methods and apparatuses, with claim 25 specifically relating to the codebook structure”.
Decision:
The Court held that the portion of the extract cited by Lava from G. 729 did not directly impact the novelty of Claims of IN 234157.
Inventive step:
The Court then proceeded to assess the challenge to the validity made by Lava on account of lack of inventive step in view of four prior art documents. The first prior art document was a research paper titled “Multi-Band CELP Coding of Speech and Music” authored by Anil Ubale and Allen Gersho (hereinafter ‘Anil Ubale’) and the second prior art was another research paper titled “Wideband speech coding using multiple codebooks and glottal pulses”authored by C. McElroy, B.P. Murray, A.D. Fagan (hereinafter referred to as McElroy). Further, the third prior art document relied upon by Lava was the draft European Telecommunication Standard (ETS) ETS 300 726 and the fourth prior art was a research paper titled ‘CELP coding at 4.0 kb/sec and below: improvements to FS-1016’, which has been authored by Richard L. Zinser and Steven R. Koch (hereinafter ‘Zinser’).
The first prior art Anil Ubale discusses a low-delay wideband speech coder called Multi-band CELP (MB-CELP) which was a specific approach for wideband speech coding with a focus on reducing delay. Lava claimed that this document illustrates a similar concept to IN 234157, challenging its inventive step. However, the court noted that the implementation of multiple codebooks differs in the prior art and the patent IN234157.
Relevant paragraphs:
“239. In light of the above analysis, while both IN 157 and Anil Ubale share a common focus on CELP coding and the use of multiple codebooks, they differ in their specific approaches and implementations. The inventive step of IN 157 lies in its use of multiple equally-sized, distinct codebooks with a deterministic selection procedure, independent of signal type. This is distinct from the prior art’s emphasis on off-line filtered multi-band excitation codebooks and full-band linear prediction synthesis. Therefore, the inventive step of IN157 appears to be sufficiently differentiated from the prior art to maintain its inventive contribution.”
The Court further proceeded to evaluate the second prior art McElroy which proposed the use of a coder for near-transparent wideband speech coding, utilising multiple codebooks and synthetic glottal pulses with adaptive bit allocation. A table summarizing the differences in the key concepts, elements, implementation, and application between the second prior art and IN234157 was submitted by the Court. Upon analysis, the Court noted that the technical advancements claimed in IN234157 would not be obvious to a person skilled in the art.
“247. In my considered view, the technical advancements claimed in IN 157, as defined by its claims and the inventive concept, are distinct from the disclosures made in the prior art. The focus in IN 157 is on a deterministic selection procedure for codebook identification, independent of signal type, and the use of multiple equally-sized, distinct codebooks for speech signal processing are novel and inventive approaches that are not addressed in the prior art cited by Lava. Further, these advancements contribute to efficient and high-quality speech coding, which would not be obvious to a person skilled in the art, given the unique integration of these elements in IN 157”.
The Court then moved on to analyze the third prior art Zinser which proposed enhancements to the standard CELP algorithm to improve speech quality while reducing transmission rates. A table comparing the key elements and concepts of Zinser and IN234157 was provided by the court. On further analysis, the Court noted that IN234157 exhibited technical advancement over Zinser.
“257. After considering the similarities and differences between the Claims and Inventive Concept of IN 157, in my considered view, IN 157 exhibits a technical advancement over Zinser. While Zinser focuses on improving speech coding at low bit rates through multi-mode excitation and spectral vector quantization, IN 157 introduces a novel approach with multiple equally-sized, distinct codebooks and a deterministic selection procedure. This unique method enhances speech coding efficiency and quality by ensuring optimal codebook selection for various speech signals, representing a significant technical advancement in digital speech communication technology. Further, in my considered view, the technical advancement claimed in IN 157 would be non-obvious to a person skilled in the art because it introduces a unique approach to codebook selection and usage that is not addressed in the prior art. The deterministic selection procedure, combined with multiple equally-sized, distinct codebooks, represents a significant departure from traditional speech coding methods, offering a unique solution to enhance speech coding efficiency and quality. Therefore, this approach would not be readily apparent to someone familiar with existing speech coding techniques, making it a non-obvious advancement in the field”.
Decision:
The Court held that the teachings, suggestions, and motivations of all four cited documents combined did not appear to affect the technical advancement of the claims or inventive concept of IN 234157 and hence directed the issuance of a certificate of validity of IN234157.
