Research In Motion UK Ltd v Visto Corporation

A patent claim must be construed as the skilled person would understand it, read in the context of the specification. “Synchronisation” may include simple one-way forwarding; it does not necessarily require metadata synchronisation or bidirectional operation. An HTTP channel claimed as passing through a firewall must traverse it in full. The Pozzoli analysis assists, but does not replace, the statutory question of obviousness. A computer-implemented invention is excluded only where its contribution lies solely in excluded subject matter. The amended claims were obvious and claimed a computer program as such. The patent was invalid, although the Mail Connector would have infringed if the patent had been valid.

Research In Motion UK Ltd sought revocation of Visto Corporation’s European Patent (UK) No. 996 905 and a declaration of non-infringement concerning the BlackBerry system. Visto counterclaimed for infringement concerning the BlackBerry Mail Connector. The court considered the validity of amended claims, including construction, added matter, novelty, inventive step and excluded computer programs, together with infringement.

1. Construction. Applying Kirin Amgen v TKT, “synchronisation” included forwarding selected e-mails to a second mail store. It did not require bidirectional synchronisation or metadata updates. An HTTP channel “through” the firewall had to pass through it completely. “Operable to initiate” required something within the LAN firewall capable of starting synchronisation without an external prompt.
2. Validity. The patent clearly and unambiguously disclosed using HTTP through the LAN firewall, so the added-matter objection failed. Applying Pozzoli v BDMO SA, the use of HTTP or another commonly enabled protocol to export e-mails through the firewall was obvious. Adding a smartphone was also obvious. Claim 1 was obvious over The Domino Defence.
3. The contribution lay solely in excluded subject matter under section 1(2) of the Patents Act 1977. Claims 1 and 18 were therefore invalid as computer programs as such.
4. The Mail Connector satisfied the construed features and would have infringed if the patent were valid. The amended patent was invalid for lack of inventive step and under section 1(2). Added matter and insufficiency failed.