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England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Research In Motion UK Ltd v Visto Corporation  EWHC 335 (Pat) (28 February 2008)
Cite as:  Bus LR D89,  EWHC 335 (Pat)
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Strand, London, WC2A 2LL
B e f o r e :
| RESEARCH IN MOTION UK LIMITED
|- and -
||Part 20 Claimant
|- and -
|(1) RESEARCH IN MOTION UK LIMITED
(2) RESEARCH IN MOTION LIMITED
|Part 20 Defendants
Mr Henry Carr QC, Mr Adrian Speck and Mr Henry Ward (instructed by Taylor Wessing) for the Defendant and Part 20 Claimant
Hearing dates: January 23-25, 28 and 30-31 2008
Crown Copyright ©
Mr Justice Floyd :
Some Technical background
The 905 Patent
The Background to the invention
"Therefore, a system and method are needed for providing users with e-mail consistency and accessibility across a computer network."
The Summary of the Invention
" The system and method advantageously use a trusted third party to enable synchronization of electronic mail across a network. Accordingly, a user who maintains for example a work site, a home site and the global server site can synchronize e-mails among all three sites. The roaming user thus can access and reply to e-mails while away from the addressed site. …. Further, because synchronization is initiated from within the firewall and uses commonly enabled protocols such as HyperText Transfer Protocol (HTTP), the typical firewall which prevents in-bound communications in general and some outbound protocols does not act as an impediment to e-mail synchronization."
i) that because the synchronisation is initiated from behind a firewall, so that the synchronisation initiation is outward, that firewall does not act as an impediment as it would if the roaming user tried to initiate synchronisation by getting inward access to it from outside;
ii) that because synchronisation uses a generally enabled protocol such as HTTP, synchronisation commands will get out through the firewall (because only "some outbound protocols" are prevented) and by implication therefore a communications channel using HTTP can be established.
iii) that because of (i) and (ii) no firewall will get in the way of e-mail synchronisation.
 …… The communications module 1005 may further include routines for applying Secure Socket Layer (SSL) technology and user identification and authentication techniques (i.e., digital certificates) to establish a secure communication channel through the global firewall 880. Because synchronization is initiated from within the firewall and uses commonly enabled protocols such as HyperText Transfer Protocol (HTTP), the typical firewall which prevents in-bound communications in general and some outbound protocols does not act as an impediment to e-mail synchronization. ….
The first sentence is talking expressly about establishing a channel through the global server's firewall. The second sentence is a repetition of the passage that I have already referred to in . On any basis the two sentences are not happily juxtaposed. Visto argue that the firewall referred to in the second sentence must throughout be the LAN firewall, not the global firewall, as synchronisation is not, at least in the preferred arrangement, initiated from within the global firewall and the global firewall does not "prevent inbound communications in general". I am not so sure. I think the skilled reader would see this as a repetition of the general point made at  but made in the context of (and somewhat inappropriately in respect of) the global firewall. It is certainly not clear. But I do not think it would alter the general teaching of .
 The synchronization-start module 1020 includes routines for determining when to initiate e-mail synchronization. For example, the synchronization-start module 1020 may initiate e-mail synchronization upon user request, at a particular time of day, after a predetermined time period passes, after receiving a predetermined number of e-mails, after a user action such as user log-off or upon like criteria. The synchronization-start module 1020 initiates e-mail synchronization by instructing the e-mail synchronization module 1025 (described below) to begin execution of its routines. It will be appreciated that communication with the synchronization agent 885 preferably initiates from within the LAN 810, because a security system such as the typical firewall 870 prevents in-bound communications and allows outbound communications. The synch-start module 1020 may instruct the communications module 1005 to establish the communications link with the synchronization agent 885 of the global server 835.