4) IN 203686
Novelty:
In order to invalidate this patent, Lava relied upon 3 separate prior art documents. The first prior art was a research paper titled “The Newfoundland-Azores High-speed Duplex Cable”by J. W. Milnor and G.A. Randall (hereinafter ‘Milnor’), second prior art was a standard document for IEEE 802.11 Standard, 1997 and the third prior art was PCT application bearing publication number WO/1997/041549.
On analyzing the first prior art Milnor, the Court noted that Milnor discussed various concepts crucial to the development and operation of the Newfoundland -Azores high-speed duplex cable. However, the Court relied that the inventive concept of IN203686 addresses different aspects of communication systems than the prior art Milnor.
Relevant paragraphs:
“289. The analysis of Milnor has already revealed that the said research paper discusses the high-speed duplex cable, which focuses on the physical and electrical design of a submarine telegraph cable for simultaneous two-way communication. The key concepts discussed in Milnor are the use of loaded and non-loaded cable sections, tapered loading, artificial line equipment for impedance matching, and techniques for signal amplification and duplex balancing. However, the inventive concept of IN 686, covers a method, communication station, and system for transmitting information in a communication system using different codec modes. The Claims focus on the use of mode indications and mode requests to identify and select the appropriate codec modes for processing information on different links. Therefore, the inventive concept of IN 686 addresses different aspects of communication systems than the prior art, Milnor. While Milnor is concerned with the physical and electrical design of a submarine telegraph cable for duplex communication, IN 686 is focused on the method and system for processing information using different codec modes in a communication system. Therefore, Milnor does not affect the novelty of the inventive concept of IN 686 and in fact has no causal link to IN 686.”
The Court held that Milnor did not affect the novelty of the inventive concept of IN203686 and in fact had no causal link to IN203686. The court then moved on to consider the second prior art i.e. IEEE 802.11 Standard, 1997.A detailed comparison of the key elements, distinctions, and commonalities between the inventive concept of IN203686 and the second prior art IEEE 802.11 standard was provided by the Court. In view of the same, the court noted that the second prior art only shares some general concepts with IN203686 but does not specifically disclose the aspects of IN203686 related to the transmission of mode information and the decimation of the rate of transmission to reduce bandwidth consumption.
“295. Based on the above analysis, while the IEEE 802.11 standard may share some general concepts with IN 686, such as mode indication and mode requests, it does not specifically disclose the aspects of IN 686 related to the transmission of mode information and the decimation of the rate of transmission to reduce bandwidth consumption. Therefore, in my considered view, the novelty of IN 686 is not compromised by the disclosures made in the IEEE 802.11 standard published in 1997.”
It was held by the Court that the novelty of IN203686 was not compromised by the disclosures made in the IEEE 802.11 standard published in 1997. Further, the court considered the third prior art WO/1997/041549 which disclosed various methods and apparatus for controlling and determining encoding and decoding modes in a communication system. The court identified the differences between the two patents, thereby understanding the specific contributions each patent made to the field of communication systems and assessed the novelty of IN203686 in light of the disclosures in WO/1997/041549.
“307.Based on the above discussion, the novelty of IN 686 over WO 549 is evident in its specific features related to the management and transmission of codec mode information, as well as its approach to synchronization. Consequently, I have identified the points of novelty of IN 686 over WO 549 through a tabular representation.”
Decision:
Based on the analysis, the Court held that the patent IN203686 was not anticipated by the third prior art WO/1997/041549.
Inventive step:
The prior arts relied upon by Lava in respect of the ground of lack of inventive step include: i. WO/1997/041549, which was previously cited for lack of novelty. ii. The AMR Study Group Report Version 1.0 of 1997 [hereinafter DW-1/23]. iii. The article titled “An Adaptive Multi-Rate Speech Codec based on MP-CELP Coding Algorithm for ETSI AMR Standard”by Hironori Ito et al. (1998) [hereinafter DW-1/25]. On analyzing the first prior art, the Court noted that there are no teachings in the prior art that would prompt a skilled person to modify or adapt the teachings in WO/1997/041549 to arrive at the explicit transmission method claimed in IN203686.
Relevant paragraphs:
“317. In conclusion, the application of various tests to assess the inventive step of IN 686 in light of the prior art WO 549, reveals that IN 686 claims a novel and inventive method of explicit transmission for efficient codec mode management and bandwidth optimization. In my considered view, the said advancement is not suggested by WO 549 and there are no teachings in the said prior art that would prompt a skilled person to modify or adapt the teachings in WO 549 to arrive at the explicit transmission method claimed in IN 686. Therefore, the approach in IN 686 is not an obvious modification of WO 549 and the explicit transmission of mode indicators and requests in different frames for bandwidth optimization represents a distinct and non-obvious solution. Consequently, the challenge to the patentability on the basis of WO 549 does not succeed.”
