Research In Motion UK Ltd v Inpro Licensing SARL & Ors

On an appeal against an obviousness finding, the appellant must identify an error of principle. The Court of Appeal does not repeat the trial judge’s evaluative weighing exercise merely because another conclusion is possible. The structured approach in Windsurfing is helpful but not mandatory, and the assessment must avoid hindsight.

A proxy server that receives information about a handheld computer’s display capacity and reduces web content to fit it may be obvious where the prior art discloses a proxy, client preferences and resource-based file modification. Combining HTML and image files into one file may likewise be obvious where it reduces connection overhead and follows from using the proxy for heavy processing.

Inpro appealed from the decision of Pumfrey J, reported at [2006] EWHC 70 (Pat), holding its patent invalid for obviousness. The judge rejected one proposed form of amendment, found another allowable in principle but pointless because the amended claims would also be invalid, and held that RIM’s BlackBerry system infringed certain claims.

Inpro challenged the finding of invalidity. RIM supported the judgment and, by respondent’s notice, challenged the finding of infringement. The Court of Appeal first considered the invalidity appeal and did not need to determine the respondent’s notice. The central issue was whether the judge had misapplied settled principles of obviousness in relation to claims concerning proxy-server processing, display matching and the transmission of combined files.

Appeal dismissed. Jacob LJ gave the leading judgment. Moore-Bick LJ and Tuckey LJ agreed.

1. The appellate approach to obviousness was governed by the principle stated in Biogen, [1997] RPC 1 at 45. An appellant must show an error of principle by the trial judge. That is particularly difficult where the judge’s conclusion rests on cogent expert evidence and, in practical terms, there is only one expert opinion on the relevant issue.
2. The structured approach in Windsurfing, [1985] RPC 59 at 73, is helpful but not essential. The court must nevertheless identify the relevant differences between the prior art and the inventive concept and guard against hindsight. The warnings in British Westinghouse v Braulik, (1910) 27 RPC 209, and the later reference to Technip France’s Patent, [2004] RPC 919 at [112], did not justify interfering with the judge’s conclusions.
3. Mowser disclosed the general proxy-server concept, the use of mobile-host preferences and modification of files according to available resources. It was obvious to reduce an image so that it fitted the field computer’s screen. Pythia also allowed the user to set a thumbnail size capable of matching the screen. The judge was entitled to accept the expert evidence on both citations.
4. Claim 1B was also obvious. Once a proxy was used to perform the heavy processing, combining HTML and image files into a single file reduced TCP/IP connections and transmission overhead. Earlier proposals for internet protocols provided supporting evidence. The added features did not form an inventive combination.
5. The Court of Appeal would not repeat the trial judge’s weighing exercise merely to reach a different view. The judge’s conclusions on Bartlett were carefully reached, and no error of principle was shown. A document describing the objective of sending images could properly invite the skilled person to consider how that objective should be implemented.

As ancillary guidance, the decision to use the streamlined procedure must be based on proportionality and all the circumstances, including commercial importance, complexity and the parties’ commercial and financial positions. There is no general onus on the opposing party to show why the procedure should not be used. The Court also noted that no insufficiency issue had been raised under Article 83 of the EPC, which formed part of domestic law through the Patents Act 1977. RIM’s respondent’s notice concerning infringement did not require determination.

1. Court of Appeal (Civil Division): dismissed Inpro’s appeal against the finding that the patent was invalid for obviousness. The respondent’s notice concerning infringement was not determined.
2. High Court of Justice, Chancery Division (Patents Court): Pumfrey J held the patent invalid for obviousness, rejected the proposed A claims, held amendment to the B claims allowable in principle but pointless, and found infringement of certain claims. Decision at [2006] EWHC 70 (Pat).