Microsoft Corporation and others -v- Motorola Mobility LLC and another, Patents Court, High Court of Justice, London, The Hon Mr Justice Arnold, 21 December 2012,  EWHC 3677 (Pat)
This case concerned the validity of Motorola’s European Patent (UK) No. 0 847 654, relating to the synchronisation of message information across multiple mobile devices, and its alleged infringement by Microsoft in relation to two classes of Microsoft software products, namely Exchange Active Sync (“EAS”) and Live Messenger. (An alleged infringement in relation to a third class of products, Lync, was abandoned in Motorola’s closing submissions at trial.)
In a decision handed down on 21 December 2012, the High Court held that Motorola’s EP ’654 is invalid: three of the seven claims of EP ‘654 were held to lack novelty over three items of prior art, and all claims were found to be obvious in light of the common general knowledge and/or over the pleaded prior art. The Court also held that, if the claims had been held to be valid, Microsoft would have infringed EP ’654 by its supply of its EAS and Live Messenger products save that, as a result of the acquisition of Motorola Mobility Inc. by Google, Inc. in May 2012, Microsoft could claim the benefit of a pre-existing cross-licence between Microsoft and Google (“the Google Licence”) in relation to EAS.
In construing the claims, the Court found that, whilst the preferred embodiments employ paging technology, EP ’654 was not confined to pagers or to wireless systems. The main dispute on construction centred on the meaning of the term “responsive to” in relation to the workings of a wireless messaging infrastructure in transmitting a message to a second device in order to synchronise it with a first device, and in particular whether it required the infrastructure to initiate the sending of the message to the second device or whether it also covered methods in which the second device requests updates from the infrastructure. Referring to and in line with the construction placed on the term by the Landgericht Mannheim in its judgment of 03 February 2012 in parallel proceedings, the Court held that the term did not require the receipt of a message from the first device to be the sole cause of the transmission by the infrastructure to the second device and that there may be other causes, such as the second device requesting an update from the infrastructure, as envisaged by Microsoft.
In assessing novelty, the Court held that US Patent No 5,221,838, which discloses an electronic wallet with a communication system which updates financial transactions to one and to at least a second portable data device via wireless message communication, anticipated claims 3, 5 and 7 of EP ’654, and that the PCMAIL and IMAP4 email protocols (also pleaded as prior art) anticipated claim 7.
In assessing obviousness, the Court agreed with Microsoft that EP ’654 is directed both to an engineer with expertise in paging and to an engineer with expertise in email systems, rather than a systems and software engineer with experience of working in the field of wireless communications as contended by Motorola. Noting that where an invention involves the use of more than one skill, the invention is obvious if it is obvious to a person skilled in the art of any of those skills (Schlumberger Holdings Ltd v Electromagnetic Geoservices AS  EWCA Civ 819), the Court held five of the seven claims (namely claims 1, 3-5 and 7) obvious over the common general knowledge of paging. On the basis of the evidence presented, claims 1-6 were found obvious over the pleaded prior art.
Microsoft did not dispute and the Court agreed that, if claim 1 of EP ’654 was construed in the manner contended for by Microsoft (as the Court did), then Microsoft had committed infringing acts by supplying “means essential” for putting the invention into effect within section 60(2) of the Patents Act 1977, but that Microsoft have a licence under the Google Licence which covers EAS.
Read the judgment (in English) here.
Head note: Sara de Sousa