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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Research In Motion UK Ltd v Inpro Licensing SARL & Ors [2007] EWCA Civ 51 (07 February 2007) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2007/51.html Cite as: [2007] EWCA Civ 51 |
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IN
THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Pumfrey
HC 05 CO1175
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE JACOB
and
LORD JUSTICE MOORE-BICK
____________________
Research in Motion UK Limited(a company incorporated under the laws of England and Wales) |
Claimant/ Respondent |
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- and - |
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| Inpro Licensing S.A.R.L. (a company incorporated in Luxembourg)-and- (1) Research in Motion UK Limited(2) T-Mobile (UK) Limited |
Defendant/ Part 20 Claimant/ Appellant Part 20 Defendants/ Respondents |
____________________
WordWave International Ltd
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7421 4040 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
for Inpro Licensing S.A.R. L.
Antony Watson QC and Tom Hinchliffe (instructed by Messrs Lovells)
for
Research in Motion
UK Limited and T-Mobile (UK) Limited
____________________
Crown Copyright ©
Lord Justice Jacob:
in
the form of so-called "A claims" was unallowable but that an application to amend to the "B" claims was
in
principle allowable. However, he held that, since the "B" claims if allowed would nonetheless be invalid, there was no point
in
the amendment being made. On Inpro's counterclaim for infringement he held that RIM's "BlackBerry" computing system "infringed", i.e. fell within certain of the claims of the patent as held allowable
in
principle.
in
addition to supporting the Judge's reasons, raised others by a respondent's notice which also challenged the finding of infringement. We began by hearing Inpro's appeal, for unless that succeeded, there was no point
in
hearing the matters raised by the respondent's notice. Having heard the appeal (Mr Guy Burkill QC for Inpro, Mr Antony Watson QC for RIM) we decided to hear no more at that stage. We have now concluded that the appeal must fail.
in
detail for a readership wider than the parties and I do not propose to do so.
in
the proceedings, Laddie J made an order for it to be decided by the streamlined procedure. Pumfrey J did not actually criticise this decision but said, rightly
in
my view, that
in
retrospect, it was inappropriate. He disagreed with Laddie J's suggestion that whenever one side proposed such a procedure, the onus lay on the other to raise a convincing objection to its use. I agree. 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 expert witnesses
in
the field himself, "it was clear that he did not
research
the position properly." The result of this was that there was for practical purposes only the evidence of Professor Handley, called by RIM. His evidence, tested by cross-examination, was held to be "cogent and helpful". So it is clear that when he gave evidence on a point and stated his opinion with reasons, there was not only ample material for the judge to reach a conclusion based on that opinion, but that was the only real material on the point.
Obviousness on appeal
in
Biogen [1997] RPC 1 at 45. I do not set it all out – it is sufficient to say that
in
essence an appellant must show that the trial judge made an error of principle. Given the fact that there was
in
effect only one expert, showing an error of principle
in
this case is particularly difficult.
Obviousness – general principles
in
fact did not do so. And
in
particular he failed to identify the differences between the prior art and the inventive concept of the impugned claims (Windsurfing step 3) and applied step 4 on a wrong basis –
in
particular by failing to have regard to the dangers of hindsight. For the latter he cited the well-known judgment of Fletcher-Moulton LJ
in
British Westinghouse v Braulik (1910) 27 RPC 209, re-affirmed as part of the current law
in
Technip France's Patent [2004] RPC 919 at [112]. A number of times Mr Burkill submitted that the judge had wrongly taken the step-by-step approach deprecated
in
Braulik and that the patent described an invention with real practical advantages.
Background Technology
in
the patent called "field computers") for use with the internet. The priority date of the patent is 10th April 1996. By then the internet had been
in
existence for some years and was bent on the world-wide domination which it has now achieved. Mr Burkill accepted that Pumfrey J had accurately summarised the well-known state of the technology
in
[12-18] which I need not set out here.
