26 February 2006

Patents: Research In Motion UK Ltd. v Inpro Licensing SARL

I know that Mr Justice Pumfrey's judgment in Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat) (2 Feb 2006) has been picked over more times than a turkey on Boxing Day but I make no apologies for reviewing it now. First, it is an important case, particularly in view of Research in Motion's litigation in the USA (see Anne Broach and Tom Krazit "BlackBerry case: No shutoff, for now" 24 Feb 2006 ZD Net). Secondly, I am a barrister and not a journalist and just now I am very busy.

This was a claim by the British subsidiary of RIM (the Canadian company that created the "Blackberry") for for revocation of EP (UK) 0 892 947 held by Inpro Licensing SARL ("Inpro"). The patent in suit proposed various ways of 'pre-treating' web pages before they are downloaded. The advantage of such pre-treating is that it cuts out a lot of the processing that is normally required by a web browser thereby making it quicker and easier to access the internet. The application was filed in 1996 which is long before the potential of the internet was fully appreciated and years before the Blackberry was launched. The defendant counterclaimed for infringement by both RIM and one of the UK mobile telephone companies that distributes it. The significance of the litigation is that the patent in suit could have threatened the viability of the technology just as much as the NTP action in the USA.

The issues before the judge were whether the Blackberry infringed the patent and whether the patent was invalid for want of novelty, obviousness and excluded matter. There were also claims for amendment of Inpro's specification. In the end, his lordship found that the patent was invalid for want of novelty and obviousness (though not excluded matter) and hence the claim succeeded and the counterclaim failed.

It is a very long judgment - 190 paragraphs - and a complete understanding requires a full reading of the prior art. Much of it revolves around those citations but there are some issues of general application. The first is a consideration of the circumstances in which the streamlined procedure should be ordered. No doubt mindful of his decision in Merck & Co Inc v Generics (UK) Ltd [2003] EWHC 2842 (Pat) (27 Nov 2003) Mr Justice Laddie had ordered a streamlined trial allowing for two days of argument and one of pre-reading. While not expressly criticizing that decision, Mr Justice Pumftrey made clear he disagreed with it:
"I cannot say that on the material available to Laddie J the decision to use the streamlined procedure was wrong, but I must disagree with his proposition that once a party to an action proposes the use of the streamlined procedure that procedure will be used in the absence of a convincing objection from the other. The decision to use the streamlined procedure is an objective one to be arrived at on all the material. There are no presumptions. It is not unusual in patent actions for one or (sometimes) both parties to consider that their case is both straightforward and easy to try. They are often wrong: and in any event, the dissentient must be allowed a proper opportunity
proportionate to the matters at stake fairly to put its case, and that may preclude use of the streamlined procedure. Speed is highly desirable in all cases, but not at the expense of fairness. One relevant factor is the commercial importance of the patent. This patent, which is said to be infringed when any BlackBerry device downloads a webpage including images using
the BlackBerry service, is commercially important to the present form of that service."
What the judge said is all very well but, as this blog has noted (and IPAC and others have reported) many times before, the UK courts are losing work to the Continent because of the enormous expense of litigation in this country. Worse, the cost of enforcement in this country is probably one of the reasons why we lag behind the Netherlands in the European patent application stakes and are about to be overtaken by Korea in the PCT stakes. A Rolls Royce is a wonderful piece of automotive engineering but what most people need is a bus route.

The second observation of note concerns the newed for objectivity in expert witnesses. Inpro's expert was an internationally acknowledged authority on communications technology but he appears to have presented his evidence argumentatively and with a degree of partiality. Such combativeness deprived the judge of a lot of the assistance he might otherwise have expected.

The final point, and one IMHO greatlhy to be welcomed, was the judge's approach to excluded matter in view of such cases as CFPH [2005] EWHC 1589, Halliburton [2005] EWHC 1623 and Shopalotto [2005] EWHC 2416 (Pat) (7 Nov 2005):

"[186] It is now settled, at least at this level, that the right approach to the exclusions can be stated as follows. Taking the claims correctly construed, what does the claimed invention contribute to the art outside excluded subject matter? The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions. ..........
[187] I am anxious that these exclusions are not given too wide a scope. All modern industry depends upon programmed computers, and one must be astute not to defeat patents on the ground that the subject matter is excluded under Article 52 unless the invention lies in excluded subject matter as such."

This last observation is a gift for skeleton arguments. Sir Nicholas (and more especially Patent Office hearing officers) will be as sick of this dicta as they probably are of turkey butties by New Year's eve.

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