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 covers Part B of the novelty and inventive step analysis pertaining to Ericsson’s patents essential for implementing 3G standards (IN 229632 and IN 240471) and EDGE standards (IN 241747).
The Court’s analysis of novelty and inventive step with respect to patents essential for implementing 3G and EDGE standards are provided below:
6) IN240471
The Court noted that the patent which is titled ‘A Mobile Radio for Use in a Mobile Radio Communications System’ was a Standard Essential Patent, essential for implementing 3G standards. The patent deals with managing handovers and power control.
Novelty:
In order to invalidate this patent based on Novelty, Lava relied upon a research paper by Daniel Wong and Teeng Joon Lim, “Soft Handoffs in CDMA Mobile Systems,” published in IEEE Personal Communications in 1997 (hereinafter ‘Daniel Wong’).
The Court analyzed the teachings of Daniel Wong and the inventive concept of Ericsson’s patent and laid out the differences via a tabulation. The Court noted that the inventive concept of Ericsson’s patent was related to a mobile radio’s ability to measure, evaluate, and signal handover-related parameters, which the Court stated were not explicitly detailed in Daniel Wong.
Relevant paragraphs:
“399. From the above analysis, it is clear that both Daniel Wong and the inventive concept of IN’471 focus on handoff processes in mobile communication systems. In addition, both are underscoring the importance of optimising handoff parameters and the role of power control is emphasised in both. Further, the concept of maintaining a connection with multiple base stations during a handoff is similar to the inventive concept of IN’471 focusing on measuring handover-related parameters for multiple cells. However, in my considered view, the inventive concept of IN’471 specifically claim a mobile radios ability to measure, evaluate, and signal handover-related parameters, which is not explicitly detailed in Daniel Wong. …
400. Therefore, while Daniel Wong and the inventive concept of IN’471 share similarities in focusing on handoff processes and optimisation in mobile communication systems, IN’471 specifically claims the measurement, evaluation, and signalling of handover-related parameters, which is not explicitly detailed in the prior art. Therefore, it can be concluded that IN’471 possesses novelty in its approach to handover parameter management in mobile communication systems.”
Decision:
The Court held that Daniel Wong did not affect the novelty of the inventive concept of Ericsson’s IN’471 patent and that Ericsson’s patent possessed Novelty, particularly in its approach to handover management in mobile communication systems.
Inventive step
The prior arts relied upon by Lava in respect of the ground of lack of inventive step include:
i. US 5267261 (hereinafter ‘Blakeney’).
ii. A research paper titled ‘Handoffs in Cellular Wireless Networks: The Daedalus Implementation and Experience,’ published in the Kluwer Journal on Wireless Personal Communication in January 1997 (hereinafter ‘Srinivasan’).
iii. Standard specification issued by ETSI (hereinafter ‘DW-1/40’)
iv. Standard specification issued by 3GPP (hereinafter ‘DW-1/41’).
Analysis w.r.t. the first prior art:
On analyzing the document Blakeney, the Court noted that Ericsson’s patent IN’471 involved a technical advancement over Blakeney by introducing a method for managing handovers in cellular radio systems, utilizing event-based reporting and predetermined conditions to optimize network performance.
Relevant paragraphs:
“406. Therefore, the inventive concept of IN’471 offers a significant technical advancement over the prior art by implementing a specific method for managing handovers in cellular radio systems. The introduction of event-based reporting in IN’471, where the mobile station communicates handover-related parameters to the Radio Access Network (RAN) only upon the occurrence of specific predetermined events, greatly reduces unnecessary signalling traffic. Further, in IN’471, the evaluation of these parameters against predetermined conditions ensures that handovers are executed only, when necessary, thereby optimising network performance and resource allocation. This approach enhances the efficiency of the handover process, leading to improved network stability and user experience.
407. Based on the analysis, it is evident that IN’471 demonstrates a technical advancement over the prior art by introducing a more efficient method for managing handovers in cellular radio systems. The incorporation of event-based reporting and evaluation against predetermined conditions is a novel approach that reduces unnecessary signalling traffic and optimizes network performance. This technical advancement would not have been obvious to a person skilled in the art, as it represents a significant departure from conventional handover management techniques.”
Analysis w.r.t. the second prior art:
With respect to the second prior art Srinivasan, the Court analysed the inventive step provided by Ericsson’s patent on the basis of the inventive concept of the patent. The Court opined that Ericsson’s patent IN’471 provided a technical advancement over Srinivasan. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“413. Based on the above analysis, it is evident that the inventive concept of IN’471 exhibits technical advancement over Srinivasan by introducing a specific event-based reporting approach for handover management, which is more targeted and condition-specific compared to Srinivasan’s multicast-based protocol. The technical advancement of IN’471 is amplified by the fact that the approach disclosed in IN’471 ensures that handover-related actions are taken only when necessary, optimizing network performance by reducing unnecessary signalling traffic. In addition, IN’471 focuses on predetermined conditions for handover management providing a more precise and efficient mechanism for resource allocation in cellular networks.