The Patent
in
practice what it teaches should be performed. However, given that it was not suggested that the specification did not "describe the invention
in
a manner sufficiently clear and complete for it to be carried out by a person skilled
in
the art" (Art. 83 of the EPC, part of our law by virtue of the Patents Act 1977) this does not matter. The real significance of the fact that the invention is an "ideas" only invention (as Mr Burkill described it) is that one must necessarily assume that the skilled addressee has a considerable degree of skill and knowledge of how computers and the internet works – for otherwise he could not perform the invention.
in
its unamended form is to interpose a "proxy-server" between the field computer and the web. The field computer tells the proxy server what it can cope with. The proxy does all the "heavy" computing and just sends a "reduced" page suitable for the field computer concerned. Mr Burkill put it this way
in
his skeleton argument:
The patent provides an elegant and convenient way to improve upon this trade-off, by making use of a proxy server to carry out much of the "heavy" computing when the portable computer is using the internet.
in
issue before the judge, the case has distilled, so far as the appeal is concerned, to just two. Mr Burkill accepted that if these fail, no others can survive. The claims are 1 and 1B as proposed to be amended:
1. A computing system comprising:
a field computer (13) comprising a display having a specific size and resolution; and
a Proxy-Server (19) connected to the field computer by a data link (15), the Proxy-Server having an Internet port (37);
wherein the Proxy-Server (19) is adapted to access Internet servers (23) through the Internet port (37) directed by commands and data received from the field computer (13), to download data from the Internet servers (23) thus accessed, to transpose the downloaded data by reducing information density, and to transfer the transposed data to the field computer (13) via the data linkin
a TCP/IP format
characterisedin
that upon connection, the field computer (13) transfers to the Proxy-Server (19) information particular to specific characteristics of the field computer (13), including information identifying the specific size and resolution of the display of the field computer (13),
and wherein the Proxy-Server (19) downloads data comprising WEB pages and transposes the datain
reliance on such information to match the specific size and resolution of the display of the field computer (13).
1B. A computing system as claimedin
claim 1 wherein during transposition, HTML and image files are assembled into a single file for transfer to the field computer (13).
in
the specification. The wider concept is quite generally to have the proxy to do as much processing as possible, see e.g. [83].
in
the proxy before sending to the field computer.
The Prior Art generally
in
the judgment). He rejected the attack based on a publication by the GloMop group. I note
in
passing that the Federal Patent Court of Germany took an opposite view about obviousness over GloMop finding the patent invalid for that reason (decision of 27th January 2006
in
joined cases 2 Ni 30/05 and 35/05 (EU)). I understand that an appeal to the Supreme Court is pending. Obviousness over GloMop was an issue which was to have been raised by the respondent's notice, but we have not had to decide the point.
in
the proxy so as to send a single file (claim 1B) are obvious.
Mowser
Since wireless networks do not have the data transmission speeds of wired networks, downloading large files over wireless networks will consume a longer time. Not only will it take longer to display large files, but it will also consume more battery power, reducing the time the mobile computer can be used. Web servers also have no notion of the resources available at the client's end, and blindly assume that the client is capable of properly displaying the data that it receives. For example, a user may follow a hyperlink to a sound file, on an X terminal [i.e. a terminal running an X server] which is not capable of playing sound. As a result, the Web server will consume time and network bandwidth to deliver a sound file that cannot be used by the client. While more and more workstation PCs are becoming multimedia-capable, the same is not true of mobile computers.
To overcome these problems, a smarter Web browsing application is needed. It must take into account the differences between a static and mobile host, and the quality of the network connection between the server and client. The objective is to let the user set his or her own preferences for optimal use.
So clearly the general idea of a proxy to do the work is disclosed by Mowser
Mowser … allows a mobile user to set his or her viewing preferences, based on the network connection and available resources.
Pausing there, this identifies exactly the two things that matter: the connection (how fast material can be downloaded) and the capabilities of the field computer.
a proxy server that serves files based on preferences and a caching server that stores the preferences for mobile hosts.
So the idea of storing characteristics of the mobile with the proxy is disclosed.
