Nokia Corporation v Qualcomm Incorporated - [2006] APO 7

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 732973 in the name of NOKIA CORPORATION

Title: Control of Transmission Power in Wireless Packet Data Transfer.

Action: Opposition under Section 59 of the Patents Act by QUALCOMM INCORPORATED

Decision: Issued 3 March 2006 .
Abstract

The application was found to be deficient in the following respects.
Independent claims 1 and 13 were not clear on the operational relationship between the defined first and second states of the radio connection in a cellular system. Consequently it was not clear, from these claims, how the method for controlling transmission power operated.
Further these claims were not clear on the system switching between the first and second states alternately and on parameters determining the switching rate. The claims were also found to be not fairly based.
In this opposition these flaws were very significant.
The opponent was successful on section 40 issues. The opponent was unsuccessful on novelty and inventive step issues.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 732973 by NOKIA CORPORATION, and opposition thereto, under Section 59, by QUALCOMM INCORPORATED.

BACKGROUND

Nokia Mobile Phones Ltd filed patent application 732973 on 17 June 1997. That application takes priority from a Finnish patent application filed on 17 June 1996. Application 732973 is now proceeding in the name of Nokia Corporation (“Nokia”). The application was advertised accepted on 3 May 2001.
Qualcomm Incorporated (“Qualcomm”) filed a notice of opposition on 3 August 2001 to the grant of a patent on application 732973. A statement of grounds and particulars in support of the opposition followed on 5 November 2001. Qualcomm subsequently amended that statement to add one new particular under the ground of novelty. That amendment was allowed on 21 August 2002.
Both parties received numerous extensions of time to serve evidence. The serving of evidence was completed on 12 November 2004.
A hearing was held in Canberra on 22 and 23 March 2005. Mr Steven Wulff, patent attorney of Davies Collison Cave, represented Nokia. Mr Bill McFarlane, patent attorney of Madderns, represented Qualcomm. Mr Pavel Kalousek, US patent attorney and employed by Qualcomm, Mr Alex Grant, a declarant for Qualcomm, and Mr Martin Pannall, patent attorney of Madderns, were also present.
THE SPECIFICATION
The specification states the invention concerns the control of transmission power in a cellular radio network. The invention is asserted to particularly concern a method for controlling the transmission power taking the special features of packet switched links into account.
The specification further describes cellular networks based on radio communication as the most general form of mobile bi-directional data transfer. Links between terminal devices and base stations are most generally circuit switched, that is, a certain transfer capacity must be totally reserved for the use of a single active data transfer link irrespective of whether the link requires continuous data transfer. The specification describes the Global System for Mobile Communications (“GSM”) as an exemplified cellular system. In the GSM system, the data transfer capacity to be reserved for one link is one traffic channel formed by one Time Division Multiple Access (“TDMA”) time slot being cyclically repeated on the transmission frequency and on the receiving frequency.
In circuit switched data transfer, one problem is the sufficiency of radio frequencies. Data transfer in packet form has been developed as a solution. For the control of the transmission power of radio transmissions though, data transfer in packet form causes problems that cannot be solved by methods known in connection with circuit switched links.
The control of the power transmission can be based on open-loop or closed-loop. In open-loop control, the transmitting device does not get any information on the quality of the arrived signal as feedback, but it makes a decision on changing the transmission power by measuring the level of the signal received. In closed-loop control, the receiving device measures the quality of the signal received and delivers a parameter describing it back to the transmitting device. Closed-loop control is reliable, but the receiving of the signal, the processing of parameters describing signal quality, and transmission of the information back to the transmitting device take time.
The specification states the object of the invention is to overcome the above-mentioned difficulties or at least provide a useful alternative.
The specification ends with 21 claims. The two independent claims are claims 1 and 13. The former relates a method for controlling transmission power in a terminal device. The latter relates a method for controlling transmission power in a base station. These two claims are recited below.
1.A method for controlling transmission power in a terminal device of a cellular radio system, the radio connection of which with a certain base station comprises an alternative first state (10) and second state (11), in the first state of which the terminal device receives (30) signals transmitted regularly by the base station and in the second state of which the terminal device additionally transmits (34) data as packets to the base station, characterized in that in said first state the control of the default value of the transmission power in said terminal device is based on measuring (31, 32) of the signals transmitted regularly by the base station, and in said second state the control of the transmission power in said terminal device is based both on the feedback transmitted by the base station on the quality of the data transfer link (35, 36, 37, 39) and on measuring of other signals transmitted regularly by the base station.
13.A method for controlling the transmission power in a base station of a cellular radio system, the radio connection of which at least with one terminal device comprises an alternative first state (10) and second state (11), in the first state of which the base station transmits regularly control signals and in the second state of which the base station additionally transmits data as packets to a certain terminal device, characterized in that in said first state the default value of the transmission power in said base station is the same as the maximum transmission power of the base station and in said second state the control of the transmission power in said base station is based as well on the feedback of the quality of the data transfer link (35, 36, 37, 39) said feedback being transmitted by the terminal device, as on the time passed from the reception of the previous acknowledgment message by the base station from said terminal device.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars mentions the following grounds of opposition. The claimed invention is not a manner of manufacture, is not novel, and does not involve an inventive step. Further the specification does not describe the invention fully, and the claims are not clear or fairly based on the matter described in the specification.
