Patent asserted against BlackBerry invalid on the ground of obviousness
Research in Motion UK Limited (RIM), the UK subsidiary of the provider of the BlackBerry, sought revocation of Inpro Licensing Sarl's (Inpro) patent for a computing system which enables small computer devices to use the Internet. Essentially the system used a proxy server to carry out much of the "heavy" computing providing the portable computer with manageable content. Inpro counterclaimed against RIM and its licensee T-Mobile (UK) Limited for patent infringement.
Section 1 of the Patents Act 1977 states that, amongst other things, a patent may only be granted for an invention which 'involves an inventive step'. Section 3 of the same act states that an 'invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art...'. Any patent which fails to involve such a step can be held invalid for 'obviousness'. The key case in the matter is Windsurfing International Inc. v Tabur Marine (Great Britain) Inc. (1985) in which the Court of Appeal set out a four-stage test to determine whether an invention involves an inventive step:
- Identify the inventive concept embodied in the patent.
- Determine the common general knowledge of the skilled person in the art in question at the priority date.
- Identify any differences between the prior art and the alleged invention.
- Consider whether, viewed without any knowledge of the alleged invention, those differences would have been obvious to the skilled man, or whether they would have required a degree of invention.
Pumfrey J, the trial judge in the High Court, had found the patent to be obvious in the light of the state of the art, and also stated that an earlier decision by Laddie J to order the case to be determined by streamlined procedure was, in retrospect, inappropriate.
The Court of Appeal dismissed Inpro's appeal, upholding Pumfrey J's decision. The undisputed legal principle governing the treatment of obviousness on appeal was that the appellant had to show that the trial judge had made an error of principle. The Windsurfing case had been appropriately applied. The prior art cited proposed using a proxy server between an Internet web-server and a small field computer, to reduce the amount of data that was downloaded to and processed by the limited resources of the hand-held. The only differences between the prior art and the patent claims were that the field computer should tell the proxy computer the size of its screen capacity and that files should be combined in the proxy server so as to send fewer files to the field computer. The appellant was a long way from establishing that the judge had erred in principle when he determined that these two differences were obvious in the light of the prior art. Furthermore, the BlackBerry hand-held integrated much more than the ideas which were the subject of the claim and had involved a vast amount of detailed implementation and design.
The Court of Appeal also provided guidance on the use of the streamlined procedure. The streamlined procedure was introduced in 2003, and was primarily intended for use in smaller patent cases. It requires that factual and expert evidence be in writing, limits or dispenses with disclosure and only allows cross-examination where necessary. This enables cases to come to trial in a shorter period of time and cuts down on the length of time that such trials take. Jacob LJ commented as follows:
"The decision to use that procedure must depend on all the circumstances of the case, which in particular includes its commercial importance, degree of complexity, the commercial and financial position of the parties and so on. In essence the decision is one of proportionality. By saying this, it should not be thought that I regard the streamlined procedure as one to be used rarely. On the contrary there will be - or should be - plenty of smaller cases where it will be the best way forward. And parties should always consider (and discuss) whether it would be sensible to use it whatever the size of the case."
The case represents an important victory for the BlackBerry manufacturer (or at least its profitable use) as had the patent been found valid, it would have threatened the continued use of the hand-held's technology. It also provides important guidance on the use of the streamlined procedure, which while providing welcome speed and efficiency, may be unsuitable for complex cases of high commercial importance.
