INFORMAL TRANSLATION judgment - EPLAW Patent Blog v. Vringo (EN... · INFORMAL TRANSLATION judgment ... in baseband units of the type ZXSDR B8200 GU 360 ... as defendants, that by

INFORMAL TRANSLATION

judgment THE HAGUE DISTRICT COURT Commercial Law Team Hearing location The Hague case number / cause-list number: C/09/481474 / HA ZA 15-100 Judgment of 28 October 2015 in the case of the private limited liability company ZTE NETHERLANDS B.V., having its registered office in The Hague, claimant, attorney mr. D. Knottenbelt, practising in Rotterdam, v. the company under foreign law VRINGO INFRASTRUCTURE INC., having its registered office in New York, New York, United States of America defendant, attorney mr L.Ph.J. baron van Utenhove, practising in The Hague. The parties will hereinafter be referred to as ZTE and Vringo. The proceedings were handled on behalf of ZTE by mr. R. Hermans and mr. H.J. Pot, attorneys practising in Amsterdam, and the patent agent mr. ir. F.A.T. van Looijengoed. The substance of the case was handled on behalf of Vringo by mr. B.J. van den Broek, attorney practising in Amsterdam. 1. The proceedings 1.1. The course of the proceedings is evidenced by: - the decision by the Preliminary Relief Judge of this District Court of 22 October 2014, in

which ZTE was permitted to summon in proceedings according to the accelerated regime in patent cases;

- the summons of 23 October 2014; - the exhibits to the accelerated patent proceedings revocation summons of 28 January 2015

with Exhibits E1-E17; - the Statement of Defence, also motion submitting exhibits, of 8 April 2015, with Exhibits

GP 1-10; - the motion submitting additional Exhibits Z18 and Z19 by ZTE of 15 July 2015; the motion

submitting Exhibits GP 11-13 by Vringo of 4 September 2015 received on 10 August 2015; - ZTE’s letter of 24 August 2015 that the parties have reached agreement on the 1019h

DCCP1 costs (€ 150,000);

1 Dutch Code of Civil Procedure

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 2 28 October 2015 - ZTE’s letter of 26 August 2015 containing the CVs of Dr. Sommer and Dr. Nettleton; - ZTE’s letter of 28 August 2015 containing Exhibit 20; - Vringo’s letter of 28 August 2015 in which mr. Van den Broek objected to the late

submission by ZTE of Exhibit 20 and requested not to proceed with the oral arguments of 4 September 2015 and to remove the case from the accelerated regime in patent cases;

- ZTE’s response to this letter of 1 September 2015; - Vringo’s response of 1 September 2015 to said response; - the email by the District Court of 1 September 2015 stating that the hearing will proceed and

that, for the moment, there is no reason to remove the case from the accelerated regime in patent cases, while it will be decided at the hearing whether ZTE’s Exhibit can be admitted;

- the oral hearing of 4 September 2015; - ZTE’s written arguments; Vringo’s ’s written arguments. 1.2. Vringo objected to ZTE’s late submission of Exhibit 20, a second statement by experts

Sommer and Nettleton. After the parties had been heard on this point, it was decided at the hearing that this objection was well-founded, which is why the exhibit is not part of the documents.

1.3. Judgment was scheduled for today. 2. The facts 2.1. Nokia Corporation, at least Nokia Mobile Phones Ltd (hereinafter: "Nokia”), has held a

number of patents, including European patent EP 1 186 119 B2 (hereinafter also: EP 119 or the patent) for a "method for transmitting a sequence of symbols", granted on an application of 6 July 2000, invoking the priority date 9 July 1999. EP 119 was granted on 19 May 2004 and is valid in multiple countries, including the Netherlands.

2.2. The original English text of the claims of EP 119 (after being maintained in amended

form) reads as follows:

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 3 28 October 2015

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 4 28 October 2015 2.3. The undisputed Dutch translation of the claims (after being maintained in amended form)

reads as follows:


2.4. The description includes the following:




2

2 This was probably meant to be “is”


3

3 Punctuation is missing


INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 11 28 October 2015 2.5. The patent includes the following figures:

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 12 28 October 2015 2.6. Opposition against the patent was filed by Qualcomm Incorporated. The patent was

upheld in appeal in opposition by the TBA4 in amended form by decision of 11 October 2007 (T 0573/06). The TBA held, inter alia:

2.7. ZTE, or at least its parent company, has been engaged in designing, manufacturing and

distributing telecommunication products since 2002. 2.8. ZTE trades, inter alia, in baseband units of the type ZXSDR B8200 GU 360 (hereinafter:

B8200) and remote radio units of the type ZXSDR R8880A (hereinafter: R8880A). B8200s and R8880As are designed to be installed in a UMTS base station for mobile telecommunication of the type ZXSDR BS8700 (hereinafter: BS8700).

