Victory for BlackBerry as Court of Appeal upholds

Patent Revocation

A decision finding a patent covering Blackberry's handheld technology invalid on the grounds of obviousness has been upheld by the Court of Appeal.

The patent (EP0892947), held by Inpro Licensing Sarl (Inpro) related to a computing system enabling handheld computer devices to view web pages via a proxy server. Research in Motion UK Ltd (RIM), the UK subsidiary of the provider of BlackBerry had sought revocation of the patent. Inpro counterclaimed against RIM and their licensee T-Mobile (UK) Ltd for ptent infringement.

Pumfrey J, the trial judge in the High Court, had found the patent to be obvious (or to lack inventive step) in the light of the state of the art, following principles set down in Windsurfing International Inc. v Tabur Marine (Great Britain) Inc. (1985).

Inpro appealed against Pumfrey J's decision to revoke the patent on the grounds of lack of inventive step. The Court of Appeal dismissed Inpro's appeal, upholding Pumfrey J's decision.

The burden was on the appellant to show that the trial judge had made an error of principle in the assessment of obviousness. The Court of Appeal found that the Windsurfing case had been appropriately applied.

The prior art cited disclosed reducing the amount of data downloaded to and processed by the limited resources of the hand held by use of an intermediate proxy server between a web-server and the hand held computer. Inpro's patent claims additionally included the step of the hand held computer sending information relating to its screen capacity to the proxy server and the combination of files by the proxy server to reduce the number of files sent to the hand held computer.

The Court of Appeal found that the appellant did not establish that the judge had erred in principle when he determined that these two differences were obvious in the light of the prior art.

The Court of Appeal also provided guidance on the use of the streamlined procedure, and stated that an earlier decision by Laddie J to order the case to be determined by streamlined procedure was inappropriate. The streamlined procedure was introduced in 2003, and requires that factual and expert evidence be in writing. Cross-examination is only used where necessary. The procedure further limits or dispenses with disclosure. This enables cases to come to trial in a shorter period of time and cuts down on the length of time that such trials take.

The case was an important victory for the manufacturer and providers of BlackBerry handsets. Had the patent been found valid, it would have threatened the continued use of the handset's technology. It also provided important guidance on the use of the streamlined procedure, which while providing welcome speed and efficiency, was primarily intended for use in smaller patent cases. Factors to be taken into account include the commercial importance, the degree of complexity and the commercial and financial positions of the parties.

Dawn Perkins