Microsoft Corporation v Motorola Mobility LLC

Patent claims must be construed purposively in context, using the description, drawings and the skilled person’s common general knowledge, while respecting deliberate wording and the language actually used. A preferred embodiment or illustration does not itself limit a claim. The expression “responsive to receiving” was not a term of art and did not confine a status-synchronisation method to push communication. It was broad enough to include polling, including a request for updates by another transceiver, because the invention’s purpose was achieved by either method and no clear limitation required otherwise. The court also refused permission for a new alternative construction point raised only on appeal where it would have required further evidence and affected the related obviousness challenge.

Motorola appealed from an order of Arnold J dated 25 January 2013 which revoked European Patent (UK) No. 0 847 654 and dismissed Motorola’s infringement claim. Claim 1 had been held invalid for obviousness over the common general knowledge of paging and three items of prior art. The judge had also found that, if valid, the patent was infringed by Microsoft’s messaging system, subject in part to a licence defence.

The appeal concerned only the construction of Claim 1. The central issue was whether the words “responsive to receiving” confined the claim to push synchronisation and excluded polling. Motorola also sought to advance a subsidiary construction excluding manually initiated update requests.

Appeal dismissed. The Chancellor delivered the judgment, with Jackson LJ and Kitchin LJ agreeing.

1. The principles governing patent construction are subject to section 125 of the Patents Act 1977, giving effect to Article 69 of the European Patent Convention and its Protocol. Claims must be construed purposively and in context. The description and drawings assist interpretation, but the court remains concerned with the meaning of the claim language and must give effect to deliberate limitations. There is no general doctrine of equivalents. The court applied the principles approved in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 and the distilled principles stated in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062.
2. The words “responsive to receiving the second message” were not a term of art. Their natural meaning was consistent with both push communication and polling. The expression did not require an immediate or automatic update following a single trigger, particularly because the wireless infrastructure controlled which messages were transmitted.
3. The specification’s figures were relevant but not determinative. An illustration of the invention did not itself operate as a claim limitation. The references to automatic synchronisation and to a possible receive-only pager did not clearly exclude polling. The purpose of the invention—avoiding the need to repeat message-status decisions on other devices—could be achieved whether updates were initiated by the infrastructure or requested by another transceiver.
4. Because “transceiver” included devices used for email, the skilled person included an email engineer. The common general knowledge that email commonly operated through polling formed part of the interpretative background and could not be ignored merely because the patent focused primarily on pagers. Claim 3 could not limit Claim 1, although its wording was relevant; the absence in Claim 3 of the alleged limiting expression reinforced the rejection of Motorola’s construction.
5. The subsidiary argument excluding manually initiated polling was not raised in the grounds of appeal. It would also have required further factual and expert evidence and affected the proposed challenge to the obviousness findings. Permission to advance it was therefore refused. Motorola accepted that, once both interpretation arguments failed, the remaining grounds fell away. The appeal was dismissed.

1. Court of Appeal (Civil Division) dismissed Motorola’s appeal: [2013] EWCA Civ 1613.
2. High Court of Justice, Chancery Division, Patents Court (Arnold J) revoked European Patent (UK) No. 0 847 654 and dismissed Motorola’s infringement claim. Claim 1 was held invalid for obviousness over the common general knowledge of paging and specified prior art.