2.9. In August 2012, Vringo acquired around 500 patents, including EP 119, from Nokia.

4Technical Board of Appeal of the European Patent Office

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 13 28 October 2015 2.10. On 5 October 2012, Vringo instituted infringement proceedings in England against the

English ZTE enterprise on the basis of EP (UK) 119. In 2012, 2013 and 2014 Vringo instituted further infringement proceedings on the basis of EP 119 and several other patents against ZTE enterprises in (again) England, but also in the Netherlands, Germany, France, Spain, Australia, Brazil, India, Rumania and Malaysia, with the aim of being awarded injunction measures and damages.

2.11. In the Netherlands these legal proceedings started with a request pursuant to the Anti-Piracy Regulation (Regulation (EU) 608/2013, hereinafter referred to as: "APR") addressed to the Dutch customs authorities to detain certain goods. In response to this request, a number of shipments of ZTE goods were stopped and detained by customs in Rotterdam on 28 April, 16 May, 23 May and 28 May 2014. The goods stopped on 16 May, 23 May and 28 May 2014 were eventually released. On the goods stopped on 28 April 2014 civil-law conservatory attachment was levied. Vringo asserted in its request for attachment that these goods were infringing EP (NL) 119. Vringo summoned ZTE in (regular) proceedings on the merits in order to have the infringement established.

2.12. By judgment of 17 December 2013, the Landgericht Mannheim ruled in proceedings between Vringo, as claimant, and two other companies belonging to the ZTE group of companies, as defendants, that by trading (inter alia) the BS8700 in Germany, claim 1 of EP 119 was indirectly infringed. An infringement injunction was issued against ZTE, or at least its parent or sister companies, in China and Germany. After a preliminary assessment of the validity of the patent, the court did not see cause to stay the proceedings until the decision in the revocation proceedings brought before the Bundes Patent Gericht (BGH) had been taken, because it believed the chance of revocation was insufficient ('Dass der Erfolg der Nichtigkeitsklage wahrscheinlicher ware als deren Misserfolg, kann die Kammer vorliegend nicht feststellen'). Nor did the court see cause to stay the proceedings in anticipation of the answers of the Court of Justice of the European Union to the preliminary questions with regard to the FRAND issue, because ZTE was not regarded as a sufficiently serious negotiator for a FRAND licence anyway. On 19 February 2014, ZTE’s request to suspend enforcement of this judgment was denied by decision of the Oberlandesgericht Karlsruhe. In a preliminary opinion of 23 July 2015 the BGH indicated that for the time being it considered the patent to be valid.

2.13. By judgment of 24 October 2014, the preliminary relief judge of this district court denied ZTE’s claim seeking the lifting of the attachments levied, ruling, inter alia, that the outcome of proceedings on the merits about the validity of the patent was too uncertain.

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 14 28 October 2015 3. The dispute 3.1. ZTE is seeking:

i) principally, to declare the Dutch part of European patent EP 1186119 invalid5 or; ii) alternatively, to issue a declaratory judgment that the technology described in the UMTS

standard, document TS 25.211 V11.4.0, does not fall within the scope of protection of European patent EP (NL)1186119;

iii) to order the defendant to pay the reasonable and proportionate costs of these proceedings under Article 1019h of the Dutch Code of Civil Procedure, to be paid within two weeks of the date of service of this judgment, absent which said amount will be increased by the statutory interest as referred to in Article 6:119 DCC as from the second week after this judgment until the day of full payment; and

iv) to declare the judgment enforceable notwithstanding appeal with regard to the costs order.

