IPCom v Vodafone: SEPs and crown use

Background

IPCom was the owner of EP (UK) 2, 579, 666 B1, which claimed a method and a system for “[a]llocation of access rights for a telecommunications channel to subscriber stations of the telecommunications network". In particular, the patent provided a system for unrestricted access to emergency services, while providing a lottery for other users to access the network.

IPCom alleged that Vodafone's network infrastructure equipment for 4G infringed the patent. During the course of proceedings, it filed an application for unconditional amendments before the UK Intellectual Property Office (referred to as the “unconditionally amended claims") and further conditional amendments in the event that its first application failed (referred to as the "conditionally amended claims"). There were parallel opposition proceedings before the European Patent Office.

MTPAS

The UK Government contracted with Vodafone to prioritise access to its mobile telephone services for the emergency services under the “Mobile Telecommunication Privileged Access Scheme” (MTPAS). The scheme would be activated by the Cabinet Office via the Police Gold Commander in the event of an emergency. Operation of the scheme authorised certain acts which (IPCom asserted) resulted in use of the patent in suit, although the MTPAS did not identify the patent.

Valid and essential

The trial judge, Recorder Douglas Campbell QC, held that the unconditionally amended claims were invalid for added matter, but that the conditionally amended claims were valid over the cited prior art and essential to a standard which would be implemented pursuant to the MTPAS.

Crown use

Vodafone sought to rely on the defence of crown use. Section 55 of the Patents Act 1977 (1977 Act) provides: “Notwithstanding anything in this Act, any government department and any person authorised in writing by a government department may, for the services of the Crown and in accordance with this section, [make, use, import or keep etc.] in the United Kingdom in relation to a patented invention without the consent of the proprietor of the patent ... and anything done by virtue of this subsection shall not amount to an infringement of the patent concerned.” (Emphasis added.)

Section 55(7) provides that “[w]here any use of an invention is made by or with the authority of a government department under this section, then ... the department shall notify the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted..."

IPCom argued that for the defence to apply the MTPAS had to identify the specific patent. If it did not, it would be difficult (if not impossible) to satisfy the requirement under section 55(7) of the 1977 Act. Further, it argued that, even if the written authorisation were sufficient, it did not cover the testing of the system. Vodafone argued that it was not necessary to identify the specific patents because, to do so, would impose too onerous a burden on the relevant government department. It further argued that testing that the system functioned was a necessary corollary of the authorisation.

The judge sided with Vodafone, holding that where a written authorisation identified a specific act, then there was an implied authorisation for the recipient to infringe any given patent in the course of conducting that act. Importantly, the court held that Vodafone did not need to show that it was necessary to infringe the patent to perform the act, only that infringement resulted from performance. Expressed another way, if there were alternative ways of satisfying the written authorisation which would not infringe the patent, this did not vitiate the defence. The court held that it followed that the defence would extend to the testing of the system.

Comment

Crown use as a defence has remained untouched for many years, with the case law governing it old. The case offers some guidance and raises some interesting questions, for which the Court of Appeal of England and Wales may be able to offer some further direction in due course. The potential application of the judgment to other sectors may also provoke some concern; for example, the use in relation to medicines where the UK Government is the largest purchaser.