The Court then moved on to assess the second prior art DW1/23 and third prior art DW1/26 and noted that the specific implementation as disclosed in IN203686 was not addressed in DW1/23 and DW1/26 respectively.
Decision:
Based on a detailed analysis, the court held that the specific technical advancement of IN203686 was not an obvious modification of the prior arts (DW1/23 and DW1/26) to a person skilled the art and accordingly directed the issuance of a Certificate of Validity for IN203686.
5) IN 213723
The Court noted that the claims of this patent were directed towards a method and apparatus for generating comfort noise parameters in a speech decoder. The invention involves modifying comfort noise parameters based on the variability of background noise.
Novelty & inventive step:
In order to invalidate this patent, Lava relied upon six prior art documents. However, the Court considered only three prior arts (D2, D3, and D4) as only these prior arts were filed with the Counter claim and for which evidence was led by Lava. The first prior art was a recommendation from the European Telecommunications Standards Institute (ETSI) that describes the baseband operation of full-rate speech traffic channels in GSM mobile stations and base stations titled “Discontinuous Transmission (DTX) for Full-Rate Speech Traffic Channels” (hereinafter ‘GSM 06.31’), the second prior art was again a recommendation from the ETSI titled “Comfort Noise Aspects for Full-Rate Speech Traffic Channels” (hereinafter ‘GSM 06.12’), and the third prior art was an ETSI standard document titled ‘Comfort Noise Aspects for Half-Rate Speech Traffic Channels’ (hereinafter ‘D4’).
The Court analyzed both the Novelty and inventive step aspects together with respect to the Ericsson’s patent, unlike the other patents where Novelty analysis and inventive step analysis were dealt with separately.
Relevant paragraphs:
Comparison between the Ericsson’s patent and the first prior art
“365. While both IN 213723 and GSM 06.31 address the generation of comfort noise, the technical details and specific methodologies differ. IN 213723 provides a novel approach to dynamically modifying comfort noise parameters, whereas the present prior art outlines the overall DTX mechanism, including voice activity detection and the transmission of characteristic parameters for comfort noise generation. The differences in technical focus and specific methodologies imply that IN 213723 offers novelty and incorporates an inventive step over the disclosures in the prior art.
366. In summary, while GSM 06.31 provides a foundation for the concept of generating comfort noise parameters, IN 213723 builds upon this foundation by proposing a specific method and apparatus for dynamically modifying comfort noise parameters in response to background noise variations. Consequently, I find that the invention claimed in IN 213723 exhibits novelty and inventive step over GSM 06.31.”
Comparison between the Ericsson’s patent and the second prior art
“367. In comparing IN 213723 with GSM 06.12, it is evident that both documents relate to comfort noise aspects in telecommunication systems. However, GSM 06.12 primarily focuses on the general principles and requirements for generating and inserting comfort noise in full-rate speech traffic channels, without providing specific details regarding the dynamic modification of comfort noise parameters based on background noise variations. On the other hand, IN 213723 presents a detailed method and apparatus for achieving such dynamic modifications, thereby enhancing the quality and efficiency of comfort noise generation. Consequently, the specific technical advancements claimed in IN 213723 would not have been obvious to a person skilled in the art based on the disclosures in GSM 06.12.”
Comparison between the Ericsson’s patent and the third prior art
“368. Similarly, in comparing IN 213723 with D4, it is evident that both documents address comfort noise aspects in telecommunication systems. However, D4 primarily focuses on generating comfort noise for half-rate speech traffic channels and lacks specific details regarding the dynamic modification of comfort noise parameters based on background noise variations. IN 213723, in contrast, provides a detailed method and apparatus for achieving such dynamic modifications, thereby improving the quality and efficiency of comfort noise generation. Consequently, the specific technical advancements claimed in IN 213723 would not have been obvious to a person skilled in the art based on the disclosures in D4.”
Decision:
The Court held that the challenges to the patentability of Ericsson’s patent based on the first, second, and third prior art did not succeed. The court directed the issuance of a certificate of validity of IN213723 in accordance with section 113 of the Patents Act.
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. Anjali Santhosh and Ms. Sowmya S. Murthy, Patent Team, BananaIP Counsels.
Read the next part here – Part B
Also read
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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