Mowser is based on the premise that, instead of blindly serving files to a client, a Web server should take into account the limits and preferences of the user's MH [mobile host]. Since currently available Web servers do not have this capability, we designed a proxy Web server that acts as a 'smart' server to the mobile host, and as a client to the rest of the world. All communication between the mobile host and the rest of the WWW is done through this server … Each mobile host's preferences are known to this server. … The preferences file contains information about the hardware capabilities of the MH, and its user preferences. The following information is stored for each MH:
Then different types of preference are set out. They include:
Text File Size- maximum size of text files that may be downloaded
Image File Size – Maximum allowed size for image files
Once the preferences are stored the proxy server starts the browsing session by loading the starting URL definedin
the preferences [i.e. a "home page"]. All HTTP GET requests from that point are handled by the proxy server. If a file requested by the MH does not meet the requirements described
in
the preferences, the proxy server can modify the file before sending it to the MH. ….. 'If a file does not meet the size requirement for its type, the proxy server will not send it to the MH. Files that cannot be properly displayed by the MH will not be sent either. A MH with no sound capabilities will not receive any sound files. If the MH has only monotone [sc. monophonic] sound capability, stereo sound files would be converted to [monophonic], before they are sent. Image files can be compressed by sacrificing quality without sacrificing semantics.
In
particular, the size of the image, and the number of colors can be reduced, resulting
in
a smaller image that conveys the same information. Whenever a file is modified by the proxy server, a URL will be provided to retrieve the original unmodified file, if the user so requires.
…
Our current implementation performs conversions on image files if they do not meet the user's preferences. Both GIF and JPEG format files are subject to this conversion. The preferences allow the user to choose between reduction by image size or by number of colors. If the user decides colors are more important than the image size, no color loss will occur during the conversion. The file size is compared to the maximum size permittedin
the preferences, and a scale factor is determined. The image file is then scaled down till it meets the size requirement.
I emphasise the passage also emphasised by the Judge.
in
a helpful summary of his case submitted that it:
Teaches:
- Use of standard HTTP protocol between proxy and field computer.
- Proxy server to transpose documents.
- Reduction of image size to either
- thumbnail of user-defined number of bytes (not pixels), or
- reduced colour depth.
Does not teach:
- Using screen size and resolution.
- Matching of images to screen size and resolution.
- Departing from HTTP
in
order to assemble HTML and image files into a single file to transfer to the field computer.
[159] Professor Handley was willing to seein
Mowser use of the Video Resolution preference (i.e. screen size) to reduce image files. He based himself on the passage quoted at [154]. He was adamant that Mowser was clearly contemplating image size reduction based on screen size
in
his cross-examination at transcript 719-722. The crucial point is that Mowser's general description (section 2) is more general than the implementation (section 3) and that the passage bridging the columns (italicised
in
[154]) plainly related to a principle, as he put it, 'not to send stuff that would not fit within that'.
The Judge went on to hold that there was no anticipation because:
[160] I do not think that size reduction based on display size is disclosed as a matter of language. Nor do I think it falls within the category of necessary inferences.
[161] I turn to the question of obviousness. If the paper immediately suggests to the skilled person that he can use size reduction to meet the display size then it renders claims 1 and 7 bad for obviousness.In
my judgment, Professor Handley's view on this is well thought out and convincing. I conclude that it does.
in
a smaller image." Given that, you do not have to be an inventor to make a smaller image which will fill your screen.
in
my judgment, Mr Burkill is miles away from showing that the Judge was wrong – and many many miles away from showing any error of principle.
in
the last of Mr Burkill's bullet points. The Judge considered this
in
the context of all the citations collectively. That was legitimate given that the feature is an independent idea from that of screen size matching and so there is no question of the addition of the two features being an inventive combination. The question is whether, given the idea of a proxy server, using that to combine files so that a single file is sent to the field computer is obvious (Windsurfing 3).
in
force at the date of the patent. If one wants an analogy, the information is sent
in
a series of discrete packages. The idea of claim 1B is to avoid sending separate packages to the field computer – put it all
in
one package suitable for that computer.