Qualcomm provided numerous particulars to support the above grounds of opposition.
The particulars provided in respect to the ground of lack of manner of manufacture recite the invention to be a mere collocation in the light of prior art information, common general knowledge, and absence of novelty and inventive step. I will deal with the ground of lack of manner of manufacture under the appropriate headings of novelty and inventive step.
EVIDENCE
Qualcomm provided evidence in support from Mr Alex Grant, professor at the Institute for Telecommunications Research at the University of South Australia. Mr Grant exhibited six items of prior art against the application and commented on the clarity of numerous terms in the opposed specification.
Nokia provided evidence in answer from Mr Stephen Dujmovic and Mr Maurie Dobbin. Mr Dujmovic is a technical consultant specialising in GSM and WCDMA (Wideband Code Division Multiple Access) cellular systems for an Australian company. Mr Dobbin is sole shareholder and principal director of an Australian telecommunications engineering services company. Mr Dobbin has filed two declarations as evidence in answer.
Qualcomm provided evidence in reply from Mr Grant. Three exhibits accompanied that evidence.
INTERPRETATION OF THE CLAIMS
Mr McFarlane submitted there were numerous inconsistencies between the claims of the specification of application 732973 and the descriptive part of the specification. Mr McFarlane said this meant that an interpretation of the claims needed to be assumed.
Packet-switched v circuit switched links
Much of the discussion at the hearing and in the evidence concerned whether the claims related to packet-switched or circuit-switched systems.
Packet-switched systems are where data is broken up and sent in small packets between two points with the packets being re-assembled at the destination to re-create the original data. There is no dedicated path between users. Each packet carries a header that determines the destination of the packet. The packets take different paths towards the destination but also share their paths with other packets. This enables avoidance of overheads and idle time inherent in circuit-switched networks.
Circuit-switching is where a circuit is established between two points allowing two-way communication until the circuit is taken down. In the example of a standard telephone network the taking down of a circuit is when the parties hang up. Characteristics of circuit-switched networks are that links between two points are totally reserved irrespective of whether continuous data transfer is required, that data is sent sequentially and that there is little or no delay. The latter is a necessity for real-time applications such as voice conversations. Circuit-switching though is inefficient for data transmission.
Mr Wulff cited several decisions to state the claimed invention must be read as by a person skilled in the art in the context of the descriptive part of the specification and in the context of the published knowledge existing at the time of the application. See for example Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183 at 242-243, Populin vHB Nominees Pty Ltd, 41 ALR 471 at 476-477, and Kirin-Amgen Inc v Hoechst Marion Roussel Ltd, [2005] RPC 9 at [46-47]. Mr Wulff said the context meant the common sense approach was that the claims referred to packet-switched connections.
It may be correct to say that the claims must be read in the context of the rest of the specification as a whole. On the other hand it seems impermissible to confine the claims to elements of the description if such elements are not expressly or by proper inference found in the claims themselves. See Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 400, a decision from which the principles of construction were cited with apparent approval in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company, [2005] FCAFC 224.
Mr McFarlane submitted the claims are silent in respect to packet-switched systems. He further noted a reference at page 5 lines 18-21 of the specification that the application is exemplary of and not to be restricted to packet-switching. Mr McFarlane consequently asserted that packet-switched systems or circuit-switched connections, or packet overlays over circuit-switched connections could be read into the claims.
The passage at lines 18-21 states the GSM system is dealt with as an exemplified cellular system, the GPRS (General Packet Radio Service) packet protocol being planned as an extension thereto. This appears less definitive than Mr McFarlane’s interpretation of the application not being restricted to packet-switching. In my view, the passage only suggests the particular GSM system and GPRS protocol is exemplified.
Claims 1 and 13 of the application define the radio connection between terminal devices and base stations as comprising alternative first and second states. In the claims these states are characterised by direction of signal transmission and by the control of transmission power. There is nothing more defined in the claims about the nature of the radio connection. These claims are wholly silent in respect to whether the radio connection is packet-switched, circuit-switched or an overlay of one over the other. In following the Décor v Dart (supra) decision, in this case, it is not legitimate to confine the scope of these claims by reference to packet-switched limitations that may be found in the body of the specification.
Even if it were permissible in this case to import elements of the description, in respect to the radio connection, into the claims, it appears that Nokia’s case is difficult. Mr Wulff was adamant throughout much of the hearing that the field of the invention related to packet-switched connections only. Nokia’s declarants also give strong support to this position. Mr Wulff subsequently during the hearing conceded that Nokia did not intend the claims to relate to packet-switched systems only. He described the invention as a hybrid. That is, the invention relates to circuit-switched networks overlaid by a packet-switched protocol. This is a significant broadening of the concept of the invention from that originally asserted by Mr Wulff and Nokia’s declarants.
It could be argued the descriptive part of the specification is even less restrictive in respect to the switching system. Mr McFarlane submitted that Mr Grant regarded the specification as describing the invention to be the use of both open and closed loop power control. Mr Grant further noted there is no express discussion in the specification of packet-switched cellular networks. He acknowledged claims 1 and 13 of the application define that data is transmitted as packets. Mr Grant stressed though that the transmission of data as packets is only defined in these claims in the context of the second state. Furthermore he equated the data packets to finite duration data frames, not necessarily that there is switching of packets. Additionally Mr Wulff acknowledged, in reference to page 1a, lines 20-31, that the specification discusses data transfer in packet form in circuit-switched systems. This appears to suggest that the transmission of data in packets does not necessarily mean that a packet-switched communication system is used for the transmission.
