More brinksmanship as RIM fends off Visto patent

Last Thursday Mr Justice Floyd, in the Patents Court for England and Wales, gave his ruling in Research in Motion UK Ltd v Visto Corporation [2008] EWHC 335 (Pat), a decision noted by LexisNexis Butterworths but not yet available on BAILII.

Research in Motion ('RIM') made and sold the BlackBerry handheld wireless device,and ran the computer software and infrastructure for it. Visto held a patent for a 'system and method for synchronizing electronic mail across a network'. This was, in effect, (i) a means for retrieving an email from a server, (ii) a synchronisation module for deciding whether to send the email to a second mail store, possibly on a global server which provided HTML access to its contents for roaming users, and (iii) a communications module for establishing a channel with the second mail store, possibly through the second mail store's firewall, to send the email to the second store using HTTP.

In October 2006 RIM applied to revoke this patent and, two months later, sought a declaration of non-infringement of it in respect of the Blackberry system as described in a product and process description (the first PPD). Visto acknowledged non-infringement, but pointed out that the first PPD omitted any reference to software known as the BlackBerry Mail Connector. Visto's counterclaim therefore included a claim for infringement in respect of that system alone, the mail connector being described in a second PPD. Visto also made an unconditional application to amend its patent.

The inventive concept of the first claim of the patent as amended was that it was an email system comprising a firewalled LAN with a first mail store and systems for retrieving emails, deciding whether to send them to a second mail store within a global server, establishing a secure HTTP communication channel through the firewall and sending the email. It also had means operable to initiate email synchronisation from within the LAN firewall and a smartphone with a third mail store.

According to RIM, the patent as proposed to be amended was invalid both because it was obvious and because, being a claim for a computer program as such, it was not an invention under section 1(2)(c) of the Patents Act 1977. Visto disagreed: it said that its patent provided a system which enabled the remote user to gain access to a fully up-to-date email store without any implementation or assistance from a corporate IT department. Visto explained that there were three key innovative elements to it: the system's use of HTTP to cross the firewall, which was a commonly enabled port; the use of a global server which might be maintained by a third party; and the initiation of the synchronisation from within the firewall, so that the user did not have to negotiate a way, by dial-up or other means, through or around the firewall.

Floyd J ruled that Visto's patent, as proposed to be amended, was invalid both for lack of inventive step and because it claimed a computer program as such. If it had been valid, it would however have been infringed by RIM's mail connector. In his assessment. the primary evidence clearly established that the use of an HTTP communications channel to export emails from within a LAN firewall was obvious, being a practice that had become very popular in the run-up to the priority date. When providing users with web-based HTTP access to their emails, it would have been obvious to consider using the same protocol to load the emails on to the server. HTTP was a generic protocol well suited to handling all the range of data and it would have been attractive as it would have allowed code re-use. Moreover, the contribution of Visto's patent lay solely in excluded matter. It was in substance a computer program, not a new combination of hardware, being simply the effect of running the program on the computer.

The IPKat is acutely conscious of the large number of disputes that seem to turn on whether an invention for which patent protection is sought is precluded from being patented by the computer program 'as such' bar. It is his impression that, while the principle is easy to grasp in theory, it is often very difficult to apply in practice since the same invention can be both dressed up as a claim to something that lies outside the scope of the bar and as something that is stripped down to something that is entirely precluded from patentability by it. Irrespective of the desirability or otherwise of operating the computer-program-as-such bar, he wonders whether in the interests of smooth operation of the law it might not be better to shift the exclusion to a point at which the test is easier to apply and its outcome is more predictable. No, says Merpel, wherever you place the bar, that's the place where all the contentious litigation will cluster.

Visto here ...
... not to be confused with Bisto here

UPDATE (7 March): The judgment is now available on BAILII here.