Insights Court of Appeal dismisses Apple’s appeal that Optis’s patent was invalid on grounds of anticipation by prior art


Optis Cellular Technology LLC claimed that its European Patent (UK), entitled, “Method and Arrangement in a Wireless Communication Network”, relating to “a mechanism for Radio LinkControl (RLC) polling for continuous transmission within the wireless communication network” (the Patent) was valid and essential to the relevant mobile telecoms standards and that it was being infringed by the defendant, Apple Retail UK Ltd.

At first instance, Apple conceded essentiality and infringement. Mr Justice Meade found that the Patent was valid, rejecting Apple’s case that it lacked novelty or was obvious over the cited prior art. Meade J gave Apple permission to appeal on novelty. He also rejected Apple’s proprietary estoppel case and refused permission to appeal. The Court of Appeal refused permission to appeal the proprietary estoppel point.

Apple appealed the decision on validity, arguing that the Patent had been anticipated by a prior art document referred to as InterDigital. That issue turned on the construction of three Claims (Claims 1, 6 and 9).


Giving the lead judgment, with which the other Justices agreed, Lord Justice Birss dismissed Apple’s submissions that Meade J had failed to take proper account of the language, context and purpose of the Patent. Birss LJ held that he would interpret the Claims of the Patent in the same way as Meade J.

Given this conclusion on construction, it was common ground that there was no anticipation of Claims 1, 6 or 9 by the prior art. Birss LJ noted that Meade J had held that even on Apple’s construction, Claims 6 and 9 were novel because although the prior art method produced the same result as the Claim method in special, rare, but not unrealistic circumstances, that did not mean it was the same method. As argued on appeal, that also raised an issue about the relationship for the purposes of novelty between a method Claim and a situation in which the method described in the prior art would (so it was contended) be within the Claim in those special circumstances. This threw up the question whether there was an analogy with Hoechst Celanese Corporation v BP Chemicals Ltd [1998] FSR 586 and whether, and if so how, the requirement for an inevitable result works. Birss LJ said he would prefer to address these points in a case in which they would be decisive. (Optis Cellular Technology LLC v apple Retail UK Ltd [2022] EWCA Civ 792 (13 June 2022 — to read the judgment in full, click here).