3.2. ZTE presents, briefly put, the following grounds for its claims. Claims 1, 12 and 13 lack

novelty in the light of the 3GPP Technical Specification 125.211 (hereinafter: TS 25.211 v2.1.0), which is part of the prior art, and in the light of an article by M. Raitola et al. entitled Transmission Diversity in Wideband CDMA (hereinafter: Raitola). If they are novel nevertheless, claims 1, 12 and 13 of the patent lack inventive step departing from TS 25.211 V2.1.0 or Raitola in combination with proposal TSGRI#5(99)677 of the 3GPP working group6. According to ZTE, the dependent claims also lack novelty, or at least do not add any inventive step. Moreover, all claims of EP 119 contain added subject matter as compared to the application as submitted, international application WO 01/05061, if Vringo’s interpretation of the claims is followed. If ZTE's interpretation is followed, however, there is no infringement, to which the alternative claim relates.

3.3. Vringo disputed the claim with substantiation. To the extent relevant, the parties’

assertions are discussed in more detail below.

4. The assessment Jurisdiction 4.1. The District Court has international jurisdiction to examine the claims by virtue of

Articles 4, 22(4) and 24 of the Brussels I Regulation7 in conjunction with Articles 1 and 9(a) DCCP, as the proceedings relate to the validity of the patent for the Netherlands and also — with regard to the alternative claim — as Vringo is based outside the European Union and appeared without challenging the jurisdiction.

Technical background of EP 119 5 The District Court understands: to revoke. 6 A proposal to amend the UMTS standard, dated 1-4 June 1999. 7 Council Regulation (EC) no. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the summons dates from before 10 January 2015).

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 15 28 October 2015 4.2. The following, abbreviated, explanation of the technical background of EP 119 is

derived from Vringo’s statement of defence and this is not in dispute between the parties. 4.2.1. The patent pertains to methods and devices that are used in mobile telecommunication

networks. An example of networks of this type is a UMTS network. UMTS (Universal Mobile Telecommunications System) is a third-generation (3G) communication technology for mobile telecommunication networks, and is the successor to GSM (Global System for Mobile Communications, originally Groupe Spécial Mobile, a second-generation (2G) mobile communication technology.

4.2.2. In mobile networks, the radio network is subdivided into various geographic areas,

known as cells. Each cell is serviced by at least one fixed transceiver, also referred to as a cell site or base station. The communication connection from the base station to the mobile stations is called a downlink, while the communication connection from the mobile stations to the base station is called an uplink.

4.2.3. Base stations transmit information to all mobile stations located in their cell on certain

channels. These channels are known as common channels. These include what are called common control channels, which transmit control information. An example of this type of control information is information regarding the logical Broadcast Control Channel (BCCH). In a WCDMA system - like UMTS - this common control information is modulated using a code called the spreading code. The spreading code is usually comprised of two parts: a long scrambling code (Cs) and a short channelization code (Cc). The scrambling code Cs is used by the mobile station to distinguish channels from different base stations from one another; the channelization code Cc is used by the mobile station to distinguish various channels from the same base station from one another (cf. paragraph [0006] of the patent).

4.2.4. Figure 2 from the patent shows a number of common channels that are used in the

UMTS system, to wit: (1) a primary common control physical channel (PCCPCH), (2) a synchronization channel (SCH) and (3) a common pilot channel (CPICH):

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 16 28 October 2015 These channels are briefly discussed below. (1) Primary common control physical channel (PCCPCH) 4.2.5. The primary common control physical channel (PCCPCH) is used by the network to

transmit common control information, such as information regarding the Broadcast Control Channel (BCCH), to the mobile stations. The mobile station needs the BCCH information to initiate communication with the network, for example, and to perform what is known as a handover from one base station to another (cf. paragraph [0013] of the patent). As already indicated above, the information on the PCCPCH is modulated using a scrambling code, Cs, and a channelization code, Cc. The mobile station must therefore decode the modulated signal first, before it can process the information received.

(2) Synchronization channel (SCH) 4.2.6. As shown at the top in Figure 2, the signals that the base station transmits to the mobile

station are subdivided into frames (identified in Figure 2 with reference number 211) that are comprised of various time slots (identified in Figure 2 with reference number 210).

4.2.7. In order to be able to identify the beginning of the frames and the time slots - and

properly decode the signal received - the mobile station uses synchronization information, which is transmitted in a UMTS system to the mobile stations via the synchronization channel (SCH). The synchronization information is transmitted over the SCH in the form of synchronization symbols (cf. end of paragraph [0002] of the patent). The synchronization symbols can be transmitted in each time slot of each frame, and may contain what is called a primary synchronization code (identified in Figure 2 with reference number 203) and a secondary synchronization code (identified in Figure 2 with reference number 204). In the UMTS system, the primary synchronization codes (PSC) are transmitted to the mobile stations via a first sub-channel of the SCH, known as the primary synchronization channel or Primary SCH, and the secondary synchronization codes (SSC) are transmitted over a second sub-channel of the SCH, known as the secondary synchronization channel or Secondary SCH.