The thrust of the specification is about the control of transmission power. The body of the specification principally mentions packet-switched links in two circumstances. In the first sentence on page 1a, the invention is described as taking the special features of packet switched links into consideration. On page 16 at line 3, there is discussion on the correction of the transmission power many times during one packet switched link. There may be further loose inferences in the specification that the invention relates to a packet-switched environment. On the whole though, the remainder of the specification refers to packets principally in the context of packet data channels and transmission of data in packets. In his first declaration with reference to page 5 of the specification, Mr Dobbin stated that packet data transmitted in a GPRS network is sent over master and slave channels. While this may be so, there is little in the specification as a whole to suggest the scope of the discussion should be interpreted restrictively to any particular protocol. I conclude there is inadequate support from the specification to restrict the interpretation of the radio connection to being a particular type of switched link.
Special features of packet-switched systems
In Nokia’s evidence, much was made of the special features of packet-switched systems and that inherently the specification described such features. For instance, Mr Dobbin described these features as the switching between the first and second states alternately, and that the switching rate between these states depended on packet length and packet transmission time, amongst other things.
Mr Wulff described the alternative first and second states of the claimed invention. He said it is absurd to say that a circuit-switched radio connection can exist in alternative first and second states. A circuit-switched radio connection is a continuous circuit which either exists or does not. Mr Wulff said it cannot exist in more than one state at a time. Conversely a packet-switched connection may exist in alternative states depending on whether there is data to be transmitted or not.
Mr McFarlane submitted the interaction of these states is not defined in the claims. Furthermore there is no definition of how the states are used.
Claims 1 and 13 define that the radio connection comprises an alternative first and second state. The states are defined by signal transmission characteristics between the terminal device and base station, and by the transmission power control methods employed in the two states.
There is nothing in these claims clearly defining the operation of the two states. That is, what maintains the states or triggers a switching of state, or whether they operate alternately. Mr Wulff suggested the latter excluded circuit-switched connections. This may appear so on the face of it. However the states as claimed relate to alternative transmission power control characteristics, not to how the states interact in respect to particular types of radio connection and, more so, not to whether data is to be transmitted or not. There is no link defined in the claims between the two states such that particular connections are excluded from the scope of the claims.
Due to the absence of any operational link in these claims between the two states it may even be interpreted from these claims that one or other state is optional as Mr McFarlane suggested. The word “alternative” does not necessarily mean the states alternate. It may mean one or other state is not used. For instance, it is plausible that the second state is not necessarily used, such as where there is insufficient time for feedback. Alternatively it is plausible that the open loop method of the first state is not used.
I find that at least claims 1 and 13 are seriously lacking in clarity on the operational relationship between the first and second state. Consequently it is not clear, from these claims, how the method for controlling transmission power operates.
Nokia’s declarants and attorneys asserted that one of the special features of packet-switched systems used by the invention is the switching between the first and second states alternately. Claims 1 and 13 define first and second states and the transmission of data in packets in one of those states. On the other hand, these claims are notably silent of any switching between states alternately. I regard at least the independent claims 1 and 13 as unclear on this point and as manifestly lacking this fundamental feature of the invention as described by Nokia.
Other special features mentioned by Mr Dobbin, for instance, included the switching rate between states being dependent on packet length and packet transmission rate, amongst other things. The inclusion of features in the claims about the switching rate being dependent on features of the data packets and their transmission and feedback characteristics would appear to go some way towards supporting Nokia’s position that the claimed invention relates to packet-switched systems. However these features are also absent from at least claims 1 and 13.
In view of Nokia’s emphasis of the invention applying to packet-switched systems, the absence of these special features from claims 1 and 13 suggests that at least these claims are also not fairly based.
Packet-switching or packets in the dependent claims

Mr Wulff referred to claim 7. This claim and claim 16 are the only claims explicitly defining a packet-switched radio link. Claim 7 defines the setting of a time limit, from reception of the feedback by the terminal device to the terminal device having started to transmit the next packet, based on the frequency of correction of the transmission power earlier during the same packet-switched radio connection. Mr Wulff submitted the reference to the same packet-switched radio connection in claim 7 confirmed that the radio connection referred to in claim 1 is a packet-switched one.
Mr McFarlane submitted the definition of a packet-switched radio connection in claim 7 left the radio connection in claim 1 to be interpreted more broadly.
On one view the definition of the same packet-switched radio connection in claim 7 may suggest the radio connection in claim 1 is packet-switched. This may be by application of a purposive construction of claim 1, Catnic Components (supra), based on all the claims as a whole. On the other hand, one could argue the “same” packet-switched radio connection in claim 7 has no antecedent as there is no earlier discussion of a packet-switched radio connection. Still further the lack of antecedent or, more broadly, the inconsistency of expression, leads to ambiguity in the relationship of the radio connection in claim 7 to that in claim 1. This further leaves the connection in claim 1 to be interpreted as a radio connection other than a packet-switched one as Mr McFarlane suggests or as a packet-switched one. In the former case the combination of the features of claims 1 and 7 may define a packet protocol overlaid over a circuit-switched connection for example. In either case it seems the expression in claim 7 is manifestly lacking in clarity. Claim 16 appears to be similarly flawed. I find Mr Wulff’s submission on this point unsustainable.
On a similar point Mr McFarlane objected to the term “next packet” in claims 6 and 8 stating this made little sense as there was no first packet defined in any earlier claim. On the other hand claim 1 clearly defines the transmission of data in packets in the second state. It is also clear that multiple packets are necessarily involved. Furthermore claim 6 defines a time limit in relation to the next packet and the feedback on the latest transmitted packet. Similarly claim 8 discusses the next packet in relation to a certain moment in time. Given the definitions of particular time relationships and multiple packets, either explicitly or implicitly, I find there is no serious deficiency in the claims on this point.
Other submissions on packet-switching
At times during the hearing Mr Wulff made some startling submissions to support the packet-switched interpretation. He said an applicant would not knowingly claim beyond the descriptive part of the specification or claim the prior art. Mr Wulff indicated that, consequently, the claims ought to be construed to avoid the prior art.
If this submission was given support it would appear to negate the need for claims in a specification. The submission appears to suggest that the public or the person skilled in the art determine an appropriate monopoly based on the described invention and the prior art. This would appear to place undue burdens on the general public and persons skilled in the art to ascertain the scope of the patent monopoly, especially in respect to identifying and applying relevant prior art to determine the scope. If claims are present then this submission further infers that, by construing claims to avoid the prior art, all claims must necessarily be regarded as novel.
Mr Wulff’s point may have been that where multiple interpretations in a claim are possible then an interpretation that avoids the prior art is to be preferred. This appears to be an equal burden on the public or person skilled in the art like the above situation. The identification and determination of relevant prior art would appear to be a necessary precursor to determining the scope of a claim.
The Lockwood Security Products Pty Ltd v Doric Products Pty Ltd decision, [2004] HCA 58 at [44-49], states the requirements of section 40 of the Patents Act (clarity, succinctness and fair basis in respect to the claims) go only to the form of the specification. Issues of whether the alleged invention is novel, inventive or has utility, are of no relevance to whether the specification complies with section 40. The Lockwood (supra) decision appears to suggest it is impermissible to introduce novelty, inventive step and utility into section 40 questions.
I find I cannot give support to Mr Wulff’s submission that the claims be construed to avoid the prior art.
Mr Wulff further referred to the abstract accompanying the specification to state the specification is plainly addressed to a skilled person in wireless packet-switched data transfer. The opening sentence of the abstract refers to packet switched data transfer. Mr McFarlane noted Regulation 3.3(6). That regulation states an abstract is not taken into account in construing the nature of the invention that is the subject of the specification to which the abstract relates. I regard Mr Wulff’s submission in respect to the abstract as unsustainable.
Other significant clarity issues
Mr McFarlane submitted the expression “other signals”, at the foot of claim 1, lacked clarity as there was no indication of what these signals were. I accept there is no clear definition of the nature of these signals in claim 1. It could be argued there are a number of signals mentioned in the claim in relation to the base station and hence it is not clear whether the “other signals” are exclusive of some or all of those. Within claim 1 these “other” signals may or may not be exclusive of those regularly transmitted by the base station in the first state at line 5 of the claim. Conceivably the claim may also be including signals similar to those related to elapsed time of receipt of a previous acknowledgement message as in claim 13. In claim 1, it seems the “other signals” are simply an adjunct to anything else in the claim on which the transmission power control is based in the second state. While the nature of these “other” signals may not be defined, I read the “other signals” as signals other than the feedback transmitted by the base station on the quality of the data transfer link. I find the scope of claim 1 is not seriously flawed on this point.
Mr McFarlane stated claim 8 is inconsistent with claim 1. He stated claim 8 defines the transmission power as based on any feedback transmitted by the base station whereas claim 1 defines the transmission power as based on feedback of the quality of the data transfer link. I regard this interpretation as incorrect. Claim 8 is appended to claim 1 and clearly refers to the feedback transmitted by the base station. In plain context, I think it is clear that claim 8 is referring to the feedback transmitted by the base station on the quality of the link of claim 1.
Mr McFarlane submitted there were further inconsistencies between claims 1, 6 and 8 leading to doubt as to what is defined in these claims and how the methods operate. He pointed out that claim 8 defines a formula where the transmission power is adjusted for the time of the feedback. The longer it is since the feedback was received the less relevance is applied to the feedback when adjusting the transmission power. Mr McFarlane labelled this an exponential forget factor. Mr McFarlane noted claim 1 does not have this factor. Claim 1 is very prescriptive in that in the second state the feedback is used. There is no forgetting factor in claim 1. Mr McFarlane suggested the method cannot be practised both ways and consequently claim 1 is incongruent with claim 8.
In claim 8 the relevance of the feedback is less the longer it is since the reception of the feedback. However the relevance does not reduce to zero. The feedback continues to have some relevance albeit progressively smaller over time. Consequently I regard it as incorrect to suggest there is a forgetting factor in the claim. I see no inconsistency on this point between claims 1 and 8.
Mr McFarlane stated that claim 6 defines how the terminal device moves between the first and second states. Specifically, when a certain time has expired since reception of the feedback without the terminal device beginning to transmit the next packet then the terminal device moves from the second state to the first state. Mr McFarlane said this was incongruent with claim 1 and 8. He said claim 1 defines control of only the default transmission power value in the first state and that there is no movement defined between states. He said claim 8 only modifies the transmission power value in the second state and again there is no definition of movement between states.
