Full Article Details
Article Date: 10/05/2007
Article Title: Inpro’s claim against RIM
On 7 February 2007, the English Court of Appeal upheld the decision of the High Court, in rejecting Inpro’s claim against RIM and T-Mobile (UK) Limited, that the “BlackBerry” infringed one of its patents. The patent was revoked as being obvious over prior art and the judge’s refusal to allow the patent to be amended (the amended claims also being obvious) was also upheld.
This is the latest is a series of decisions in the UK and Germany, which are all in RIM’s favour. An appeal of the German decision is still pending.
Patentability
In order for a patent to be valid, the subject matter must meet certain criteria, including being new (in the sense that it had not been made available to the public before the filing date) and inventive (i.e. more than mere routine development over what was known). The current case focussed on the inventiveness of the ideas expressed in the patent.
The patent contained little detail as to how the invention could be put into practice. Whilst this was not a reason for revoking this patent, it did mean that the person to whom the patent was addressed had to be considerably skilled in how computers worked and how the internet worked. This may have the effect of raising the bar as to what was inventive.
As this was an appeal on obviousness, Inpro had a heavy onus to discharge in showing that that judge had made an error of principle. The Court of Appeal does not merely rehear the case and substitute its own findings. This task was made particularly difficult for Inpro as there had, in effect, only been one expert, Inpro’s own expert having been found to be “simply an unsatisfactory expert”. This is very unusual in English patent cases, but in this case the expert was not a worker in the field and had not properly researched the position. In contrast, RIM’s expert was “cogent and helpful” and had given the court enough material so that the judge could make the relevant findings.
The technology in the case concerned inserting a proxy server between a hand held device and the world wide web, so that the proxy server could digest internet pages and send the hand held device only what it could display and conserve its battery. There were a number of prior disclosures teaching use of a proxy server, but Inpro identified certain differences between its patent and the prior art. However, these were found to be so trivial, that even though these were differences, the claims were nonetheless obvious and Inpro’s argument that the analysis improperly used hindsight was rejected.
Conclusion
This decision has not changed the law in the UK at all. The more interesting comments were reserved for the procedure. The English court has developed a streamlined procedure for patent cases - where the trial can be limited to 1 to 2 days and other matters cut back accordingly. That was applied in this case, as one party had requested it. However, the Court of Appeal agreed with the trial judge that, in retrospect, that had not been appropriate for this case. The streamlined procedure should be used, but generally for smaller cases and litigants should, whatever the size of the case, always discuss whether or not to use it.
Vicki Salmon
+44 (0)845 497 4735
vickisalmon@eversheds.com
www.eversheds.com
Click here to view all news articles