Tuesday, November 13, 2012

Nokia patent-in-suit allows users to take calls while downloading over-the-air updates

This past weekend I was going to report on a first hearing that took place at the Munich I Regional Court on Thursday in one of Nokia's various patent infringement actions against BlackBerry maker Research In Motion but had to change plans after Apple and HTC's surprise announcement. Nevertheless, the patent that Nokia is asserting in that particular lawsuit is interesting enough that I didn't want to wait until the trial in April 2013 before reporting on this matter.

EP0804046 on a "method and apparatus for updating the software of a mobile terminal using the air interface" does not claim ownership of over-the-air (OTA) updates in general. In fact, the patent document points to two earlier-filed (and already expired) U.S. patents that disclosed OTA updates, U.S. Patent No. 5,297,191 (AT&T) and U.S. Patent No. 5,418,524 (Motorola). But Nokia's EP'046 addresses a key issue: even if bandwidth is dedicated to a large download, users will still want to receive and accept voice calls.

The patented solution (actually, a set of solutions) is not always needed. For example, Nokia isn't alleging infringement by RIM's devices to the extent that they are operated exclusively in 3G (UMTS) networks, but in practical terms, nationwide networks in large countries like Germany don't exclusively provide 3G service. Nokia presented to the court a map of Germany that shows in which areas (mostly large cities) 3G is available and where users have to content themselves with GSM-based GPRS data service.

RIM also makes an argument concerning the Network Mode of Operation (NMO). According to representations in court by Nokia's lead counsel in this action, Oliver Jan Juengst of Bird & Bird, RIM doesn't dispute infringement in NMO-1, which is the NMO chosen by Deutsche Telekom (T-Mobile), the market leader in this country.

In his opening remarks, Judge Dr. Matthias Zigann, who is currently presiding over a large number of smartphone-related patent lawsuits in Munich, pointed out that RIM's defenses at this stage are primarily based on legal questions of liability. RIM basically argues that the alleged infringement (Nokia's priority is clearly on a theory of contributory infringement) involves actions by the mobile networks that are beyond its control, which is the equivalent of a divided infringement defense under U.S. patent law. But RIM's lead counsel in the German Nokia actions, Dr. Martin Faehndrich of Hogan Lovells, stressed that this is just an early stage of the process and whenever Nokia clarifies its claim construction (in response to a separate nullity action brought by RIM against this patent, based on theories of obviousness), RIM may also present some technical non-infringement contentions.

Another RIM defense is that this patent allegedly falls within the scope of an arbitration clause under a standard-essential patent (SEP) license agreement between the parties, even though there is no claim that this patent-in-suit is standard-essential. This defense was already discussed at an earlier Nokia v. RIM hearing in Munich involving another patent, where Judge Dr. Zigann's predecessor, Judge Dr. Peter Guntz (who has meanwhile joined a Board of Appeal at the European Patent Office), appeared very skeptical. The court discussed this matter with counsel for approximately 10 minutes during which the courtroom was closed to the general public. In this case, the "general public" included only two persons: a court interpreter who attended the hearing only for training purposes, and yours truly. Needless to say, I respect confidentiality and don't take this personally.

If Nokia successfully enforces this patent against RIM, I believe it will also be in a strong position against other device makers that provide OTA updates in Germany. I have so far attended first hearings over four Nokia patents, all of them in Munich and all of them against RIM, and the more I watch these cases, the more I'm convinced that Nokia has a very strong portfolio of non-standard-essential patents that the rest of the industry will need to license. Nokis is also suing two Android device makers, HTC and ViewSonic, but it appears that those cases were slowed down because they don't have German subsidiaries, requiring international process to serve the complaints in foreign countries. The first Munich hearings at which HTC and ViewSonic have to defend themselves against Nokia will take place later this month, with a whole series of hearings scheduled in the coming months. The Nokia-HTC situation will be the subject of my next post.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Share with other professionals via LinkedIn: