The patent relates to “An access point, AP, for facilitating multi-user communication in a wireless network (100) operating in compliance with IEEE Standard 802.11ax”.
Brief outline of the case
The opposition was rejected and the opponent appealed.
During appeal, interveners 2-6 obtained the status of opponent.
The board decided lack of sufficiency as granted and the patent was revoked.
The opponent’s point of view
Opponent 1 admitted that document D5, i.e. a pre-version of the Draft D0.1 of the IEEE Standard 802.11ax, was available online at the opposed patent’s filing date.
However, D5 (Draft D0.1) included several TBD (“To Be Defined”) statements. This showed that numerous features of the IEEE Standard 802.11ax had not been defined at the time of its publication.
All subsequent drafts of the same standard (D1.0 to D8.0) had been published after the filing date. These documents were not publicly available – they did not exist – at the opposed patent’s filing date.
Thus, a skilled person could not have implemented a “trigger frame” and an “uplink frame” compliant with the IEEE Standard 802.11ax, because a significant number of parameters of said frames were not defined at that time.
In view of the missing fields in the “trigger frame“, a skilled person could thus not have caused any equipment to send a “trigger frame” compliant with the IEEE Standard 802.11ax on the basis of D5. Moreover, the “uplink frame” depended on the trigger frame. For this reason, the skilled person could not cause any equipment such as a mobile station (STA) to generate and send such an “uplink frame” compliant with the IEEE Standard 802.11ax on the basis of D5.
For the opponent, the elements mentioned by the proprietor had been addressed in the patent specification at a rather abstract level.
The proprietor’s point of view
The proprietor submitted that the reference to the “IEEE Standard 802.11ax” in claim 1 only defined the technical context of the “AP” according to claim 1, i.e. the invention underlying the patent, by specifying in which type of wireless network the multi-user communication should be provided by the claimed “AP”.
The ED required such reference, to meet a clarity objection, during the examination proceedings that led to the granted patent.
Rather, claim 1 was not directed to an “AP” in compliance with IEEE Standard 802.11ax. Claim 1 was not even directed to an AP for facilitating multi-user communication in compliance with IEEE Standard 802.11ax. Only the wireless network in which the AP facilitates multi-user communication should be operating in compliance with IEEE Standard 802.11ax. And such network should also be backwards-compatible with preceding standards, such as “IEEE Standard 802.11ac”, also known as the Very High Throughput (VHT) standard.
Whether or not the AP of claim 1 complied with IEEE Standard 802.11ax was not defined by claim 1. Only the preamble of claim 1 referred to IEEE Standard 802.11ax. The rest of the features of claim 1 did not contain such a reference. Consequently, claim 1 did not require that the “trigger frame“, the “uplink frame”, the “HE-SIG-A field”, or the “L-SIG field” complied with IEEE Standard 802.11ax.
For the proprietor, the skilled person would have had no difficulty in figuring out at least one operational AP on the basis of the patent specification and of the skilled person’s common general knowledge available at the patent’s date of filing, e.g. the IEEE Standard 802.11ac.
The skilled person was certainly able to generate a “trigger frame” to implement the features relating to the “uplink frame”.
Such an AP would still “facilitat[e] multi-user communication in a wireless network operating in compliance with IEEE Standard 802.11ax”, as required by claim 1.
In other words, the AP could coexist in the wireless network with other devices operating in accordance with IEEE Standard 802.11ax, without the need to be itself compliant with IEEE Standard 802.11ax.
The board’s decision
The patent concerns an “AP” and an “STA” communicating with each other as well as respective methods.
For board, the question is whether the skilled person was able to carry out an operational AP in at least one way on the basis of the patent specification and of common general knowledge available at the patent’s date of filing without undue burden and without the need of inventive skill?
The board was not convinced that the reference to “IEEE Standard 802.11ax” made in claim 1 should be decoupled from the remaining features in the manner suggested by the proprietor.
The text of the patent does not include a self-contained specification of the “IEEE Standard 802.11ax” or, for that matter, of any other standard. Rather, it incorporates by reference two different standards, without a specific version number, i.e. IEEE Standard 802.11ax and IEEE Standard 802.11ac. Moreover, it contains further references to “the IEEE 802.11a, b, g, n, and ac specifications” and to “IEEE 802.11ah draft v6.0“
An AP “for facilitating multi-user communication in a wireless network operating in compliance with IEEE Standard 802.11ax” should at the very least operate in conformity with the known principles – however broad – defined for the upcoming IEEE Standard 802.11ax, at the latest, by the patent’s date of filing.
The skilled person willing to implement the invention could have tried to combine the IEEE Standard 802.11ac – and possibly IEEE Standard 802.11ah – with the modifications proposed in the patent specification. All the same, there was no “trigger frame” in any of the IEEE Standards 802.11ac, 802.11ah or earlier. This concept was first introduced with IEEE Standard 802.11ax.
For the board, the patent scarcely gives a general overview with some details about a portion of the “trigger frame“. Besides, although the opposed patent repeatedly mentions the “HE-SIG-A field”, which appeared for the first time in IEEE Standard 802.11ax, it does not specify its structure.
The gaps in the teaching of D5 are not small details that could be finalised using arbitrary choices or straightforward analogies with preceding versions. On the contrary, the skilled person would be expected to develop on one’s own an operational AP on the basis of a very early and incomplete specification. The board considers that this endeavour cannot succeed without undue burden.
Comments
Standards in telecommunication are like norms in other technical areas. Without a precise definition of the standard/norm and its version, so that its content can be clarly identified, and which also can vary with time, lack of sufficiency is more or less programmed.
In the present case, the situation was worse, as the standard was not even finalised at the date of filing.
It is also interesting to note that the draft standard, IEEE Standard 802.11ax, had been introduced in the claim during examination as the concept of “trigger frame” was deemed unclear. No wonder, as this concept was first developed in IEEE Standard 802.11ax.
https://www.epo.org/en/boards-of-appeal/decisions/t231290eu1
Comments
2 replies on “T 1290/23 – Sufficiency cannot be based on a standard only available as draft”
The conclusion is logical, and seems to have been unavoidable from the outset.
One additional point: doesn’t the patent look like it was meant to be used in a “patent holdup” — file a patent application on something, while at the same time pushing for that something to be incorporated in a standard? While we cannot be sure from the decision, at first glance it looks like a possibility, doesn’t it?
A “patent holdup” sounds sinister when in reality this is how the vast majority of standards-related applications are filed. Companies meet to discuss outstanding issues in the standards and agree how they want to solve those problems. Ahead of those meetings, they each try to work out solutions and file applications for their best ideas. This is just the natural cycle of defining standards.
The best prior art is often buried in the minutes of meetings. It is amusing when prosecuting such cases that irrelevant patent applications are cited as prior art when closer prior art can be found in the minutes of the standards meetings. It is also amusing to receive clarity objections (very common at the EPO) to terms which are used in the minutes of the standards meetings when any person actually working in the relevant field would know exactly what the claims mean.