From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 31 December 2013

Messaging patent still invalid - Court of Appeal upholds Arnold J

December is a tricky time of the year.  In December 2012, just before Christmas, and just before this Kat rejoined the blogging team, Arnold J handed down the decision Microsoft Corp v Motorola Mobility LLC [2012] EWHC 3677 (Pat) (21 December 2012).  It is an electroniccy case of the variety that makes this Khemical Kat want to run and hide.  But run and hide he can do no more, because, almost exactly a year later, the Court of Appeal has upheld the decision, handed down a couple of weeks ago as Microsoft Corporation v Motorola Mobility LLC [2013] EWCA Civ 1613 (11 December 2013).

Spoiler / executive summary – Arnold J construed the claims broadly on which basis Motorola’s patent (relating to synchronisation of message statuses across multiple messaging devices) was found to be invalid, but would have been infringed by two Microsoft products, EAS (Exchange ActiveSync) and Live Messenger.  On a narrower construction advanced by Motorola but rejected by Arnold J, the patent would still have been invalid but would not have been infringed.  In relation to EAS, Microsoft in any case had a licence, because Microsoft’s licence from Google in 2009 extended to this patent when it was acquired by Google when Google purchased Motorola Mobility Inc. in 2012.  Motorola’s appeal of this decision was rejected by the Court of Appeal.

Before turning to some details of the case, this moggy would like to look at the feline human interest angle.  It is noteworthy that the leading judgment is delivered by none other than the Chancellor of the High Court, Sir Terence Etherton (Jackson LJ and Kitchin LJ concurring).  While Sir Terence is no stranger to IP matters (his most recent foray being noted by this embodiment of the IPKat here; but who can forget his judicial certification as “erudite” reported by fellow Kat here?), it is unusual for the leading judgment in a technical appeal to be given by someone other than the former Patents Court judge, when one is sitting.  If you are not a patent specialist (and even if you are), it is never going to be a bad idea to uphold a decision of Arnold J and sure enough that is what happened.

So the patent was concerned with how synchronise information such as the status of a message (eg "read" once the message has been opened) between multiple devices of a user.  Although the patent was concerned mainly with pagers, the claims were not held to be so limited, and would equally be applicable, for example, to email on mobile devices.

Now we get to the bit where you need to see Claim 1.  So here it is (as in the judgments broken down into integers and with reference numerals omitted).

[A] A method of synchronizing message information among a plurality of transceivers comprising the steps of:
[B] transmitting by a wireless messaging infrastructure a first message having a first status;
[C] in one transceiver of the plurality of transceivers, changing the first status of the first message to a second status responsive to an input to the one transceiver, and
[D] transmitting a second message indicative of the second status;
[E] in the wireless messaging infrastructure, receiving the second message;
and characterised in that the method includes the steps of
[F] in the wireless messaging infrastructure, responsive to receiving the second message, transmitting a third message indicative of the second status; and
[G] in at least one other transceiver of the plurality of transceivers, receiving the third message, and
[H] responsive to receiving the third message, changing the first status of the first message to the second status.
There is a pretty picture showing an embodiment of this method too.

The main issue on appeal was whether, with particular regard to the term "responsive to receiving the second message" in integer [F], the claims were limited to a  "push" system (where the status of the message on the second device is updated from the server as a result of the message being read on the first device, without any request by the second device), as contended by Motorola, or whether the claims included the possibility of synchronization by "polling", as a result of periodic requests for updates from the second device or a result of a specific request for updates, as contended by Microsoft. Although the Figure shows a "push" system, neither Arnold J nor the Court of Appeal saw any reason to construe the claims so narrowly, and so the broader construction put forward by Microsoft was preferred.

It is often assumed that the patentee will always be arguing for a broad construction of the claim, although the cases on claim construction regularly point out that this is not necessarily the case.  This is a good example of a situation where the patentee is actually contending for a narrow construction, because on the broad construction of the claim adopted by Arnold J there was no prospect for Motorola to successfully argue the validity of claim 1.  Once the Court of Appeal had agreed with Arnold's construction of the claim, the appeal was doomed.

The Court of Appeal refused Motorola permission to advance a subsidiary argument that claim 1 should be interpreted as  restricted to non-manual initiated commands for updates.  This was not raised in the Grounds of Appeal, and the distinction between polling by manual command by the user and intermittent polling generated by the device itself was not one that the first instance Judge was invited by Motorola to make at first instance.  Moreover, even if the argument was successful, the result would be to open up new lines of argument against the first instance findings of obviousness, when there "was some evidence before the Judge on that aspect but it was given in the absence of the point of interpretation now sought to be advanced." Therefore Sir Terence concluded:


I am satisfied in those circumstances that it would be wrong to allow this new point of interpretation to be advanced on the appeal since it would be quite wrong to permit Motorola to advance the linked and consequential attack on the Judge's findings of obviousness over PCMAIL and IMAP4.

At first instance, Arnold J had actually found Claim 1 to be obvious over PCMAIL and IMAP4 (non-wireless email protocols) not only on the broad construction that he adopted, but also even on the narrower construction of Motorola.  Also, unusually, he found the claim to be obvious over common general knowledge only (again, under either construction) - this is the polite way of saying what this Kat refers to as "it is just bleeding obvious".

A final point in this case is the role of the parallel proceedings in Germany.  At first instance before Arnold J, both sides claimed that the construction adopted by the Landgericht Mannheim (Mannheim Regional Court) supported their case, although Arnold J considered that the German construction was more consistent with Microsoft's interpretation than with Motorola's.  Things had moved on by the time of the appeal, and a final hearing at the Federal Patent Court took place on 13 November 2013. It made its decision on that day to revoke claim 1 but to accept as valid, pursuant to an auxiliary request, a narrowed down version, namely a version which contains the feature of a delaying transmission of status changes so as to cut down the number of status change transmissions. However, the written decision with reasoning was not yet available. Under these circumstances Sir Terence concluded:

Bearing in mind the respect which is due to decisions of the German courts on issues of patent validity and infringement, it would have been of considerable value to know the detailed reasoning of the German Federal Patent Court in reaching its decision on 13 November 2013. In the present absence of that detailed reasoning, however, I do not consider it is safe for either side or this Court to rely on the German proceedings as to the correct outcome of this appeal. For that reason I shall not refer to them again in this judgment.

[Merpel cannot help but notice that this paragraph dodges the issue of exactly what is the "respect which is due", but she is probably distracted by the impending end of the year.]

Regular readers will recall that this moggy tends to note the rupture factor of decisions.  In these proceedings, while the first instance decision was 163 paragraphs and 38 pages, the appeal decision, by focusing on one determinative issue, managed to dispatch the patent in a mere 50 paragraphs and 15 pages.

This will be this Kat's last post this year, but he hopes to spring back into action very soon in 2014.  In the meantime, a very Happy New Year to all our readers.



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