 The e-mail synchronization module 1025 still further includes routines for performing an appropriate synchronizing responsive action. Appropriate synchronizing responsive actions may include instructing the communications module 1005 to establish a communications link with the synchronization agent 885 of the global server 835, sending copies of each e-mail to the global server 835, redirecting (i.e., sending without maintaining a copy) only the client e-mails 875 or 896 to the global server 835, or redirecting the downloaded e-mails 865 or 899 and the client e-mails 875 or 896 to the global server 835. To send a copy or an original of an e-mail, the e-mail synchronization module 1025 includes a translator 1040 for translating the e-mail from Format A or Format B to the global format. The e-mail synchronization module 1025 then instructs the e-mail module 960 of the web engine 955 to send the translated e-mails to the global server 835.
So, according to this passage, simply forwarding an e-mail is a synchronisation responsive action.
Figure 14 is described as a flowchart illustrating a method for synchronising electronic mail in a computer network both in the list of figures and at . It has a start and an end. In terms of interaction between LAN and the global server between the start and the end it does no more than forward the selected e-mails. There is no reference to the latest metadata or bi-directional synchronising, yet the Patent regards this as a method of synchronising e-mails.
(i) An e-mail system comprising a local area network having connected thereto: a mail server (850) including a first mail store;
(ii) a firewall (870), wherein the firewall is a firewall for the local area network;
(iii) and a system comprising: retrieving means (950, 965, 960) for retrieving an e-mail from the first mail store (850, 894);
(iv) determining means (1025), coupled to the retrieving means, for using a predetermined criterion to determine whether to send a retrieved e-mail or a copy or a format translation thereof to a second mail store;
(v) establishing means (1005), coupled to the determining means, the establishing means including security means for establishing, from within
athe firewall, via a hypertext transfer protocol communications channel through the firewall, secure communications with the second mail store; and
(vi) sending means (1025, 955), coupled to the establishing means, for sending the e-mail or a copy or a format translation thereof to the second mail store, via the communications channel,
(vii) wherein the system is operable to initiate e-mail synchronization from within the local area network firewall,
(viii) wherein the system further comprises a global mail server that includes the second mail store,
(ix) and a third mail store located at a remote terminal outside the local area network firewall,
(x) and wherein the remote terminal comprises a smartphone.
A method of operating a computer system comprising:
(i) retrieving (1420) an e-mail from a first mail store; using (1440) a predetermined criterion to determine whether to send the retrieved e-mail or a copy or a format translation thereof to a second mail store;
(ii) establishing (1450), from within a firewall, via a hypertext transfer protocol communications channel through the firewall, secure communications with the second mail store; and
(iii) sending (1450) the e-mail or a copy or a format translation thereof to the second mail store via the communications channel, if the predetermined criterion indicates sending the e-mail,
(iv) wherein said sending step comprises sending the e-mail or a copy or a translation thereof to a global mail server,
(v) further comprising forwarding the e-mail or a copy or a translation thereof to a third mail store located at a remote terminal outside the firewall,
(vi) wherein the remote terminal comprises a smartphone.
Law - Approach to construction
"After the remote terminal 1505 connects with the global server 835, the e-mail module 1355 communicates with the e-mail module interface 1140 to select and to download client e-mails 895 or downloaded e-mails 832. The e-mail module 1355 stores the e-mails downloaded from the global server 835 to the data storage device 1330 as "downloaded e-mails 1340." Alternatively, the e-mail module 1355 may store the e-mails 1340 only in RAM 1335 so that at the end of the session copies of the e-mails 1340 do not remain at the remote terminal 1505."
"a hypertext transfer protocol communications channel through the firewall"
"Typically, synchronisation is the process of keeping multiple copies of a dataset consistent with one another or to maintain data integrity.
More specifically, file synchronisation is the process of making sure that two or more copies of a given file which can be stored at different locations contain the same up-to-date data."
