Nokia loses 3G patent battle in High Court

Nokia is infringing on a key 3G patent that covers the prioritisation of emergency and security services on mobile networks, the UK High Court has found.

The High Court has found Nokia is infringing on a key 3G patent that covers the prioritisation of emergency and security services on mobile networks. Photo credit: Cindy Andrie/Flickr

IPCom, the Bavarian patent licensing company that owns the '268' patent, now intends to seek a ban on the sale of 3G Nokia phones in the UK unless Nokia agrees to pay IPCom licensing fees. IPCom is also claiming infringement in the German courts against companies including Nokia and HTC.

The patent was bought by IPCom in 2007 as part of carphone pioneer Bosch's intellectual-property portfolio. IPCom has been fighting Nokia over the patent since then, losing against the Finnish firm in the UK courts in January 2010, when Mr Justice Floyd found the patent was not valid. IPCom then applied to the court to allow the patent to be amended to make it more specific, and Floyd has now ruled the revised patent is "valid and infringed" by certain unnamed Nokia devices.

In the German battle between Nokia and IPCom involving the same patent, which lets emergency services and security services gain prioritised access to a 3G mobile network even if the network is already crowded, Nokia introduced a workaround that it said avoided infringing on the patent. Floyd said on Thursday that both Nokia's original implementation and the workaround infringed on the patent.

"As far as we know, this is the first time that an essential telecoms 3G patent was ever upheld and judged infringed in the UK — a jurisdiction well-known for being very demanding for patent holders," IPCom managing director Bernhard Frohwitter said in a statement. "The recent settlement between Nokia and Apple strongly shows that Nokia — rightfully — expects competitors to respect Nokia's intellectual property, and that is exactly what we expect from Nokia for the Bosch inventions that IPCom owns."

Disagreements

However, there remains severe disagreement between Nokia and IPCom as to the implications of Floyd's ruling. Floyd said that many Nokia devices using alternative software did not infringe on IPCom's patent, and Nokia described those devices as "current products", saying the judgement meant "we can continue selling those products, now with legal certainty, despite claims to the contrary made by IPCom".

IPCom spokesman Alistair Hammond told ZDNet UK that the devices using the alternative software versions, referred to in the ruling as 'B-G', were "not part of the UMTS [3G] standard" and had "never been used" in Nokia products.

"UMTS phones, all of them, use [the technology described in the patent that was infringed on by Nokia]," Hammond said. "B-G are wild and creative versions of [the same technology, referred to as A1 and A2] which are not infringed because they don't do the same thing, and are not part of the UMTS standard as far as we're concerned."

In Nokia's statement, the phone maker said IPCom's statements on the ruling reflect "a severe misunderstanding of Justice Floyd's decision".

"He ruled that Nokia devices, no longer on sale, which had older software versions (A1 and A2) infringed the amended patent but that newer versions B-G, incorporating our workarounds, did not infringe the amended patent," the company said. "As our current products do not infringe the amended patent, there can be no injunction against them and we can continue selling those products."

As our current products do not infringe the amended patent, there can be no injunction against them and we can continue selling those products.

– Nokia

Nokia also said that IPCom was wrong to say its patent covered a mandatory element of the UMTS standard. "UK operators provided statements to the court to confirm that the feature had never been implemented in UK networks," the company said. "German operators have confirmed that the same is true for networks in Germany."

According to Nick Phillips, head of IT and intellectual property law at Barlow Robbins, the judgement is on balance a victory for IPCom, but "as part of the price for protecting its patent IPCom did have to accept that the scope of the claims of that patent were more limited than it would ideally have liked and is therefore unlikely to have a serious impact on the 3G phone market."

"It is not entirely clear to me what models the A1 and A2 correspond to or whether these are still on sale," Robbins told ZDNet UK. "There is some suggestion based on a previous judgement between these parties that the A1 and A2 relates to previous versions of Nokia's N96 but it is not at all clear whether the judgement bites on any current model of Nokia phone."