I have already noted the absence of any operational link between the two states in claim 1. If this were corrected it would appear to resolve any present incongruence between claims 1 and 6. In respect to claim 8 it is appended to multiple earlier claims. The fact of claim 8 defining additional features, principally the relevance of the feedback with time, related to the second state only whilst one earlier claim, that is claim 6, defines relationships between the first and second states appears to be neither here nor there. If claim 8 is appended to claim 6 then the combined definition is one of merely stating the specifics of the second state in terms of relevance of the feedback with the conditions under which the terminal device moves from the second state to the first state. I conclude there is nothing incongruent between claims 6 and 8 on this point.
NOVELTY
The Meyers Taylor Pty Ltd v Vicarr Industries Ltd decision, (1977) 137 CLR 228, provides an appropriate test for novelty. The test is also known as the "reverse infringement test". Aickin J., at page 235, states:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
The Rodi and Wienenberger AG v Henry Showell Ltd decision, (1969) RPC 367, states that infringement occurs where each and every one of the essential features of a claim is taken.
A practical application of the above decisions suggests a claim lacks novelty if a prior citation discloses all of the essential features of a claim.
The Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553 at 576, states that what the authorities contemplate is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.
I will apply these tests to the present case.
At the hearing Mr McFarlane relied on the absence of claims to the invention operating in a packet-switched environment and on Mr Grant’s assertions that combined open and closed loop power control were well known methods to state that the prior art cited by Qualcomm rendered the claims of the application lacking in novelty. On the other hand, Mr Wulff referred to the special features of packet-switched systems discussed by Nokia’s declarants to distinguish the invention from the prior art.
I think the above statements from both parties need to be treated with significant caution. While I accept many claims do not specifically define packet-switching, the claimed invention appears to be more than merely well known methods of combined open and closed loop power control. Rather, it appears that particular combinations of these power control methods are claimed in particular states. I have earlier found that at least the independent claims may be interpreted such that one or other state is not used. However in the context of a radio connection comprising an alternative first and second state, in this case, I would expect prior art to at least disclose a capability of operation in both states in order to challenge the novelty of the claims. On the other hand, one or more of the special features mentioned by Nokia’s declarants appear to be absent from most of the claims. I will approach the cited prior art with these reservations in mind.
Qualcomm principally relied on four documents under this ground. The documents describe code division multiple access (“CDMA”) systems. CDMA is a type of multiple access between mobile phones and base stations where receivers discriminate among various signals by the use of different codes. Each station is assigned a spreading code or chip sequence. Signals with the desired spreading code and timing are received while signals with different spreading codes appear as wideband noise. CDMA is essentially a circuit-switched system. Second generation (“2G”) digital mobile phone technology is based on circuit switching and was implemented in Australia as GSM and CDMA.
US Patent 5056109
This patent describes the controlling of transmission power in a CDMA cellular mobile telephone system. Claim 1 of that patent contains a summary of the pertinent disclosure. First power measurement means, each coupled to a respective mobile telephone, measure signal power received by respective mobile telephones. First power adjustment means, each coupled to a respective mobile telephone and corresponding first power measurement means, increase or decrease the transmission signal power of corresponding mobile telephones in response to the signal power measurements. Second power measurement means, each coupled to a respective cell-site (base station), measure signal power received by respective base stations from corresponding mobile telephones. Power adjustment command generators, each coupled to respective base stations and corresponding second power measurement means, generate power adjustment commands in response to the latter signal power measurements. The power adjustment commands are transmitted by the corresponding base stations to the mobile telephones. Second power adjustment means are responsive to the commands directed to the mobile telephones to adjust the transmission signal power of the corresponding mobile telephones.
Mr Grant stated the operation of the first means, especially the first power adjustment means, of the US patent generally corresponded with the first state or open loop power control method of at least claim 1 of the present application. He also said the operation of the second means, especially the second power adjustment means, of the above patent generally corresponded with a closed loop control method. As indicated above, I have concluded the first and second states, defined in the independent claims of the present application, are inadequately linked. However the independent claims do claim the second state to be a combined closed and open loop power control. Mr McFarlane stated the combined closed and open loop control is disclosed in US 5056109 at column 7 lines 32-35. This may be so but there is no clear disclosure of such combined control occurring in the second state claimed in the independent claims. Mr Grant acknowledged the transmission of data as packets in the second state was not explicitly disclosed in the US patent. From my reading of the US patent this is correct. Consequently I consider an equivalent second state, as claimed in the present application, cannot fairly be said to exist in the US patent.
I conclude the claims of the present application are novel over US Patent 5056109.
American National Standards Institute, ANSI J-STD-008
“Personal Station-Base Station Compatibility Requirements for 1.8 to 2.0 GHz Code Division Multiple Access (CDMA) Personal Communications Systems”
Mr McFarlane and Mr Grant principally relied on pages 2-4 to 2-6 and 3-70 of this standard. Mr Grant stated that ANSI J-STD-008 discloses a system consisting of two alternate states. The operation of open loop and closed loop power control is described. Mr Grant asserted that closed loop power control is used in conjunction with open loop control.
The referenced segments of this standard are principally about defining open loop mean output power levels and the allowable changes in the closed loop mean output power levels. The standard states the personal station (mobile station) shall provide a certain closed loop adjustment range around its open loop estimate. This appears to be short of disclosing combined closed and open loop power control based on quality of the data link and other signals in a second state where data is transmitted in packets.