414. While Srinivasan primarily addresses data transmission services, IN’471 encompasses a broader scope, including mobile and voice communication, further highlighting its technical advancement. In my considered view, the event-based reporting approach and evaluation against predetermined conditions in IN’471 represent a significant departure from handover management techniques, including those given in the prior art, thus, showcasing an innovative method for optimising network performance. In light of these significant departures from the conventional techniques and also considering the knowledge prevalent from the prior arts, the features of IN’471 would not be readily apparent to a person skilled in the art, further emphasising the inventive step in IN’471.”
Analysis w.r.t. the third and fourth prior arts:
With respect to the third and fourth prior arts (DW-1/40 and DW-1/41), the Court opined that Ericsson’s patent IN’471 provided a technical advancement over these two prior arts. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“424. In my considered view, there is a technical advancement in IN’471 over the prior arts. The key technical advancement in IN’471 lies in its event-based reporting mechanism, which is a departure from the conventional periodic measurement reporting systems detailed in the prior art documents cited by Lava. In the conventional systems, mobile stations perform periodic measurement reporting, sending measurement reports to the network at regular intervals, regardless of whether there have been significant changes in the radio environment. This leads to unnecessary network load and may not provide timely information for the network to respond to rapid changes in the radio conditions. In contrast, IN’471 introduces a mobile radio station that acts as a flexible and adaptive measurement tool for radio network control. It is designed to provide reporting of radio-related parameters based on satisfying predetermined events or conditions. This means that the mobile radio station only sends reports to the network when specific events occur or certain conditions are met, such as a significant change in signal strength or quality. This event-based reporting mechanism enables the radio network to promptly and effectively respond to the changed conditions and perform necessary operations, such as handover or power control adjustments, in a timely manner.
425. Therefore, the above technical advancements in IN’471 provides a more efficient and responsive approach to measurement reporting in mobile radio communication systems, reducing unnecessary network traffic and improving the network’s ability to manage radio resources effectively. Thus, IN’471 complies with the inventive step requirements.
426. Therefore, the inventive step of IN’471 is not rendered suspect by the prior arts individually or collectively, nor is the specific technical advancement an obvious modification of the prior arts to a person skilled the art.”
7) IN 229632
The Court noted that the patent which is titled ‘Multi-Service Handling by a Single Mobile Station’ was a Standard Essential Patent, essential to the 3G standards.
Novelty:
In order to invalidate this patent based on Novelty, Lava relied upon the document ‘Mobiware: QoS aware middleware for mobile multimedia communications’ authored by Andrew T. Campbell, published in the IFIP Conference Proceedings held between 28th April – 2nd May, 1997 (hereinafter ‘Mobiware’).
The Court analyzed the teachings of Daniel Wong and Ericsson’s patent IN’632. The Court held that Lava’s counterclaim regarding the lack of novelty of Ericsson’s patent did not hold. The relevant paragraphs which highlight the reasons provided by the Court are provided below:
Relevant paragraphs:
“453. Upon considering the similarities and differences identified above, it is clear that IN’632 is focused on demonstrating a specific technique for processing multiple data services over a communication link, which includes the handling of data blocks, prioritisation, and scheduling to maintain QoS for multiple services simultaneously. This method of managing multiple services with variable QoS requirements and efficiently utilising the transmission spectrum and power control is distinct from the general discussion of adaptive transport and handoff management in Mobiware. Therefore, neither is the novelty of the Claims of IN’632 affected by the specific text highlighted by Lava, nor is the novelty of the specific solution proposed in IN’632 affected by the logical deduction of the prior art highlighted by Lava. While both texts address improvements in mobile networks’ efficiency and QoS, they approach the problem from different angles. Overall, the prior art identified by Lava, Mobiware though broader in scope, covering adaptive transport mechanisms, does not impinge upon the novelty of IN’632 as it is focused on a specific method of multiplexing services for ensuring efficient service delivery. The specific technical solutions and implementations proposed in IN’632, specifically including the use of an RLC/MAC protocol layer for processing multiple radio bearer services and prioritizing data blocks for transmission is not detailed in Mobiware.
