Publications

European IP Bulletin, Issue 32, June 2006 - Technology

PATENTS

8. Research in Motion UK LTD V Inpro Licensing SARL

Inpro held a patent for an invention involving a computing system comprising a portable field computer and a proxy server. The invention sought to increase the processing power of the field computer by making it quicker and easier to access the internet and emails through the proxy server. This was achieved by pre-treating the web pages or internet content at the proxy-server, based on the information received from the device, such as its display characteristics, before it was communicated to the device. The resulting benefit of this system was that it enabled real-time delivery of the data and significantly increased the battery life of the portable computer/device.

Research in Motion (RIM), the manufacturer of Blackberry devices, filed an application for revocation of Inpro’s patent on the grounds of lack of novelty, obviousness and excluded subject matter. Inpro not only resisted the claimant’s alleged invalidity plea, but made a counterclaim of infringement against RIM and T-Mobile, which distribute the devices in the UK.  Specifically, the counterclaim was based on the ground that the Blackberry device infringed its patent. Inpro argued that the way the Blackberry device communicates with the proxy server and the way the proxy server deals with the data prior to sending it to these devices, infringe the patent since their activities fall within its claims. Therefore, the main issue before the Court was to interpret the width and scope of the claims relating to the communication channel between the device and the server, and the pre-treatment that web pages received at the proxy server’s end based on the communication of certain parameters by the field computer.

The Court held that the correct approach to interpretation is laid down in the Protocol to the interpretation of Article 69 of the European Patent Convention which has already been defined by the case (1) Kirin Amgen Inc (2) Ortho Biotech Inc (3) Ortho Biotech Products LP v (1) Hoechst Marion Roussel Ltd (2) Hoescht Marion Roussel Inc (3) Transkaryotic Therapieds Inc [2004] UKHL 46. The proper question to be asked is: what the person skilled in the art would have understood the patentee to have meant by the language used in the claim? In order to complete such an assessment, according to the Court, one needs to look at the description of the invention and the prior art, apart from the claims themselves. The claims should be examined in this context before their scope could be determined once and for all. Therefore, after perusing the description of the invention and the prior art quoted within the patent, the Court held that the skilled man in the art would not limit the scope of the words used in the claim to its literal meaning.  Hence it was held that the Blackberry device infringed the patent. The slight differences between the way the Blackberry device communicates and the way web pages are treated by the proxy server was held to be immaterial.

Although the claims were found to be infringed, the Court decided in favour of RIM since all the infringed claims were either invalid for lack of obviousness and/or novelty.

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