PATENT — Invention — Exclusion from patentability — Systems for synchronising email stores — Whether patent invalid for lack of inventive step — Whether “invention” — Patents Act 1977, s 1(2)

Research in Motion UK Ltd v Visto Corpn [2008] EWHC 335 (Pat); WLR (D) 70

Ch D: Floyd J: 28 February 2008

When assessing subject matter exclusions pursuant to s 1(2) of the Patents Act 1977 and new combinations of hardware, it was not enough to refer to “any new hardware”. The fact that a piece of hardware was a telephone as well as a computer was not relevant to determining the contribution of an invention. The initiation of the synchronisation of email stores to occur within one element of the combination of hardware and for data to be transmitted to a second element was novel within the new combination before the court but was simply the effect of running the relevant program on the relevant computers. This did not seem enough of a technical effect to render an invention patentable.

Floyd J so held in the Chancery Division giving judgment for the claimant, Research in Motion UK Ltd, on its action for revocation of a patent owned by the defendant, Visto Corpn, and a declaration of non-infringement. The defendant had counterclaimed for infringement.

The claim related to systems for synchronising email stores and concerned the validity and infringement of European Patent (UK) No. 996 905 (“the 905 Patent”), owned by the defendant. The claimant made and sold the well known BlackBerry wireless handheld device and operated the computer infrastructure associated with it. The claimant sought revocation of the 905 Patent and a declaration of non-infringement of it in respect of the BlackBerry system as described in a Product and Process Description (“PPD”). The defendant had acknowledged non-infringement of that PPD but pointed out that it omitted any reference to software known as the BlackBerry Mail Connector. The counterclaim included a claim for infringement of that system alone, which was described in a second PPD. The defendant also made an unconditional application to amend the 905 Patent.

FLOYD J said that the law relating to the subject matter exclusions in s 1(2) of the Patents Act 1997 (implementing art 52(2)(3) of the Convention on the Grant of European Patents) had recently been reviewed by the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd [2007] Bus LR 634. S1(2) 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 following 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.” The primary evidence placed before the court had clearly established that the use of a Hypertext Transfer Protocol (“HTTP”) communications channel to export emails from within a Local Area Network firewall was obvious to the skilled person. The skilled person would also appreciate that that the HTTP communications channel should go all the way through the firewall. The 905 Patent as proposed to be amended was invalid for a lack of inventive step and because it claimed a computer program as such but, if valid, would be infringed by the claimant’s mail connector.

Appearances: Anthony Watson QC and Thomas Hinchliffe (Allen & Overy) for the claimant; Henry Carr QC, Adrian Speck and Henry Ward (Taylor Wessing) for the defendant

Reported by: Scott McGlinchey, barrister