454. In light of the above analysis, the specific solution proposed in IN’632, characterized by its approach to multiplexing services and ensuring efficient service delivery within a W-CDMA system, stands as novel over Mobiware. Lava’s claim regarding the lack of novelty of IN’632, based on the prior art presented by Mobiware, does not hold.”
Inventive step analysis:
The prior arts relied upon by Lava in respect of the ground of lack of inventive step include:
i. DW-1/35: Internet RFC 2212 published in September 1997 titled “Specification of guarantee quality of service” (hereinafter ‘D1)
ii. DW-1/36: ETSI Technical Report Ver 2.1.0 (1995) (hereinafter ‘D2’).
Analysis w.r.t. D1:
On analyzing D1, in the court’s view, D1, which focuses on guaranteed service delivery with maximum delay and bandwidth usage, tackles a distinct problem from Ericsson’s IN’632, which focuses on multiplexing similar QoS services on a single channel. The relevant paragraphs from the order are provided below:
Relevant paragraphs:
“457. While both D1 and IN’632 are giving emphasis on managing QoS in communication systems and also, proposing solutions with a view to optimize data transmission efficiency and quality, it is clear that the points of dissimilarity between prior art D1 and IN’632 are significant and far outweigh the similarities to have an impact on the non-obvious technical advancements in IN’632. In strength of this conclusion, I would highlight that D1 discusses the internet’s guaranteed QoS using token buckets and attempts to link the same wireless telecommunication systems, which does not align or relate to the field of wireless telecommunication and therefore, does not teach or enables the solutions given in IN’632. Further, IN’632 details a mobile-specific implementation, including logical and physical channel mapping, which is not at all covered in D1. Finally, it is highlighted that Internet communications use a broader approach to QoS, much different from mobile communications.
458. I also hold that there is merit in the submission of Ericsson that D1 teaches that the network element behaviour required to deliver a guaranteed service that is guaranteed maximum delay and bandwidth usage in the Internet and that the same is much different from the problem solved by the present invention, where the inventive step lies in multiplexing portions from radio bearer services having similar QoS requirements on a single logical channel.
459. Therefore, prior art D1, focusing on internet communication QoS guarantees, diverges fundamentally from the mobile station-centric approach of IN 632, which integrates multiple data services for mobile networks. Prio Art D1’s emphasis on the use of a token bucket model for service specification does not address the specific challenges of mobile communication, such as handoff management and the dynamic adaptation to mobile network conditions. Thus, the prior art’s focus on generalised internet QoS solutions teaches away from the mobile-specific solutions proposed by IN’632, underscoring a distinct path in addressing QoS challenges. Therefore, neither does D1 affect the patentability of IN’632, nor can the said document be combined with any other reference point or document to affect the inventiveness of IN’632.
460. In conclusion, after careful examination, it is found that the inventive step and novelty of IN’632 are clearly distinguishable. The approach presented in IN’632 for integrating multiple data services for mobile networks, prioritizing data based on QoS requirements, and efficiently managing logical and physical channel mappings demonstrates distinct and non-obvious technical advancement.”
Analysis w.r.t. D2:
With respect to D2, the Court opined that Ericsson’s patent IN’632 provided a technical advancement over D2. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“466. As I have already identified, the invention disclosed in IN’632 involves the separation of data belonging to a plurality of services into data blocks, recombination of those blocks based on similar QoS requirements, and transmission in a single logical channel. D2 provides a comprehensive overview of the UMTS radio interface and the report in D2 outlines the structure and functioning environment of the radio interface. However, in my considered view, Ericsson’s contention that the concept of prioritizing data blocks within transmission blocks, as described in D2 is different from the concept of recombining data blocks based on similar QoS requirements, as specifically claimed in IN’632 is valid. I would highlight the technical advancement in IN’632 over D2 by recognising that prioritization of data blocks relates to the order in which they are transmitted, while recombination of data blocks based on QoS requirements involves organizing and aggregating data for transmission in a more efficient manner. Further, D2 does not delve into the specific method of data separation, recombination, and transmission as described in IN’632, not does it give any teachings or motivations to do so.
467. In my overall assessment, the general description of the radio interface as given in D2 is significantly different from the specific technical solution provided and enabled by the Complete Specification of IN’632. The inventive step in IN’632 involves a novel approach to handling data transmission that is not addressed or even suggested by the prior art D2.”
8) IN 241747
The Court noted that the patent which is titled ‘A transceiving omit unit for block automatic retransmission request’ was a Standard Essential Patent, essential to implementing EDGE standards.
Novelty:
In order to invalidate this patent based on Novelty, Lava relied upon EP 0054118, a patent which was granted in 1985.