I conclude the claims of the present application are novel over ANSI J-STD-008.
TIA/EIA Interim Standard, TIA/EIA/IS-95-A
“Mobile Station-Base Station Compatibility Standard for Dual-Mode Wideband Spread Spectrum Cellular System”
Mr Grant described the TIA standard and ANSI J-STD-008 as being for the same system but from two different standards bodies. The open and closed loop power control described in the TIA standard is substantially identical to that described in ANSI J-STD-008.
I make the same conclusion of the claims of the present application over the TIA standard as for the ANSI standard. I regard the claims as novel over the TIA standard.
Qualcomm Submission to the Cellular Telecommunications Industry Association (CTIA) CDMA Technology Investigation Subcommittee
“An Overview of the Application of Code Division Multiple Access to Digital Cellular Systems and Personal Communication Networks”
This document is dated January 1991 on the title page. This date was cited as the document’s disclosure date. I note the foot of the title page states a restriction on use. The restriction is described in terms of the information in the document being proprietary information rather than there being a restriction on disclosure. Mr Dobbin, for Nokia, stated he was aware of the existence of the document but a copy was not made available to him as he did not sign a confidentiality agreement. There is nothing in Qualcomm’s evidence of publication details.
In the light of the above, I find Qualcomm has not established the publication date of this document. On the other hand, the document is dated more than five years before the priority date of the application. As this document is a submission paper to a CTIA body, it may also be argued that the document became publicly available some time in that five year period. Nokia did not challenge the availability of this document. Given the five years between the date on the document and the priority date of the present application, I am prepared to accept the document became publicly available before the priority date of the application.
The Qualcomm submission describes power control for the return link, mobile terminal to base station, and for the forward link, base station to mobile terminal. Mr Grant stated that both open loop and closed loop power control are described for the return link.
The open loop control works as follows. The mobile terminal measures pilot signals transmitted regularly by the base station and, from these measurements, estimates the path loss from the base station to the mobile terminal. This estimate is used by the mobile terminal to set its own transmission power. This description of the open loop control method substantially corresponds with the first state of claim 1 of the present application. The closed loop control method describes the base station measuring signal strength received from the mobile terminal and subsequently transmitting power adjustment commands to the mobile terminal. These commands are combined with the mobile terminal’s open loop estimate to obtain the final value transmission power for the mobile terminal.
Many of the characteristics of the first and second states of claim 1 of the application are discussed in the Qualcomm paper. On the other hand there is no clear disclosure of a radio connection able to operate in a second state as claimed where a terminal device additionally transmits data as packets to the base station. I consider an equivalent second state, as claimed in claim 1 of the application, cannot fairly be said to exist in the Qualcomm submission paper.

The Qualcomm paper also describes forward link power control. The mobile terminal measures the signal to interference ratio and requests power adjustments of the base station accordingly. This suggests the base station controls its power based on feedback of the quality of the data link. This broadly corresponds with the second state of claim 13 of the present application. On the other hand there is no explicit disclosure in the Qualcomm paper of the first state of claim 13. Additionally Mr Grant acknowledged there is no disclosure in the paper of use, in the second state, of the time passed from reception of the previous acknowledgement message.
I conclude the claims of the present application are novel over the Qualcomm submission paper.
INVENTIVE STEP
Under section 7(2) of the Patents Act, an invention is taken to have an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge in the patent area before the priority date of the claims. Under sections 7(2) and 7(3) the common general knowledge may be considered either on its own, or together with prior art information which the skilled person could, before the priority date of the claim, be reasonably expected to have ascertained, understood and regarded as relevant.
The Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd decision, (1981) 148 CLR 262 at 280, states the question is whether the invention would have been obvious to a hypothetical skilled addressee armed with the common general knowledge at the priority date. Also from that decision at page 286, an appropriate test is whether a person skilled in the relevant field, and faced with the same problem, would have taken as a matter of routine whatever steps might have led from the prior art to the invention.
The Aktiebolaget Hassle v Alphapharm Pty Limited decision, [2002] HCA 59 at [50]-[53], appears to approve of the Wellcome (supra) test.
I will apply this test to the present case.
Mr Wulff said that in testing inventive step it is essential to identify the problem discussed in the specification. He then said the next step is to identify the person skilled in this art and then identify the common general knowledge of that person at the priority date of the claimed invention.
The problem to be overcome
Mr Wulff broadly referred to existing difficulties of transmission power control in circuit-switched systems where packet data transfer occurs. He also referred to the delay times of closed loop power control. Mr McFarlane similarly described the problem as a timing issue, particularly getting feedback more quickly. The discussion from both parties also broadly coincides with the discussion under the “Specification” section above.
The person skilled in the art
Mr Wulff stated the person skilled in the art was a skilled worker having a practical interest in wireless packet-switched data transfer. Mr McFarlane did not offer any significant alternative view.
While the specification mentions taking the special features of packet-switched links into consideration, it opens more broadly by stating the invention concerns the control of transmission power in a cellular radio network. Additionally the specification discusses the background art in relation to circuit-switched systems and open and closed loop power control. On this basis the specification appears to be addressed to someone more broadly than Mr Wulff’s description. I regard the person skilled in the art in Australia as one skilled in the field of cellular communications. This person might, for instance, be a mobile communications engineer, or a consultant or academic working with cellular communications technologies.
