Research In Motion UK Ltd. v Inpro Licensing SARL

Patent claims must be construed in context and by reference to the disclosure, with ambiguous language given the meaning supported by the specification and the prior art acknowledged in it.

For amendments after grant, the disclosure before and after amendment must be compared strictly. Subject matter is added unless it was clearly and unambiguously disclosed in the original application.

Novelty requires both disclosure and enablement. A computer-implemented invention is not excluded merely because it is expressed in software where, in substance, it produces a technical effect outside the excluded subject matter.

Research In Motion UK Ltd brought proceedings to revoke Inpro Licensing SARL’s patent for a proxy-server system intended to improve web browsing on portable computers. Inpro counterclaimed for infringement against RIM and T-Mobile.

The dispute concerned construction of the claims, proposed post-grant amendments, infringement by BlackBerry browsing and email services, and validity over the GloMop, Pythia, Mowser and Bartlett publications. The court also considered insufficiency, excluded subject matter and industrial applicability.

1. Procedure. The streamlined procedure was inappropriate on the facts. Its use is an objective decision based on all the material. There are no presumptions in favour of the procedure, and speed cannot be achieved at the expense of a fair opportunity to present a case. Commercial importance is a relevant factor (para [3]).
2. Construction. The claims were construed in context under the approach confirmed in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 and Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183. “Specific size and resolution” meant screen size expressed in pixels. “Match” required a good or reasonable match between the screen and associated image data, substantially better than would be achieved without using the display size. It did not require alteration of HTML (paras [37], [57]-[65]).
3. Amendments. The A-series amendments were refused. They introduced an unsupported and unclear requirement that HTML be transposed into a form designed for display on the field computer. This offended section 14(5) of the Patents Act 1977 and disclosed additional matter under sections 76(3) and 130(3). The B-series amendments were permissible. Combining HTML and image data into a single file was generally disclosed and did not constitute impermissible intermediate generalisation (paras [67]-[73], [78]-[83]).
4. Validity. GloMop anticipated claim 2 and rendered claims 11 and 13 obvious. Pythia anticipated claim 2 and rendered claims 1 and 7 obvious. Mowser anticipated claims 2, 8, 11 and 13 and rendered claims 1 and 7 obvious. Bartlett rendered claims 1, 7, 11, 12 and 13 obvious. The single-file feature was also obvious, particularly because it reduced protocol overhead (paras [110]-[183]).
5. Patentability and orders. The claims produced a technical effect and were not excluded as computer programs or presentations of information as such. The industrial-application objection also failed. The A-series amendments were disallowed and the B-series would have been allowed, but all claims were invalid. The relevant claims would have been infringed if valid. The revocation action succeeded and the counterclaim was dismissed (paras [184]-[190]).