For ascertaining Novelty of Ericsson’s patent IN’747, the Court analyzed the elements of the portions of the prior art cited by Lava and the claims of Ericsson’s patent. The Court held that the novelty of Ericsson’s patent was not affected by the prior art owing to differences between the prior art and the patent in terms of function and implementation. The Court presented a comparative analysis of the elements in the form of a tabulation. Relevant paragraphs which highlight the reasons provided by the Court are provided below:
Relevant paragraphs:
“491. After analysing the elements of the cited extract and also the elements of the Claims of IN’747, for the purposes of ascertaining the novelty of IN’747, I have considered it appropriate to identify the similarities and differences of the cited extract and IN’747. In my considered view, both IN’747 and the cited extract of the prior art involve handling of errors in received data blocks and each employ a mechanism for responding to errors detected. However, there is a difference in the specific mechanism adopted for responding to detection of errors. The prior art utilises a retransmission request in response to error detection, whereas IN’747 adopts a negative acknowledgment signal to handle error detection. Therefore, the cited prior art and the claims of IN’747, both address error handling in communication systems, albeit through different approaches.
492. The prior art delves into creating parity blocks for retransmission and stresses specific coding schemes, C1 and C0, tailored for error correction. Conversely, the Claims of IN’747 outline a transceiving unit equipped with hardware for receiving, dividing, and retransmitting data blocks. IN’747 particularly emphasises the employment of varied modulation/FEC coding schemes for retransmission, a specific detail neither explicitly mentioned in the prior art extract, nor implicitly derivable marking a distinctive approach to managing transmission errors in IN’747.
494. In my considered view, the extract pleaded by Lava as a novelty destroying prior art describes a specific error correction process involving the retransmission of data blocks using parity blocks and coding schemes. However, the said function and implementation of the said extract in the prior art is different from the claims of IN’747. The Claims of IN’747 focus on a transceiving unit employing a method of dividing erroneously received blocks and retransmitting them using different modulation/FEC coding schemes. Therefore, the novelty of IN’747 is not affected by the cited prior art extract.”
Inventive step analysis:
The prior arts relied upon by Lava in respect of the ground of lack of inventive step include:
i. DW-1/47: Abdul Aziz Al-Zoman et al., “Automatic Retransmission Rather Than Automatic Repeat Request”, published in IEEE in 1994. (hereinafter ‘Al-Zoman’)
ii. DW-1/48: Joel Morris, “Throughput Performance of Data-Communication J. Systems Using Automatic Repeat-Request (ARQ) Error Control Schemes.” 1977 (hereinafter ‘Joel Morris’).
iii. DW-1/50 US 5559810 (hereinafter ‘US 5559810’).
iv. DW-1/49 Kousa, “An adaptive error control system using ARQ schemes (1991)” (hereinafter ‘Kousa’).
Analysis w.r.t. Al-Zoman:
On analyzing Al-Zoman and Ericsson’s patent IN’747 through comparative analysis of the key elements, the Court noted that the prior art Al-Zoman did not affect novelty or inventive step. The relevant paragraphs from the order are provided below:
Relevant paragraphs:
“500. Based on the assessment of the research paper of Al-Zoman and the Claims of IN’747, I have deemed it appropriate and also necessary to compare the various aspects of both the prior art and the Claims of IN’747 in a tabular form, to effectively consider the similarities and differences between both of them. …
501. The above comparative analysis highlights that the Claims of IN’747 introduce specific, novel strategies for handling erroneous blocks in BAR mechanisms that are not explicitly disclosed or suggested in the prior art research paper. These strategies include the division of erroneous blocks and their retransmission using different modulation/FEC coding schemes, which in my considered view involve an inventive step over Al-Zoman. Therefore, Al-Zoman individually does not affect the novelty or inventive step of the Claims of IN’747.”
Analysis w.r.t. Joel Morris:
The Court considered the inventive concept of Ericsson’s patent IN’747 to assess the inventive step. The Court opined that Ericsson’s patent IN’747 provided a tangible method characterized by practical application when compared to the teachings of Joel Morris. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“505. In conclusion, the advancement in handling transmission errors through selective block division and modulation scheme adaptation marks a significant evolution, which in my considered view constitutes a technical advancement, beyond the theoretical exploration of ARQ schemes’ efficiency. Further, I hold that considering the significant time gap between the prior art document and IN’747, in view of the principles delineated in Avery Dennison (supra), it suggests that this gap signifies a ‘long-felt need’ within the field. Consequently, this implies that the inventive concept of IN’747 is not rendered obvious by Joel Morris. In my considered view, in light of the above analysis carried out, the technical advancements in IN’747 over Joel Morris were neither obvious to try, nor were there any teachings, suggestions or motivations to affect the inventive step in IN’747. Therefore, in the present case, the inventive concept of IN’747 would not be hit by obviousness in light of Joel Morris.”
