T 1024/18 – Another turn of events for description amendments
This decision appears to bring description amendments back to the established norm.
Taiwanese smartphone manufacturer HTC have seemingly suspended sales of its latest handsets in the UK, thought to be as a consequence of an ongoing patent dispute with IPCom.
The dispute is centred on European Patent (UK) EP1841268 which covers how a mobile handset connects to a network, and in particular how a certain calls (e.g. emergency calls) may be prioritised on a network. Specifically, the patent relates to regulating access to a Universal Mobile Telecommunications System (UMTS) – 3rd generation mobile network – with prioritisation of devices based on a “user class” associated with the SIM card. Access to the network for devices which are not prioritised by user class is controlled via a random distribution process.
EP1841268 is a “standards essential patent” (SEP) for the UMTS standard and has been confirmed as such during court proceedings relating to this dispute. That is, the invention covered by the patent must be implemented in order to meet the UMTS standard.
The initial infringement case brought by IPCom against HTC was decided in 2015 where it was found that the patent was valid but that it was not infringed by the HTC handsets. This decision was subsequently appealed by both parties. On appeal, it was found that that the patent was valid, was essential to the UMTS standard and was therefore infringed by HTC handsets compliant with the UMTS standard. The full decision can be read here.
According to a recent press release from IPCom, tests of the HTC Desire 12 handset suggest that the handset does not include an approved workaround. This move appears to have prompted HTC to withdraw all current handsets from sale in the UK.
It should be noted that at the time of writing there has been no formal judgement made relating to infringement of the patent by the latest HTC handsets, and it remains to be seen if and how this dispute will be resolved.
Meanwhile, IPCom remain active in enforcing their IP rights. It has been reported that they are also in discussions with Chinese manufacturer Xiaomi relating to its use of the same patent. Further, another recent press release from IPCom suggests that the company is seeking to enforce another of its patents against Vodafone.
This case serves as a reminder of the complex nature of patent disputes and the significant commercial effect such disputes can have on the parties involved. It is important that IP is properly considered not only in relation to protecting your own IP, but also the possibility of third party rights which may affect your freedom to operate.
Please contact one of our attorneys if you would like to discuss enforcement of IP rights or have any other IP-related query.