Out-Law News 2 min. read

Huawei legal challenge against validity of Unwired Planet patent dismissed by London court

Chinese mobile device manufacturer Huawei has lost a legal challenge against the validity of a patent owned by Unwired Planet.

The Court of Appeal in London dismissed Huawei's appeal against an earlier judgment by the High Court in a case that concerned a patent relating to 3G wireless communications technology incorporated into many smartphones. Unwired Planet acquired the patent from Ericsson.

Huawei challenged whether some of the claims of the patent lacked the inventive step that is necessary for innovators to take for their inventions to qualify for patent protection. In addition, Huawei raised two separate issues which challenged the novelty of Unwired Planet's patent. All three arguments of Huawei were rejected by the Court of Appeal.

One of the issues Huawei raised concerned whether a disclosure made by Ericsson regarding the patented technology prior to filing for patent protection constituted 'prior art'.

Under patent law, the disclosure of research or other details of an invention prior to a patent application being filed is considered to count against the award of a patent for that invention. This is because patents can only be awarded where an invention is new. Public disclosures of inventions prior to a patent filing being made ordinarily count as prior art and preclude the registration of the patent applied for.

According to the Patents Act in the UK: "The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

In Ericsson's case, it disclosed aspects of its invention hours before filing for patent protection before the US Patent Office. Although the disclosure and patent application were made on the same day in some parts of the world, Huawei argued that in some parts of the world, as a result of time differences, Ericsson had technically disclosed the invention a day earlier than filing for the patent. This, it claimed, constituted prior art that existed before the 'priority date' of the patent.

However, the Court of Appeal rejected the claim and clarified how 'prior publication' in relation to the priority date for a patent should be assessed. That issue was previously ruled on by the High Court.

"A publication is not part of the state of the art unless it was published before the priority date," Lord Justice Floyd said. "The priority date is the 24 hour period of the day on which filing took place, in the time zone of the patent office where it was filed. The publication must occur before that day, on a time basis, by reference to the time zone of the patent office of filing. It follows that allegation of lack of novelty was correctly rejected by the [High Court] judge."

The judgment is part of a series of trials in the litigation between Unwired Planet and Huawei in the UK. Earlier this month, Huawei was ordered to take a worldwide licence to patents for wireless communications owned by Unwired Planet or face a sales ban on its devices in the UK.

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