Mr Wulff stated that Mr Dobbin and Mr Dujmovic have around 40 years and 30 years, respectively, of practical experience in the field. Mr Wulff made much of the depth of practical experience of Nokia’s declarants against the purely academic and lesser experience of Mr Grant. Mr Wulff suggested that Mr Grant’s evidence carried less weight than the evidence of Nokia’s declarants.
I find Mr Wulff’s references to the length of experience of Nokia’s declarants in the field to be somewhat inconsistent. On the one hand he suggested I take the person skilled in the art to be one with a practical interest in wireless packet-switched data transfer. On the other hand, Mr Wulff stated the evidence of people with 30 to 40 years of experience in the field is to be preferred. Telecommunications generally has developed over a very long period of time. However cellular communications technology is relatively recent and has been a rapidly evolving technology. One could argue that experience from 30 to 40 years ago, whilst perhaps informative, is hardly likely to have been of high relevance at the priority date of the application. Nonetheless I accept from their declarations that both Mr Dobbin and Mr Dujmovic appear to have had requisite experience at the priority date in the cellular field too. Similarly Mr Grant appears to have had requisite knowledge in the cellular field albeit as a researcher at the priority date. I find insufficient cause to discount Mr Grant’s evidence compared with the evidence of Nokia’s declarants.
The common general knowledge
Mr McFarlane cited elements of Nokia’s evidence to identify the common general knowledge in this field. He referred to both of Nokia’s declarants’ evidence to support a view that the concepts of open and closed loop power control were well known in base stations and mobile terminals at the priority date of the application. Mr Grant further described the ANSI and TIA standards as being well known.
Mr Wulff accepted that circuit-switched and packet-switched data transfer per se was common general knowledge at the priority date, as were circuit-switched methods of open and closed loop power control. He also acknowledged GSM, TDMA systems and the GPRS protocol were common general knowledge.
There is precedent cautioning against the treatment of information that is well known as also being common general knowledge. The British Acoustic Films Ltd v Nettlefold Productions decision, (1936) 53 RPC 221 at page 250, considered whether material disclosed in publications would constitute common general knowledge in the art. This decision held that:
“a piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by those who are engaged in the particular art.”
The General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd decision, (1972) 89 RPC 457 at page 483, regarded the words “accepted without question” as putting the position rather high. This decision held the words, “generally regarded as a good basis for further action”, would be more appropriate.
This leaves doubt as to whether any of the features, that Qualcomm described to be well known, were common general knowledge. Additionally Mr McFarlane’s description of these well known elements covered a greater ambit than Mr Wulff’s description. Notably Mr Wulff specifically mentioned that open and closed loop power control in circuit-switched arrangements, rather than those types of control in circuit-switched and packet-switched arrangements, was common general knowledge.
The evidence from Qualcomm is notably weak on describing the common general knowledge at the priority date. Additionally, evidence or statements of what was well known does not necessarily mean those items were common general knowledge. I am prepared to accept Mr Wulff’s statements as to what was common general knowledge at the priority date.
Whether the documents could have been ascertained, understood and regarded as relevant
Mr Dobbin stated he was not aware of US 5056109 but was generally aware of its subject matter. Mr Grant stated likewise. On the other hand Mr Grant also expressed the view that someone skilled in the art performing a literature survey in CDMA power control or in power control generally would have been aware of US 5056109.
I conclude the person skilled in the art could, before the priority date, reasonably be expected to have ascertained, understood and regarded US 5056109 as relevant.
Mr Dobbin stated the ANSI and TIA standards related to CDMA base stations operating in a frequency band or inter-operating with an analogue network unique to the USA before the priority date. He said the standards were not widely known in Australia before the priority date.
Mr Grant stated the ANSI and TIA standards were well known and readily available to anyone working in the field in Australia. The power control method in the ANSI standard is essentially identical to that in the TIA standard. Mr Grant stated the latter was under consideration by a major telecommunications company for implementation in Australia. Mr Grant also stated that much of the contemporary literature on CDMA referred to this standard.
I expect the standards would have been well-publicised in their jurisdiction so that the cellular communications industry knew what it had to adhere to. The standards are US-based. At the priority date of the application though, the lack of international standards in cellular communications was an issue. Different standards in different countries or regions created problems with inter-connectivity and inter-operability across national boundaries for mobile phone users. Nonetheless the cellular communications industry has been a global industry for a considerable period of time. I expect persons skilled in the art in Australia would have had access to standards, on mobile to base station compatibility, that were operating in other major industrialised countries such as the USA. Mr Grant has indicated that one of the above standards was considered for adoption in Australia and contemporary literature referred to this standard. I conclude the person skilled in the art could, before the priority date, reasonably be expected to have ascertained, understood and regarded the ANSI and TIA standards as relevant.
Mr Grant, for Qualcomm, and Mr Dujmovic, for Nokia, both stated that they were not aware of the Qualcomm submission paper before the priority date of the application. Mr Dobbin stated he was aware of its existence. As an AUSTEL Working Group member he was offered a copy subject to maintenance of confidentiality of its subject matter. Mr Dobbin did not sign the confidentiality agreement and consequently did not receive a copy.

100. I have accepted earlier that the Qualcomm submission paper became publicly available some time in the five years between the date of the document and the priority date of the application. Given the restrictions on its use and dissemination, at least initially, as indicated above, I regard the document as one the person skilled in the art could not reasonably be expected to have ascertained before the priority date.