Analysis w.r.t. US 5559810:
The Court first assessed the Novelty and then moved on to the assessment of the inventive step. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“508. As is evident form the Claims of both IN’747 and US’810, the key distinction lies in the specific focus and methodology of each set of claims: the first on selecting modulation techniques based on historical data, and the second on modifying transmission strategies in response to reception failures. Therefore, IN’747 maintains its novelty as it proposes a specific hardware configuration and process for handling negative acknowledgments through block division and retransmission using different modulation/FEC coding schemes. Critically, US’810 does not mention the use of hardware components or the process of dividing blocks and changing modulation schemes upon receiving negative acknowledgments. Consequently, IN’747 demonstrates an inventive step by introducing a unique approach for improving transmission reliability through selective block division and adaptive modulation/FEC coding changes in response to errors and this inventive concept is not anticipated or suggested by US’810.
509. The only question that needs to be assessed now is if the improvement and technical advancements as given in IN’747 are such advances which would not be obvious to a person skilled in the art.
511. The approach of selectively dividing a block into smaller blocks upon receiving a negative acknowledgment for retransmission is a specialised strategy that targets efficient use of bandwidth and improvement in error correction. This strategy does not appear to be an obvious solution to a person skilled in the art, as it involves a detailed understanding of how block size and modulation/FEC coding scheme adjustments can impact transmission reliability and efficiency. The integration of selective block division with adaptive modulation/FEC coding changes, within a specific hardware framework, constitutes a comprehensive solution to enhancing transmission reliability. This integrated approach might not be readily deducible by a person skilled in the art, as it combines several concepts in a novel way to address the problem of transmission errors.
512. In conclusion, considering the detailed explanation and rationale provided, the technical advancements detailed in IN’747 embody a level of innovation and specificity that clearly sets them apart from existing standards and practices in the field of data transmission.”
Analysis w.r.t. Kousa:
The Court noted that the prior art Kousa used adaptive error control to improve data reliability and that Ericsson’s patent IN’747 used a transceiving unit for block ARQ with selective retransmission for better efficiency. The court found that the methodology of Ericsson’s patent IN’747’s provided a significant leap from Kousa’s theory and therefore involved an inventive and was not obvious from prior art. Further, the Court analyzed the combination of all the prior arts cited by Lava to conclude on the inventive step assessment. The Court held that Ericsson’s patent IN’747 fulfilled the criteria of Novelty as well as inventive step. Relevant paragraphs from the order are provided below:
Relevant paragraphs:
“517. In my considered view, the claims of IN’747 introduce a specific technical solution where the adaptation involves not just the error-correcting code rates but also the modulation and FEC coding schemes between the original transmission and retransmissions. This dual-level adaptation is tailored to respond more precisely to the conditions that led to the erroneous reception, offering better bandwidth efficiency and reliability than the adaptation strategy focused solely on error correction codes as discussed in Kousa. While Kousa emphasises the theoretical advantages in throughput and reliability through adaptive error correction coding, the Claims of IN’747 provide a detailed implementation strategy that could be directly applied in practical communication systems, including mobile and base stations. This bridges the gap between theoretical error correction strategies and practical error handling mechanisms in communication networks.
518. Accordingly, upon considering the above analysis, I hold that the transition from a theoretical framework of using cascaded Hamming codes for adaptive error correction to a practical error handling mechanism involving selective block division and the use of different modulation/FEC coding schemes for retransmission represents a significant leap from the prior art Kousa. A person skilled in the art will not readily derive the specific procedural steps and components described in the claims from the broad strategies discussed in Kousa. The combination of the specific mechanisms given in IN’747 to enhance communication reliability and efficiency, particularly the selective division and adaptive retransmission strategy using different modulation/FEC schemes, provides a technical advancement that is not obvious from the prior art’s focus on error correction code rate adaptation.
519. In summary, the Claims of IN’747 describing the transceiving unit for block ARQ provide a detailed and specific solution for improving data communication reliability and efficiency that incorporates and extends beyond the adaptive error correction strategies discussed in Kousa. Therefore, in my considered view, IN’747 includes novel procedural steps and system components that would not have been obvious to a person skilled in the art based on the disclosure in Kousa.”
Decision:
Further, the Court analyzed the combination of all the prior arts cited by Lava to conclude on the inventive step assessment. The Court held that Ericsson’s patent IN’747 fulfilled the criteria of Novelty as well as inventive step.
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.
Read Part A of this post here.
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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