4.2.8. The primary synchronization codes enable the mobile station to identify the beginning of

the time slots, while the mobile station can identify the beginning of the frames based on the secondary synchronization codes. In addition, the secondary synchronization codes tells the mobile station to which scrambling code group the scrambling code that is used by the base station belongs (paragraph [0011] of the patent). As explained above, the mobile station needs this information in order to decode and process the common control information from this base station. Accurate identification of the synchronization symbols is therefore vital to properly decoding the signals received over the other channels.

(3) Pilot channel (CPICH) 4.2.9. The radio signal that a mobile station receives from the base station is normally not the

same as the original radio signal transmitted by the base station. This is because during the transmission, the signal is subject to time-dependent changes (due to obstructions in


the transmission path, caused by buildings, for example). These changes may be expressed using a channel coefficient (identified as h).

4.2.10. In order to reproduce the original signal as reliably as possible while also taking the

aforementioned changes during the transmission of the signal into account, when processing the signal the mobile station must estimate this channel coefficient. This is known as a channel coefficient estimate (identified as ĥ; see paragraph [0012] of the patent)

4.2.11. The channel coefficient estimate can be derived by the mobile station from the control

signal that is transmitted on the common pilot channel (CPICH). The control symbols, which are predetermined and known to the mobile station, are transmitted over the CPICH. The mobile station determines the channel coefficient estimate by comparing the control symbols received with the known (transmitted) control symbols and determining the changes that have occurred during the transmission of the control signal. This estimate - which can be determined by the mobile station per time slot, for example - is then used to determine the changes occurring during the transmission of the other signals from the base station to the mobile station (over the SCH, for example).

4.2.12. The channel coefficient estimate thus enables the mobile station to accurately determine

the information received from the base station, including the synchronization symbols transmitted to the mobile station over the synchronization channel (SCH) and the common control information transmitted to the mobile station over the primary common control physical channel (PCCPCH) (cf., for example, paragraphs [0018]-[0019] of the patent).

The use of various antennas: “transmit diversity” 4.2.13. Base stations in a UMTS system may be equipped with a single antenna with which

information is transmitted to the mobile stations in its cell. By using transmit diversity, the base station uses more than one antenna to transmit information to the mobile stations (cf. paragraph [0004] of the patent).

4.2.14. Figure 3 of the Patent shows a situation with transmit diversity in which use is made of

two antennas (TX1 and TX2). Like Figure 2, Figure 3 shows a primary common control physical channel (PCCPCH), a synchronization channel (SCH) and a pilot signal (CPICH):


4.2.15. As can be seen in Figure 3, both antennas (TX1 and TX2) transmit control signals to the

mobile stations: the common pilot signal (SPICH) is transmitted with TX1 (identified with reference number 201) and the auxiliary signal (Aux. pilot - identified with reference number 301) is transmitted to the mobile stations with TX2. Transmit diversity is used for the transmission of the signals over the other two channels shown (SCH and PCCPCH). In this, a distinction can be made between two types of transmit diversity:

• Time switched transmit diversity (TSTD) is used to transmit the synchronization symbols to the mobile station over the SCH. In the example from Figure 3, both antennas are used to transmit the synchronization symbols (302 via TX1 and 303 via TX2), and the transmission is sent in an alternating transmission pattern (first the transmission of 302 via TX1 and then the transmission of 303 via TX2, etc.). Cf. paragraph [0015] of the patent: "In time switched transmit diversity (TSTD) both antennas are used to transmit the symbols, one at a time. Fig. 3 shows how the synchronization symbols are transmitted using TSTD and an alternating transmission pattern. For example, the synchronization symbol 302 is transmitted from the antenna TX1 and the synchronization symbol 303 is transmitted from the antenna TX2. Bach synchronization symbol carries both the primary and the secondary synchronization code." • Space time transmit diversity (STTD) is used to transmit common control information to the mobile station via the primary common control physical channel (PCCPCH). In the example from Figure 3, both antennas are used to transmit information over the PCCPCH and this transmission is simultaneous. See paragraph [0016] of the patent:

