Vodafone loses from IPCom over Patent Infringement

England and Wales Court of Appeal overturned a lower court ruling a few days back which says that the act of Vodafone for using IPCom’s standard-essential patent for a method of access in telecommunication networks was protected by Crown use. Vodafone initially argued to support its case that it implemented the patent to comply with the framework of the government under the Mobile Telecommunication Privileged Access Scheme (MTPAS). This scheme, however, allows for priority access where first responders can join mobile networks in the event of any emergency. In the UK, the Crown use exception under Sections 55 to 59 of the UK Patents Act giving the state the right to use, make, import, sell or even offer to sell a patent without the prior consent of the patent holder.

The telecoms company argued that because of the IPCom’s patent permission to Vodafone that allowed it to abide by the access scheme being laid out by the government and that alleged infringement was in service of the Crown. However, the Court of Appeal ruled: “Vodafone’s use of IPCom’s patent does not fall under the scope of Crown use because the government does not express authorization to work the patent or an authorization to do any act in circumstances where that act necessarily infringes the patent.”

Myles Jelf who is a partner at Bristows in London and was a counsel to IPCom in this matter. He stated in an interview that if the Court of Appeal had not overturned the lower court’s decision then the result would have been nothing but an influx of companies that would be using the Crown use defense and then later billing the government for the infringement.

“There were multiple ways for Vodafone to comply with MTPAS that did not involve infringing IPCom’s patent,” says Jelf. “Take the trivial example of coffee mugs. If the government asks for 10,000 coffee mugs and you supply them with only the high-end ones that infringe a patent, when much cheaper ones would do that don’t infringe, why should the government have to pick up the tab for an infringement that didn’t have to happen.” However, this court ruling brought clarity in regard to this rarely used defense that could have ramifications during ongoing COVID-19. Vodafone has not announced to date on the point whether it will attempt to go for appeal against the decision to the UK Supreme Court.