Legal Updates

Intellectual Property Law – Patent Infringement – Experts – Procedure – Licensing – Revocation of Patent – Validity of Patent

A claim by intellectual property management firm, Inpro Licensing (“Inpro”), that the BlackBerry hand-held device infringed one of its patents has been knocked back by the Court of Appeal in a recent decision. The decision in the case of Inpro Licensing v Research in Motion and T-Mobile [2007] is the latest in a series of decisions in UK and Germany which are all in Research in Motion's (“RIM”) favour. An appeal of the German decision is still pending. 

For a patent to be valid, the subject matter must meet certain criteria, including the following:

§   The subject matter must be new – i.e. It must not have been made available to the public before the patent filing date.

§   The subject matter must be inventive – i.e. It must be more than the mere routine development of what was already known.

The current case focused on the inventiveness of the ideas expressed in the patent. As this was an appeal on the grounds of obviousness:

"The patent contained little detail as to how the invention could be put into practice. While this was not a reason for revoking this patent, it did mean that the person to whom the patent was addressed had to be considerably skilled in how computers worked and how the internet worked. This may have the effect of raising the bar as to what was inventive".

Inpro was subject to a heavy requirement to discharge in showing that that the judge in the furst instance had made an error. When an appeal to the Court of Appeal is granted, it does not merely rehear the case and substitute its own findings. This task was made particularly difficult for Inpro as there had effectively only been one expert. It is interesting to note that Inpro's own expert was found to be unsatisfactory.

This is very unusual in English patent cases. However, in this case the expert did not have work experience in the relevant field and had not properly conducted research into the position. In contrast, RIM's expert was deemed 'cogent and helpful' by the court and had provided enough material so that the judge could make the relevant findings.

The technology in the case concerned inserting a proxy server between a hand-held device and the world wide web, so that the proxy server could digest internet pages and send the hand-held device only what it could display, therefore conserving its battery.

"There were a number of prior disclosures teaching use of a proxy server, but Inpro identified certain differences between its patent and the prior art. However, these were found to be so trivial, that even though these were differences, the claims were nonetheless obvious and Inpro's argument that the analysis improperly used hindsight was rejected".

Although this decision has not dramatically altered the law in the UK, a number of interesting comments were raised regarding the procedure implemented.

"The English court has developed a streamlined procedure for patent cases - where the trial can be limited to one to two days and other matters cut back accordingly. That was applied in this case, as one party had requested it. However, the Court of Appeal agreed with the trial judge that, in retrospect, that had not been appropriate for this case. The streamlined procedure should be used, but generally for smaller cases and litigants should, whatever the size of the case, always discuss whether or not to use it".

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.




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