"operable to initiate…from within the firewall"
"global mail server"
The inventive concept
Law – novelty
"20. The concept of what I have called disclosure has been explained in two judgments of unquestionable authority. The first is Lord Westbury LC in Hill[s] v Evans (1862) 31 LJ(NS) 457, 463:
"I apprehend the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent."
The second authoritative passage is in the judgment of the Court of Appeal (Sachs, Buckley and Orr LJJ) in General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd  RPC 457, 485-486:
"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim…If the earlier publication…discloses the same device as the device which the patentee by his claim…asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. …
When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new…falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty…The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's claim were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented…A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
If I may summarise the effect of these two well-known statements, the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent."
Law – Inventive Step
"In the result I would restate the Windsurfing questions thus:
(1) (a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
"Obviousness is tested against the mental and developmental norm of a notional uninventive person skilled in the art. In doing that the law is protecting not only established businesses which may wish to adopt new products, processes or designs or modify existing ones but also the new entrant who has employed persons skilled in the art to help him get into the market. Each of those categories of trader must be free to adopt what is obvious"
(i) "Working with Lotus Notes and the Internet";
(ii) "Lotus Notes release 4.5 Administrator's Guide";
(iii) "The Domino Defence: Security in Lotus Notes and the Internet"; and
(iv) "Lotus Notes Network Design".
The Domino Defence: Security in Lotus Notes and the Internet
"neither inside the private network nor part of the Internet. IP filters are employed to screen this network. They are designed to allow inbound sessions to reach the services we are providing, but still provide some protection. Between the DMZ and the private network lies a more solid boundary."
So the Domino server is definitely outside the LAN. It is not part of the Internet, but the claim is silent as to that. It also says
"In fact, from the point of view of a client on the Internet, a Domino server is just another world wide web server, so we can reasonably apply standard Internet practices for positioning and protecting it, which means that the best configuration is within the DMZ"
That sentence is a recognition that even if the Domino server were to be positioned so as to communicate with the LAN over the Internet, it would normally be protected by a firewall of a similar kind to the outer firewall.
Anticipation by the Domino Defence
Obviousness over The Domino Defence
The skilled addressee and common general knowledge
HTTP and tunnelling
The differences between The Domino Defence and the inventive concept
Are the differences between The Domino Defence and the inventive concept obvious?
i) it is obvious to modify Lotus Notes itself by using HTTP to tunnel the e-mail through the firewall using port 80 (i.e. tunnel Notes RPC in HTTP);
ii) It is obvious to design an "own brand version" of Lotus Notes based on The Domino architecture and use HTTP to pass the e-mail out using port 80.
HTTP through the firewall
i) HTTP had become hugely popular in the run up to the priority date and every web developer was keen to demonstrate the web friendliness of its products;
ii) When providing users with web-based HTTP access to their e-mails (as per Domino) it would have been obvious to consider using the same protocol to load the e-mails onto the server;
iii) HTTP was a generic protocol well suited to handling all the range of data which Notes handled;
iv) HTTP (or any other pre-existing protocol) would have been attractive because it would have allowed code re-use.
He added that the reason that HTTP was permitted to pass through firewalls (at least in the outbound direction) was that it was commonly used.
The secondary evidence
i) packet overhead and delay due to the polling required by HTTP; and
ii) in house development time and resources required to implement it.
Microsoft Exchange/Common General Knowledge
The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents (application as filed, patent as granted) read through the eyes of a skilled addressee. The task of the Court is threefold:
(a) to ascertain through the eyes of a skilled addressee what is disclosed, both explicitly and implicitly in the application;
(b) to do the same in respect of the patent as granted;
(c) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
See also Vector v Glatt  EWCA Civ 805: in particular Jacob LJ at paragraphs 2-9.
Not an invention
"(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –(c) …a program for a computer…but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this act only to the extent that a patent or application relates to that thing as such."
(i) properly construe the claim;
(ii) identify the actual contribution;
(iii) ask whether it falls solely within the excluded subject matter;
(iv) check whether the contribution is actually technical in nature.