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 19 28 October 2015 "The common control information may also be transmitted from both antennas TX1 and TX2. In this case the BCCH information, for example, is encoded before it is transmitted over the PCCPCH channel. Space time transmit diversity (STTD), for example, specifies that from the primary antenna TX1 the symbols are transmitted as such, i.e. the sequence of transmitted symbols is S1, S2, S3, S4 ... From the second antenna TX2 the sequence of transmitted symbols starts in the following way: -S2*, S1*, -S4*, S3*, ..., where the asterisk indicates the complex conjugate." 4.2.16. When two antennas are used, the radio signal from each of these antennas will normally

follow a different transmission path. As a result, different changes may occur in the signal transmitted by each of the antennas as compared to the original signal. If transmit diversity is applied (like in Figure 3 of the patent and in TS 125.211), this is why a different control signal should preferably be transmitted from each antenna so that the mobile station can determine a separate channel coefficient estimate for each antenna. This channel coefficient estimate is then applied to the signals originating from the relevant antenna. See Figure 3 in this regard and cf. paragraph [0014] of the patent:

"When transmission diversity is employed, there are two antennas where the information may be transmitted. It is preferable that each antenna transmits its own pilot signal, so that the channel coefficient estimates can be determined for each antenna." 4.2.17. In order to reliably determine the information received, the mobile station must

therefore, in principle, process the signal received from antenna TX1 using the channel coefficient estimate ĥ1, which is determined based on the common pilot signal (CPICH) from antenna TX1, and process the signal received from antenna TX2 using the channel coefficient estimate ĥ2, which is determined based on the auxiliary control signal (Aux. pilot) from antenna TX2.

4.2.18. A problem arises when the mobile station cannot determine from which antenna a certain

signal originated. In that event, the mobile station does not know which channel coefficient estimate ĥ should be used to process the signal received. See for example paragraph [0020] of the patent:

"Consider, for example, a situation where a certain sequence of symbols is transmitted once in every time slot, and a frame consists of an odd number of time slots. If the symbols belonging to the sequence are transmitted using a time switched diversity scheme, two diversity antennas are used and the transmission pattern is an alternating pattern, in a certain time slot the symbol belonging to the sequence is transmitted from one antenna in every other frame and in the rest of the frames from the other antenna. Therefore the mobile station does not know which channel coefficient estimate to use for a symbol sent in a certain time slot with a time switched transmission scheme." 4.2.19. The object of the invention is to provide a method and device for the transmission of a

sequence of symbols using transmit diversity, in particular TSTD, in which the mobile station is able to unambiguously determine from which antenna a symbol belonging to that sequence was transmitted (cf. paragraph [0022] of the patent).

4.2.20. According to the patent, this object is realised by applying two antennas, where the

transmission of the sequence of symbols in each frame always starts from the same antenna, where the transmission of each of the symbols uses no more than one of the two


antennas and always only one antenna transmits, and where, when a partial transmission pattern is transmitted at the end of the previous frame, the transmission pattern applied starts again at the beginning of the subsequent frame. As a result, the mobile station knows exactly from which antenna a symbol received was transmitted and which channel coefficient estimate it should apply in processing the information received. Cf., for example, paragraphs [0028] and [0029] of the patent:

"In the method according to the invention the antenna to transmit the first symbol belonging to the sequence is predefined. This means that a certain physical antenna is associated to the first antenna of the transmission pattern. The receiver thus knows which of the pilot signals is transmitted by the same antenna as the first symbols of the sequence, and it may use the correct channel coefficient estimate in processing the first symbol of the sequence. lf, for example, the first symbol is transmitted using the primary antenna that transmits the common pilot, the channel coefficient estimate determined from the common pilot is used to process the received first symbol. Further in the method according to the invention, the transmission pattern is started from the beginning in the beginning in each frame. Even if the receiver starts to receive the signal in the middle of the transmission, it knows explicitly that in each frame the first symbol belonging to the sequence is transmitted using a predefined antenna, for example, the primary antenna." As a result of this transmission mechanism and the interaction between the network and the mobile station, it is ensured that the mobile station can always accurately and reliably process the signals received from the network. 4.3. ZTE has divided claim 1 of the patent into the following features:

1. Method (300, 400, 500) for transmitting a certain sequence of symbols, where 1.1 a frame is constructed of a number of consecutive symbols, 1.2 the symbols belonging to a sequence are transmitted (404, 502, 606) using two antennas and 1.3 the transmission of a sequence of symbols is characterized (401, 601) with a certain transmission pattern, characterized in that 2. the transmission of the sequence of symbols is started (402) from a predefined antenna, 3. each symbol of the sequence is transmitted using not more than one of the two antennas, whereby only one antenna is transmitting at a time, and 4. when a partial transmission pattern is used in the end of a frame, the transmission pattern is started (403, 405) from the beginning in the beginning of a next frame.