I am firmly of the view that the use of a single file, and the appropriate changes to the protocol between mobile and proxy, is entirely trivial. It saves on TCP/IP connections and is obvious to use for that reason.
in
principle. It is accepted that the purpose of using a proxy is to do the heavy computing. We were shown
in
an article by Padmanabhan a diagram illustrating "packet exchanges and round-trip times for HTTP." Whether or not the article as a whole is common general knowledge does not matter – anyone familiar with how the internet works would have known that "overhead" is involved when files are sent separately – the client and server enter into a dialogue about the requesting and sending of each file. It makes entire sense to avoid that overhead between client and proxy both because the speed of communication matters and because the capacity of the client computer is limited. Pursuing the "packet" analogy, it is easier to send and unwrap just one parcel than a number of smaller ones.
in
earlier proposals for internet protocols (1992 and 1993) provides some good confirmation that the idea is obvious. The Judge did not actually find the earlier proposals to be common general knowledge
in
1996 even though only newcomers to internet technology would not have seen and been aware of it since it was contained
in
a basic internet technology document. If he had, claim 1B would have added nothing but self-evident common general knowledge. As things stand, the earlier proposals are good supporting evidence of the obviousness of the idea.
the inventor has appreciated that you are no longer bound by the standard web protocols between hand-held and proxy and can generate this additional frequency thereby further saving on the processing and the battery life.
Pythia
Teaches:
- Use of standard HTTP protocol between proxy and field computer.
- Proxy server to transpose documents: demonstration version.
- Reduction of image size to user-defined thumbnail size.
- Preferences set by user and recorded by IP address.
Does not teach:
- Sending screen size and resolution.
- Matching of images to screen size and resolution.
- Departing from HTTP
in
order to assemble HTML and image files into a single file to transfer to the field computer.
Bartlett
[171] What worries me is whether this disclosure has, so to speak, been squeezed out of the document, not necessarily with hindsight but with too much effort.
And
[178] I am conscious that this decision on Bartlett may be thought surprising, given the brevity of the document, and the omission from the system actually described of any references to images.
So it is particularly appropriate here to remind oneself that it is not the function of the Court of Appeal to go through the same weighing exercise with a view to coming to a different conclusion.
Teaches:
- Proof of concept of browsing text using cellphone/small PDA and proxy.
- Proxy server which formats web page text
in
a videotext environment.
- Use of some non-HTTP protocol between the proxy and the field computer.
Does not teach:
- Sending screen size/resolution (unless clearly and unambiguously derivable from Fig.1).
- "Reduction of information density" of reformatted text documents.
- Handling of images, and hence does not teach any of:
- transposition of images, or
- (even if this were done) matching transposed images to screen size/res; or
- combining image files with HTML files to transfer as a single file.
in
his consideration of how the skilled man would implement Bartlett's suggestion to include images.
"New and important consequences
in
the shape of practical machines"
in
the following words:
Browsing Information
The Mobile Data Service feature provides the following optimizationsin
delivering web content to the handheld browser:
- Image optimization: By default, the Mobile Data Service converts .jpeg or .gif images to .png images, scales images to fit the screen dimensions, and reduces color depth to match the handheld capabilities. Refer to "Image conversion" on page 25 for more information.
- Content filtering: The Mobile Data Service processes HTML content to remove unsupported tags, converts data to a tokenized format, and compresses the data for efficient delivery over the wireless network.
- Page rendering: The Mobile Data Service retrieves images while it is processing HTML or XHTML content, and includes the images with the pages that it sends to the handheld.
These features provide a better browsing experience because the browser can download pages more quickly, and display a wider range of HTMP content.
in
Braulik. I am not moved by this for several reasons:
i) By and large the obviousness case does not actually involve a step-by-step analysis;ii) When the document speaks of "a better browsing experience" it must be speaking of what was actually out on the market, as opposed to any of the cited prior art. Better than what?
iii)
In
any event the "practical machine"
in
the shape of the BlackBerry involved much more than just the "ideas" the subject of the claim – and owed nothing to the patent. We were told that BlackBerry was first on the market
in
1999. That is three years after the date of the patent – three years is a long time
in the world of computers where speed of computing, of connection and size of memory and price change so rapidly. And the "practical machine" must have involved a vast amount of actual detailed implementation and design.
Conclusion
Lord Justice Moore-Bick
Lord Justice Tuckey: