Research In Motion UK Ltd v Motorola Inc

A patent claim must be construed according to what the skilled person would understand the specification to disclose, read with the common general knowledge. A claim may cover a technical possibility without the specification disclosing that possibility as the invention. Application-level command protocol translation was common general knowledge by March 1995, but the patent did not clearly disclose it as an essential feature. The claim therefore covered protocol translation at any layer. On that construction, the patent was not infringed. Alternatively, if the claim required application-level translation, it was obvious over the prior art and common general knowledge.

Motorola alleged that Research In Motion infringed claim 1 of European Patent (UK) No 0 818 009, entitled Message Communication System. RIM denied infringement and counterclaimed for revocation. The dispute concerned a messaging gateway method involving receipt of commands from a wireless subscriber device, translation into a protocol understood by a remote messaging system, and transmission of the translated commands.

The central issues were the construction of claim 1, infringement by RIM’s BES and BIS systems, novelty, inventive step and insufficiency.

1. Construction. The messaging gateway system was not limited to a single computer or to computers on one network. A remote messaging system could be connected by a LAN. “Transmittable messages” meant messages in a form capable of transmission by the RF transmission system. The claim required the transmission of message portions at least some of the time, although whole messages could also be transmitted. A “set” meant at least two commands, and “commands” meant instructions controlling the operation of the remote messaging system.
2. Integer [5] required translation into a protocol understood by the remote messaging system at any layer of the protocol stack. Although application-level command protocol translation was common general knowledge, Beletic did not disclose it, still less as an essential feature. The claim’s breadth did not itself establish that the specification disclosed that feature.
3. On the adopted construction, neither the BES nor BIS system constructed transmittable messages in a protocol suitable for RF transmission. Neither therefore infringed claim 1.
4. On the alternative construction requiring application-level command protocol translation, the claim was novel over MNI and Pepe. It was nevertheless obvious over RadioMail, MNI and common general knowledge. Obvious alternatives included command compression, use of the gateway as a proxy, generic commands for accessing multiple email systems, and commands sent through two-way pagers to control voicemail systems.
5. The patent was therefore invalid for lack of inventive step. The insufficiency and section 1(2)(c) objections required no further consideration. On the adopted construction, Beletic was not infringed by either system and was invalid in any event.