US Patent 5469471
101. Mr Dobbin stated he was not aware of US Patent 5469471 or its subject matter before the priority date. Mr Grant stated likewise but suggested someone skilled in the art performing a search of the literature would have been aware of this document. I am prepared to accept a person skilled in the art could, before the priority date, reasonably be expected to have ascertained, understood and regarded US 5469471 as relevant.
IEE Communications 78, Communications Equipment and Systems, Conference Publication Number 162, R. Thompson et al, “Automatic Power Control in the PTARMIGAN SCRA subsystem”
102. The declarants on both sides stated they were not aware of this IEE paper before the priority date. Mr Grant particularly noted that the subject of the paper was highly specialised and it is likely that the paper did not receive widespread attention in Australia. On the other hand IEE publications have been widely available and utilised in the electrical and telecommunications fields since before the priority date of the application. While the subject matter of this paper may be highly specialised, I regard this paper as one that a person skilled in the art performing a literature search in this field could reasonably be expected to have ascertained, understood and regarded as relevant.
Whether There is an Inventive Step
103. US Patent 5056109 together with the common general knowledge does not disclose the claimed features of the second state of the present application, namely combined closed and open loop control in the second state where data is transmitted as packets. Mr Grant stated that the use of connection-based or packet-based systems is immaterial to the power control method in this patent. On the other hand Mr Grant did not provide a high degree of support for this view. Furthermore this does not clearly address the test for inventive step of whether a person skilled in the art would have moved from the former to the latter as a matter of routine. I conclude there is insufficient evidence to suggest the addition of features of the second state as claimed would have been a matter of routine at the priority date. I regard the claims of the present application have an inventive step over US 5056109 together with the common general knowledge at the priority date.
104. Similar shortcomings arise out of reliance on the ANSI and TIA standards. I similarly conclude the present claims have an inventive step over these standards individually when combined with the common general knowledge at the priority date.
105. Earlier I concluded a person skilled in the art could not have reasonably been expected to ascertain the Qualcomm document. Nonetheless if that were incorrect I would for similar reasons as above conclude the claims of the application defined an inventive step over the Qualcomm document together with the common general knowledge.
106. US Patent 5469471 discloses a method for giving an indication of link quality to a mobile terminal user in a CDMA communications system. The use of open and closed loop power control is discussed with reference to the above-mentioned US Patent 5056109. Mr Grant acknowledged that US 5469471 has minimal connection with power control other than this reference. I conclude the claims of the application are not challenged by US 5469471.
107. The IEE paper describes a hybrid automatic power control using initial level setting by open loop followed by closed loop operation when a call has been established. A quasi-closed loop power control is further described. Mr Grant acknowledged the method does not use closed loop control in the second state since the power level is fixed for the rest of the transmission once communications are established. Mr Grant stated that using closed loop control in the second state is an obvious modification.
108. Firstly Mr Grant’s assertion is stated in the present tense rather than what was obvious at the priority date of the application. Secondly while closed loop control is a necessary feature of the second state as defined in the claims, it is not the only feature of the second state. The state is one of combined closed and open loop control and of data being transmitted as packets. I conclude the IEE paper does not challenge the claims of the present application for want of an inventive step.
DECISION
109. I have found the application is deficient in the following respects.
110. Claims 1 and 13 are not clear on the operational relationship between the defined first and second states. Consequently it is not clear, from these claims, how the method for controlling transmission power operates.
111. Further these claims are not clear on the system switching between the first and second states alternately and that the switching rate is based on features of the data packets and their transmission and feedback characteristics. In view of Nokia’s emphasis of the invention relating to packet-switched systems and in view of the absence of these features related thereto from the claims, I also regard claims 1 and 13 as not fairly based.
112. Claims 7 and 16 are the only claims explicitly defining a packet-switched radio link. These claims are not clear in respect to the expression “the same packet switched radio connection/link” in the context of the claims from which they depend.
113. I conclude the opponent is successful on section 40 issues.
114. There is patentable subject matter in the specification. I allow sixty (60) days from the date of this decision for Nokia to claim that subject matter in the claims. If suitable amendments are not proposed within that time I will refuse the application.
COSTS
115. Both parties said there should be a variation from the usual situation of costs following the event.
116. Mr McFarlane submitted that the difficult nature of the specification and the changing nature of the invention as described by Nokia’s declarants and attorneys compared with the claimed invention should be taken into account.
117. Mr Wulff submitted the practice of the opponent, in unnecessarily extending the hearing into a second day by arguing on a strained construction of the specification that was irrelevant to the invention, and presenting voluminous prior art and submissions in respect to such construction, should be taken into account. Mr Wulff also submitted that if the opponent is successful only under section 40 then costs should still go against the opponent.
118. There have clearly been difficulties with the specification. Many of these difficulties appear to have been of Nokia’s own making. One may perceive that Nokia changed its emphasis of the nature of the switched links applicable to the invention on seeing the evidence in Qualcomm’s opposition. In any case the independent claims 1 and 13 presently omit any clear definitions of the interrelationship between the first and second states and the switching operations between them. In this opposition, this has been found to be a significant flaw of the claims.
119. The section 40 issues on which Qualcomm has been successful have been very significant issues. I award costs against Nokia.
M. G. Kraefft
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Madderns, Adelaide