Summary
Two important issues were addressed in this patent case. In respect of patent claim construction the court found that a key feature of the alleged invention was not disclosed at all in the patent and confirmed the inappropriateness of "imaginative reconstruction" previously discussed in Hewlett Packard GmbH v Waters Corp [2002] IP&T. The judgement also provides a basis for non-published documents, such as an e-mail, being used as evidence relating to the scope of the common general knowledge possessed by a person skilled in the art.
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Full Article
Summary
Two important issues were addressed in this patent case. In respect of patent claim construction the court found that a key feature of the alleged invention was not disclosed at all in the patent and confirmed the inappropriateness of "imaginative reconstruction" previously discussed in Hewlett Packard GmbH v Waters Corp [2002] IP&T. The judgement also provides a basis for non-published documents, such as an e-mail, being used as evidence relating to the scope of the common general knowledge possessed by a person skilled in the art.
Facts
Motorola brought an infringement action against Research in Motion ("RIM") in respect of Motorola's patent EP(UK)0818009 (the "009 Patent") entitled "Message Communication System". The technology in question related to wireless radio communication process in which a user can control a mobile user device based on commands translated into a subscriber device readable language at a fixed messaging gateway.
RIM's Blackberry Enterprise Solution ("BES") and Blackberry Internet Solution ("BIS") allow retrieval of e-mail from a mail server, identifies the mobile network of the intended recipient and sends internet protocol version to the network for forwarding to the recipient. Motorola alleged that BES and BIS both infringed Claim 1 of the 009 Patent, which the court cited as:
1. A method of operating a messaging gateway system;
2. operable to receive messages from remote messaging system;
3. and to construct transmittable messages including portions of the messages received from the remote messaging system, the method characterised by the messaging gateway system;
4. receiving a set of commands from a wireless subscriber device using an RF transmission system;
5. translating the set of commands into a protocol understood by the remote messaging system; and
6. transmitting the translated commands to the remote messaging system such that a user of the subscriber device can control operation of the remote messaging system utilising commands transmitted to the remote messaging system.
RIM denied infringement and counterclaimed for invalidity. They cited both prior art documents and documents supporting their position on the common general knowledge of the skilled person.
The dispute related primarily to application level command protocol translation, this feature being found to be the feature distinguishing the alleged invention from RIM's cited prior art.
Held
Construction and Disclosure
Arnold J applied the Kirin-Amgen/Technip rules of construction to determine what the skilled person would have understood the proprietor to have intended, given the formulation of the claim.
Unusually, the parties disputed what was disclosed by the 009 patent, especially in relation to the disclosure of application level command translation, which Motorola argued was encompassed by the definition at feature [5], and that this feature represented "a new way of thinking". Arnold J cited Hewlett Packard GmbH v Waters Corp [2002] IP&T which said "imaginative reconstruction" of a disputed patent was inappropriate. He found in favour of RIM, stating that the patent did not state at which level the translation occurred and that application level command translation was not disclosed at all by the 009 patent.
Infringement
Patent infringement is governed by S60 of the Patents Act 1977, subsections (1)(2) stating:
(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say -
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; [process inventions]
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise. [product-by-process inventions]
(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom. [(intention to) put invention into effect by offering means relating to essential element of invention]
As the disputed claim was a method claim infringement could occur under sections 60(1)(b) or (2). Arnold J found that, if Motorola's construction of the claim had been correct, then the claim would have by infringed by RIM's BES arrangement under s60(1)(b), but not by the BIS arrangement, as the server in the BIS arrangement was located in Canada, not the UK.
On S60(2), the relevant case law, Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2002]RPC 31 which dealt with a product claim and established the test which asks (i) who uses? and (ii) where is it used?. Arnold J applied the same test to Motorola's process claim, with answers "RIM" and "in Canada" for the BIS arrangement, for which consequently no infringement occurred (based on Motorola's incorrect construction).
On a correct construction of the claim, neither the BES or BIS arrangements would have represented an infringement.
Invalidity and common general knowledge
As is standard practice, novelty and inventive step arguments were based on documents provided by the counterclaimant. The application level command protocol conversion, which according to Motorola was defined by feature [5] of claim of the 009 Patent , was considered to be novel in view of the prior art. However, Arnold J held that this feature was not inventive in the light of the prior art and also not inventive in light of the common general knowledge alone. The subject-matter of the 009 patent was therefore found to be non-patentable and the patent was held to be invalid.
The identification of the skilled person's common general knowledge is noteworthy in this case, because it shows that a non-published correspondence may be used as evidence supporting the case that a particular teaching was common general knowledge. RIM produced an e-mail predating the 009 priority date and disclosing application level command protocol conversion: Motorola said that the e-mail was a "very obscure document" and could not support the argument that application level command protocol conversion was within the common general knowledge. Arnold J said it was important to distinguish between information known by some, or perhaps by many, and information which forms common general knowledge. In any case, based on the e-mail and 6 other documents provided by RIM (all published), Arnold J concluded that the application level translation was common general knowledge – it is less clear if the same decision would have been reached in the absence of the six other documents.
Comment
A number of issues arise from this case.
RIM's case was won primarily on the construction argument: the feature on which Motorola's infringement action was based turned out to be undisclosed in the whole application. The lesson for patent litigants is that correct patent drafting and subsequent claim construction is crucial to patent protection. Imaginative reconstruction in the sense of HP v Waters Corp is inappropriate. Above all, one should ensure one knows what is actually being protected and that this coincides with expectation!
Secondly, while the patent claim category will determine how infringement may be assessed, in S60(2) –type infringements both product and process claims will be subject to the simple test devised in Menashe v William Hill.
Thirdly, this case may make it more likely that unpublished documents, such as private e-mails, may support a case for the disclosure being common general knowledge.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 31/04/2010.
