## Facts

- Motorola, Inc. obtained a European Patent Office patent directed to a satellite cellular communication system in which satellites could switch telephone calls between users on earth.
- Because the satellites were constantly moving, a communications link between two users generally needed to be redefined during an ongoing call.
- The patent described this dynamic rerouting as “handing-off,” which could occur within a single satellite or between satellites.
- Motorola’s patent specification did not describe switching control located anywhere other than in the satellites.
- Agence Spatiale Europeenne and Alcatel Space Industries (the space organizations) opposed the patent, contending that a document published before Motorola’s filing date disclosed the claimed subject matter.
- The cited document described a multiple-satellite system (MSS) using packet-switching technology and included two statements about handing-off:
  - when “a cell passes over,” the user’s antenna would adjust to a new frequency and an on-board computer in the satellite—“perhaps under the direction of a traffic routing . . . ground station”—would ensure communication was not interrupted; and
  - “satellite changeover is required” as satellites move.
- The EPO Opposition Division revoked Motorola’s patent.
- Motorola appealed, arguing that its use of the term “handing-off” meant not only that switching occurred in the satellites, but also that complete control of the handing-off process took place in the satellites.
- The space organizations responded that Motorola’s patent did not address the type of hand-off control used or where any control must be located, so the claims could not be limited to satellite-only control.

## Issues

1. Whether Motorola’s claims, read in light of the specification, required that control of the handing-off process be entirely located in the satellites (excluding ground-station direction or control).
2. Whether, under Article 54 EPC (novelty), the claims were anticipated by the earlier MSS document describing satellite changeover and continuity ensured by an on-board computer, possibly under direction of a ground station.

## Decision

- The Technical Board of Appeal dismissed Motorola’s appeal and left the revocation in place.
- The Board rejected Motorola’s attempt to treat the term “handing-off” as adding an unstated limitation that all hand-off control must be performed on-board the satellites.
- Construed without a satellite-only control restriction, the claims were not new because the earlier MSS document disclosed satellite changeover/hand-off functionality, including on-board computing that ensures continuity and may operate under ground-station direction.

## Legal Principles

- Claims are interpreted using the description and drawings, but a party cannot read into the claims a technical restriction that is not clearly and unambiguously disclosed in the patent.
- A functional term (such as “handing-off”) does not, by itself, fix a specific control architecture or the location of control unless the patent text clearly ties the function to that architecture.
- For novelty under Article 54 EPC, a claim lacks novelty when a single earlier disclosure teaches the same claimed technical subject matter as properly construed.
- When a claim is broad enough to cover implementations where a ground station may direct or participate in control, an earlier disclosure describing such direction/participation can anticipate the claim.

## Conclusion

The Board held that Motorola could not narrow its claims by treating “handing-off” as requiring satellite-only control where the patent did not clearly state that limitation; as a result, the earlier packet-switched MSS document’s disclosure of satellite changeover with on-board computing (potentially directed by a ground station) took away novelty, and the revocation stood.


Motorola, Inc. v. Agence Spatiale Europeenne, Alcatel Space Industries, Case No. T 0365/98 (1999)