In a recent decision in Unwired Planet v Huawei, Birss J considered when a potential prior art document, which had been disclosed online, had been made available to the public. In the case in question the facts were such that the document had been published just a matter of hours before the priority document was filed. It was not in dispute that the document amounted to an enabling disclosure of the invention.

Somewhere in Time – Background to the Case

The present case related to a “standard essential patent” in the telecommunications field. The patent claimed priority from a US application filed at the USPTO on 8 January 2008. The patent had originally been filed by Ericsson but later acquired by Unwired Planet, the claimant, who had then brought a claim for patent infringement against Huawei, Samsung and Google. Google had settled their dispute and so the defendants in the November 2015 case were Huawei and Samsung.

The patent was challenged on a number of issues including novelty in light of a document, the Ericsson TDoc, that all the parties agreed was an enabling disclosure of the invention. At issue was whether TDoc document formed part of the state of the art.

[It is noted by IPcopy that the entity disclosing the potential prior art document and the entity filing the patent application were the same, Ericsson.]

Source Code – the Law

The state of the art is defined in section 2(2) of the 1977 Patents Act (and Article 54(1) EPC to which it corresponds). These sections were paraphrased in the present case as “the state of the art shall be held to comprise everything made available to the public before the priority date.” (IPcopy’s emphasis added).

Days of Future Past – what was filed and when

In the present case the relevant document (Ericsson TDoc) was uploaded to a publicly accessible ETSI file server in Europe on 8 January 2008. The document was downloaded around an hour after its upload to the server by a Samsung employee. The priority document was subsequently filed at the USPTO. The specific times are noted in the table below.

Primer – prior cases

Two EPO decisions were discussed in the case:

• EPO Examining Division decision relating to EP Application 09733661.4 (decision dated 6/8/2013) in which a Chinese priority document was filed on 5/11/2008 and an email containing alleged prior art was sent to the US on 4/11/2008 (US local time, but 5/11/2008 from the frame of reference of the Chinese Patent Office). The Examining Division held that the correct approach was to work out the day the prior art was available at the respective location. Since the prior art was available in the US, it was held to have been published on 4/11/2008 and was therefore prior art.
• EPO Opposition Division decision relating to EP Application 0312734.4 (decision dated 31/3/2013) in which a priority document was filed on 13/2/2013 in the USPTO and alleged prior art was disclosed on 13/2/2013 (CET, but on 12/2/2013 US time). In this case the Opposition Division said that the “controlling time” was the location of the office of first filing and from that point of view the prior art had been disclosed the day before the priority filing.

Midnight in ParisHawaii – Defendants’ position

The defendants cited both of the above cases to support their arguments but argued that the “controlling time” reasoning in (ii) above was not correct. Their contention was that when the prior art was made available, it was made available worldwide and in some places the date would have been 12/2/2013. They argued that the date at the patent office was irrelevant.

In the present case therefore the date in Hawaii when the TDoc was made available was 7/1/2008 and so the defendants argued that the TDoc was prior art.

Edge of Tomorrow – Claimant’s position

Unwired argued a position that was rejected in (i), namely that the disclosure was not prior art when looked at from the frame of reference of the patent office where the priority document was filed. As far as case (ii) was concerned Unwired suggested that the Opposition division was correct in its reasoning and if those reasons were applied in the present case then the TDoc document would not be prior art.

Judgement Day

Mr Justice Birss decided that the only frame of reference that made sense was the one at the patent office where the priority document was filed. In the present case therefore the TDoc document had been disclosed on 8/1/2008 from the point of view of the USPTO which was the same day that the priority application was filed. The TDoc document was therefore not part of the state of the art.

Mr Justice Birss went on to note the following: “The facts in this case flatter the defendants’ argument. Consider what would happen if the content of a priority document filed at the Japanese Patent Office early in the morning was then placed on the internet one hour later. It would be available all over the world and at that moment the date in the USA would be the day before. On the defendant’s submission this would be prior art because it is to be regarded as having taken place before the priority date. I do not agree.”

The decision in this case provides a workable solution to cases involving the filing of patent applications and the worldwide publication of potential prior art where the two events occur at almost the same time.

As noted above the TDoc and priority application were both filed by Ericsson. The situation highlights the need for inventors and patent attorneys to coordinate patent filings with other disclosures.

Mark Richardson 16 February 2016

[Image from Pixabay]