In paragraph 43, Jacob LJ, who gave the judgment of the Court, said this:
"The second step –identify the contribution – is said to be more problematical. How do you assess the contribution? Mr Birss [counsel for the Comptroller] submits the test is workable – it is an exercise in judgment probably involving the problem to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislature intended."
"Suppose a program written for a computer that enables an existing computer to process data in a new way and so to produce a beneficial effect, such as increased speed, or more rapid display of information. It is difficult to say these are not technical effects…… The real question is whether this is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? From this sort of consideration there has developed an approach that I consider to be well established on the authorities, which is to take the claimed computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in excluded matter, it is not patentable."
Figure 2: The BIS System (illustrated for an individual user)
a) Step 1: Communication between the Mail Connector and the BIS begins with an MC Request from the Mail Connector. The Mail Connector continually issues MC Requests to the BIS at intervals of the order of milliseconds.
b) Step 2: The BIS then sends a response to the Mail Connector (an MC Response), which includes a request to the Exchange Information Store for a list of messages (The BIS List Request).
c) Step 3: In response to the BIS List Request, the Exchange Information Store service provides the Mail Connector with a list of message IDs. The Mail Connector then passes the BIS List Response to the BIS in the format of an HTTPS POST command.
d) Step 4: Having received the BIS List Response including the list of message IDs, the BIS identifies those messages that it has not previously processed.
e) Step 5: In response to one of the MC Requests continually issued to the BIS by the Mail Connector, the BIS then issues a further Mail request to the Mail Connector to obtain an e-mail, say e-mail "A". This request is sent as the payload of an MC Response, and the Mail Connector duly passes the "BIS Fetch A Request" to the Exchange Information Store service.
f) Upon receiving the "BIS Fetch A Request", the Exchange Information Store service provides the Mail Connector with, in the example, e-mail A. The Mail Connector then (having converted it from MAPI to WebDAV Mail) passes it to the BIS by way of an "HTTPS POST A" command.
Figure B: Communication with an Exchange Information Store service using the Mail Connector as a simple proxy. The reference to EISS in Figure B is to the Exchange Information Store service.
a) Step 6: Notifications received by the Mail Connector relating to new e-mails are communicated to the BIS via HTTP NOTIFY commands.
b) Step 7: The BIS acknowledges a notification by issuing a response to the MC Notify Command (an MC Notify Response).
c) Step 8: An MC Notify Command prompts the BIS via the Mail Connector to poll the Exchange Information Store service thereby making use of a pending MC Request. This polling takes place in exactly the same way as the BIS's regular polling for the message IDs of e-mails in the user's inbox).
d) If no MC Notify Command has been issued by the Mail Connector after an MC Request, the BIS simply waits until a poll is due under the regular cycle to issue an MC Response to an MC Request.
Infringement – "operable to initiate synchronization from within the firewall"
"The modes of synchronisation available and in use in 1997 depended on what precisely was being synchronised. For synchronisation of e-mail (which is not specifically discussed in the Primer), in 1997 the most common methodology would involve establishing a dial-up connection using a portable device such as a laptop (for example, from a hotel telephone) to the employer's corporate server in order to download the user's e-mail messages."
Mr Carr relied on this paragraph as making Visto's position as advanced at trial clear. In my view it did not.
"In places, Prof Leung appears to suggest that synchronisation requires more than even this and in particular that it requires 2-way synchronisation in which the smartphone is able to send information back to the 1st mail store. See for example Leung 1 paragraph 119-121. However, there is no requirement in the claim for bidirectional synchronisation and the 905 Patent does not teach how it would be done. See Hand 3 paragraph 26."
I think this paragraph fairly summarises what RIM could be expected to glean from Professor Leung's report.
Infringement – global server
Infringement – order of steps
Infringement – determining means
Conclusion on infringement
Note 1  [Back]
Note 1  [Back]