This numbering of features will be followed below. Inventive step 4.4. In the opinion of the District Court, ZTE has rightly argued that the invention, as laid

down in the patent, is obvious, in view of TS 25.211 V2.1.0 in combination with the fact known from TSGR1#5(99)677 that TS 25.211 V2.1.0 had to be modified to go from 16 to 15 timeslots per frame to make the (European) UMTS standard compatible with the (American) CDMA2000 standard.

4.5. The parties have discussed the question as to which qualifications the average person

skilled in the art should be attributed in this case. ZTE submitted in the summons that


such a skilled person should be considered to be the average of the members of the working group that created the standard and modified it in line with the instruction that a frame would now comprise 15 timeslots instead of 16. In response to questions put by the District Court at the hearing as to whether the average person skilled in the art should be considered “the one writing the book or the one reading it”, it was indicated on behalf of ZTE that the average person skilled in the art should be considered the one reading the standard and having to apply it. Vringo concurred with that interpretation. Because, departing from such skilled person, the invention as laid down in the patent is obvious, the District Court does not have to deal with the question whether ZTE would thereby have acknowledged that the average person skilled in the art does not have more expertise, as it had initially asserted.

4.6. The District Court will address the inventive step question using the Problem-Solution-

Approach (PSA). I starts from TS 25.211 V2.1.0 as the closest prior art. Said document was at the priority date the latest draft version for the new UMTS standard and it is not disputed that it discloses features 1.1-1.3 and feature 3 as included in the introduction of claim [1]. The passages and figures to which ZTE refers in that document are included below:


4.7. Features 2 and 4 are not disclosed therein in the event that there is a partial transmission

pattern within a frame. Incidentally, the District Court, along with Vringo (and the TBA), reads feature 4 as an essential condition in the claim. If, therefore, no partial transmission pattern is used, as is the case in draft standard TS 25.211 V2.1.0 because that shows a 1,2 alternating pattern with a frame with an even number of slots, claims 1 or 12 of the patent are not applied. After all, the problem for which the patent intends to provide a solution does not occur at all in that event.

4.8. The distinguishing features are therefore starting the transmission of a sequence of

symbols from a predefined first antenna and from the beginning in a next frame, when a partial transmission pattern is used.

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 23 28 October 2015 4.9. The technical effect that can be attributed to the distinguishing features is that, when

TSTD is applied, the mobile telephone knows which antenna is transmitting, also when there is a partial pattern within a frame. After all, it is common ground that, because of the SCH symbols, a mobile telephone (also: User Equipment, or UE) knows when a frame begins, so that the UE knows, because of the solution provided by the patent, that the first timeslot begins with the predetermined antenna.

4.10. The objective technical problem that is solved can be formulated as:when using TSTD,

how can the handset determine unambiguously from which antenna a certain symbol is transmitted? (cf. [0022] and [0023] of the patent), also when there is a partial pattern within a frame.

4.11. Because a partial transmission pattern is a condition (“when”) in claim 1, the District

Court rejects Vringo’s defence that there are no grounds to combine TSGR1#5(99)677 (in which this partial transmission pattern is disclosed) with TS 25.211 V2.1.0. The intention was expressed in TSGR1#5(99)677 to modify TS 25.211 V2.1.0 by applying a partial transmission pattern in the (draft) UMTS standard. After all, it was indicated that the number of slots per frame should go from 16 to 15, while the transmission pattern in the draft standard (see Figure 17 above) was 1,2. The person skilled in the art would therefore read those documents on the priority date in conjunction and assume a partial transmission pattern when TSTD is applied. That is exactly the situation for which the patent aims to provide a solution.

