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Intellectual Property Law – Patent Law – Patent Infringement – Cellular Telephones
The recent case of HTC Corporation v Yozmot 33 Ltd [2010] involved the court having to make a determination on patent infringement. The defendant in this case, Yozmot 33 Ltd (“Yozmot”), was the registered owner of European Patent (UK) No 0909499 B1 (“the Patent”). The Patent had the title 'Telephone Identification Calling Apparatus Procedures'.
The invention that the Patent concerned was designed to provide a remedy for three problems that were identified with existing telephones:
§ The distinguishing of a particular ring tone in public places;
§ The unpleasant sound of standard non-cellular phones; and
§ The uncertain identity of a particular caller.
The principal purposes of the invention were as follows:
§ To provide a system for assigning to each telephone an acoustic call of its own; and
§ To allow each subscriber to create his customized call message (“CCM”) (a sound, music, or name).
The Patent detailed in claim 1 a method for improving the calling procedure of telephones by creating customised messages, specifically for telephones that were coupled to a telephone exchange. The customised messages were registered telephone exchange’s memory and were then coupled to the telephone in question. The customised messages could then be played over a boosted loudspeaker or in the telephone’s earphone. It should be noted that during times when the telephone was on, but was not communicating with another telephone, the telephone’s earphone was deactivated, and the boosted loudspeaker was activated.
This meant that when a call was received the activated boosted loudspeaker played the selected customised message. Upon receiving the call the boosted loudspeaker was deactivated, the telephone’s earphone was activated and the caller telephone would be put in communication with the called telephone as normal.
The Patent detailed in claim 5 a method whereby a CCM and was recorded by the receiving subscriber.
The Patent detailed in claim 6 a method whereby the customised call was an identified calling signal message and was recorded by the receiving subscriber.
The Patent detailed in claim 7 a method whereby the customised call was a self-identifying outgoing message (or an outgoing information service message) and was recorded by the calling subscriber.
Yozmot alleged that the claimant in this case, HTC, had infringed the Patent due to the fact that the claimant had released a number of models of HTC cellular telephone. Each of the products released by HTC had two loudspeakers, namely an earphone loudspeaker and a second boosted loudspeaker that was used as the ringer and had potential to be used as the telephone’s speakerphone.
The claimant denied infringement.
It argued that the patent was invalid on the basis of prior art. Yozmot duly denied invalidity, however Yozmot made had a conditional application to amend.
In the patent in question, one of the pieces of prior art that was relied upon by 'Noziri' was UK patent application No 2220 822A, entitled 'Telephone With Variable Calling Sound'.
It should be noted however that the only difference between the Noziri patent and details of claim 1 of the Patent was that the Noziri patent related to a landline telephone and not a cellular telephone. Accordingly, the principal issue that had to be decided by the court was whether on the correct construction of the Patent, were claim 1, claim 5, claim 6 and claim 7 invalid on the basis of obviousness of prior art in respect of the Noziri patent.
The court held as follows:
- On the facts of the case, a person skilled in the relevant art would immediately recognise that the concept in the Noziri patent was equally applicable to cellular telephones as it was to landline telephones. This was due to the fact that the problems that the Noziri patent attempted to remedy were at least as relevant (if not more relevant) to cellular telephones.
- Therefore claim 1 of the Patent was obvious in light of the Noziri patent. Accordingly, it followed that claim 5 of the Patent was also obvious, due to the fact that the Noziri patent detailed recording of a CCM by the receiving subscriber. This meant that claim 6 of the Patent was obvious as well.
- However, claim 7 of the patent was held to be valid.
- The court noted that the products released by HTC implemented the methods of claim 1 of the Patent, and in the event that claim 1, claim 5 and claim 6 had been deemed to be valid they would also have been infringed.
- Finally, it was held that the proposed amendments to the Patent did not cure the invalidity of the claim
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© RT COOPERS, 2010. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
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