4.12. Vringo has argued in this context that this essentially concerns a problem invention.

However, it failed to make this sufficiently clear in these proceedings. Vringo pointed out a series of problems and circumstances, but a considerable number of these problems were only first presented during oral arguments, while the same number of arguments were, before the hearing, only briefly (too briefly) touched upon in a statement by Mr Moulsley8 that was rather difficult to follow. In the patent and the Statement of Defence, these ‘pieces of the puzzle’ (as Vringo called them during oral arguments) were not described as the joint causes of a problem. Moreover, these arguments - to the extent the District Court can follow the arguments - are not convincing.

4.13. Firstly, Vringo points to the “a-coefficient” that was used to modulate the SCH and

which “triggered” the invention (no. 96 of the pleading notes). However, ZTE rightly countered that the modulation with the a-coefficient can, as such, already be read in the standard (see Figure 16 and the text below it, included in paragraph 4.6). To that extent this coefficient was therefore not new. ZTE also explained sufficiently clearly that an average person skilled in the art will realise that in order to properly demodulate the a-coefficient, the UE must know from which antenna is being transmitted and must determine the channel coefficient to be applied in that process, which is a reflection of the quality of reception and a phase shift caused by, for example, obstacles (different for each antenna). The circumstance pointed out by Vringo that there are publications predating the priority date in which the UE, when TSTD is used, does not know which antenna is transmitting (see paragraphs 12 and 13 of Moulsley’s statement and written arguments nos. 77-80) does not make this any different, if only because said publications do not mention the a-coefficient which, according to Vringo, is precisely what triggered

8 Vringo’s Exhibit 11


this problem. However, as already said, that a-coefficient was already a given in TS 25.211 V2.1.0. Moreover, Raitola’s publication, cited by Vringo in that respect, also already specified in paragraph 5.1 that problems arise when the mobile telephone does not know that there is TSTD in the application of algorithms to determine the channel coefficients:

4.14. Vringo furthermore asserted (see nos. 83-94 pleading notes) that the SCH is designed in

such a way that for proper functioning in TS 25.211 V2.1.0 neither data of the channel coefficient estimate nor of the transmitting antenna are required. The District Court considers this assertion to be contrary to the position also taken by Vringo and discussed above that the a-coefficient (which – it merits reiteration – was already included in this draft standard) ensured that the UE now should know which antenna is transmitting and had to calculate a channel coefficient. The District Court cannot place the problem in TS 25.211 V2.1.0 - which, according to Vringo, had not been recognised either - that the a-coefficient was the same in the PSC9 and the SSC10 (pleading notes no. 100): this too was already a given in that draft standard, leaving aside the fact that Vringo did not point out any passage in the patent that describes this problem (paragraphs [0010] and [0011] refer to Figure 2, which is part of the prior art). The same goes for the point mentioned by Vringo in no. 102 of the pleading notes that, when STTD is used, both antennas simultaneously transmit for the PCCPCH, while the SCH (modulated with the a-coefficient) was transmitted via TSTD and (therefore) in an alternating fashion. That option could also be read in TS 25.211 V2.1.0 (5.3.3.3.1 and Figure 17, where PSC is indicated with Cp and SSC with Cs).

4.15. For the opinion that the invention does not lie in the recognition of the problem, the

District Court, along with ZTE, finds support in the emails exchanged among the standardisation group at that time. Shortly after the announcement that the number of timeslots per frame would be reduced from 16 to 15 in order to align with the CDMA2000 standard, one of the members of the working group tasked with

9 Primary synchronization code, see legal findings 4.2.7 and 4.2.8 10 Secondary synchronization code


investigating the effect of that change, "AH15" for the standard to be developed, T. Mochizuki of NEC, noted that 'TSTD of SCH is also affected by the 15-slot structure. SCH transmission starts from a different antenna between even and odd frames' (email of 17 June 1999). He also suggested a solution to that problem: ‘This is just a proposal linking transmission antennas to whether the frame number is even or odd.’ (email of 23 June 1999, Vringo’s Exhibit 10). Another member of the working group then offered to write a text proposal for Mochizuki’s proposal. This shows that the problem, for which the patent provides a solution, had already been recognised. Vringo argued that it was not recognised in said email exchange that there was a problem on the reception side. However, Vringo did not provide any other convincing explanation as to what the email discussion in question must have been about and which problem the members of the working group must have had in mind then. It is not likely that the working group would make proposals to adapt the standard if they did not consider this to be a (serious) problem. Finally, that the working group sufficiently recognised this problem is shown by the email of the member from Nokia itself (O. Lehtinen) who referred to "the 15 slot problem in TSTD" (underlining added, District Court) when presenting the solution according to the patent to the working group, whichincidentally, was on the priority date.

4.16. It should be added that restraint must be observed in assuming the existence of a problem

invention (cf. T 971/92), as an average person skilled in the art is, after all, always seeking improvements and solutions. ZTE rightly adduced that in the proposed change from 16 to 15 slots per frame, the average person skilled in the art will generally check the implications of this change for the standard. Consequently, there was already a clear incentive before the priority date to go looking for the problem for which the patent seeks to provide a solution. That is also evident from the emails in the AH15 working group already discussed above. Vringo insufficiently substantiated that, in this case, recognising the problem would have demanded an undue effort by the average person skilled in the art. In any event, no considerable period of time elapsed before the problem was recognised. The proposal to go from 16 to 15 slots per frame dates from early June 1999 and the priority date of the patent was 9 July 1999.

4.17. For the solution to the aforementioned problem, ZTE rightly pointed out the existence of

essentially two options (depicted below), both of which are obvious to the person skilled in the art:

4.18. In the first solution, frame 2 also starts at antenna 1, despite the fact that frame 1 ends at

antenna 1. This is the solution provided by the patent. In the second solution, the antenna hopping (the alternating transmission pattern) is continued with the notification that


every odd frame begins at antenna 1 and every even frame at antenna 2. This is the solution as initially proposed in the working group. Both solutions are obvious for the person skilled in the art, as ZTE sufficiently explained. Choosing one of these obvious solutions is not inventive.

4.19. The experts engaged by the parties debated on whether the other solutions to the problem

suggested by the Technical Board of Appeal11 are realistic. As already mentioned at the hearing, it is striking that Vringo’s expert is silent on the TBA’s suggestion to use an adaptive filter (paragraph 3.11. of T0573/06, shown in paragraph 2.6 above) when he discussed those suggestions in paragraph 27 of his statement. Therefore, this does not seem to be a useful solution. As to the other suggestions (to modify the pattern in such a manner that no partial pattern arises, or not transmitting symbols in the last timeslot), ZTE, with reference to its experts, argued sufficiently convincingly that these are less obvious and result in loss of efficiency. Put differently, the District Court has become sufficiently convinced that the aforementioned two solutions are the “natural” and (first) obvious solutions to redress the problem of the patent. Choosing between these two is not inventive, and even less so because it was not argued that one solution offers advantages over the other. Both also have logical disadvantages: if the odd frames begin with one antenna and the even frames with the other, the UE must be signalled whether it is an odd or an even frame; the solution of the patent involves loss of transmission diversity efficiency, especially when the signal of, for example, antenna one is lost. When there are two solutions that are equally obvious, a pointer to one or the other is not necessary, contrary what Vringo argued.

conclusion 4.20. Independent claims 1 and 12 of the patent therefore lack inventive step. Vringo did not

dispute (with reasons) ZTE’s assertion that the dependent claims therefore lack inventive step. ZTE’s primary claim will therefore be awarded. As the mainly unsuccessful party, Vringo will be ordered to pay the costs of the proceedings. The parties have agreed that the costs of the proceedings on both sides must be estimated at EUR 150,000, so that Vringo is to pay this amount to ZTE. The statutory interest sought on that amount as from two weeks after the date of service of this judgment - as provided in Article 6:119 Dutch Civil Code - is also awardable.

4.21. As sought, the costs order is declared enforceable notwithstanding appeal. 5. The decision The District Court: 5.1. nullifies the Dutch part of European patent EP 1186119; 5.2. orders Vringo to pay the costs of these proceedings, estimated on the part of ZTE to date

at EUR 150,000, to be increased by the statutory interest on said amount as from the fifteenth day after service of this judgment until the day of full payment;

11 Cf. the decision at 3.11 et seq.

INFORMAL TRANSLATION C/09/481474 / HA ZA 15-100 27 28 October 2015 5.3. declares this costs order to be enforceable notwithstanding appeal; 5.4. denies any additional or different claims. This judgment was rendered by mr. E.F. Brinkman, mr. F.M. Bus and mr. ir. J.H.F. de Vries, and pronounced in public on 28 October 2015.

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