Ever called "simply an unsatisfactory expert"? (Judge Pumfrey, UK)

Research in Motion UK Ltd v Inpro Licensing SARL Patents Court, Febr. 2, 2006.

An interesting case on anticipation and enablement, patentable subject matter and some comments on when to use the “streamlined procedure” before the Patents Court in the UK. Most notably also for Pumfrey J strong observations about Inpro's expert and his lack of objectivity, describing him as "simply an unsatisfactory expert".

Inpro is the proprietor of a patent relating to various ways in which web pages can be *pre-treated* before being downloaded to machines of modest processing capacity. Claimant is the UK subsidiary of the makers of the BlackBerry device (RIM) and seek revocation of the patent on the grounds of anticipation or obviousness. RIM also argues, inter alia, that the invention consists of a computer program and method of displaying information which subject matter is excluded from patentability pursuant to s 1(2) of the UK Patents Act 1977 (equivalent to art 52 (2) EPC, exemption for computer program “as such”). Inpro counterclaimed for infringement.

Inpro’s patent is declared invalid for anticipation (counterclaim dismissed). The judge holds that there are two aspects to an allegation of anticipation. For a prior documentary disclosure to anticipate, it has both to disclose the invention and enable the skilled man to perform it. In cases of anticipation by inevitable result, the prior art discloses those things which, if the skilled man did them, would fall within the claim. If the skilled person was given a target, in the shape of a disclosure of the invention, the law of enablement permitted reasonable experimentation and error correction while still holding that the prior disclosure was enabling. If the only target the skilled man was given was a course of action, then following that course of action would inevitably result in something within the claim, and there was no space for experimentation except in getting what was disclosed to work in accordance with the terms of the prior document.

The claim that the invention lays in excluded subject matter, failed. The right approach to determining whether material is excluded pursuant to s 1(2) of the 1977 Act was for the court to take the claims of the patent, correctly construed, and consider what the claimed invention contributed to the art outside the excluded subject matter. That test was to be applied on a case-by-case basis and little benefit was to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.

Streamlined Procedure
In 2005, Laddie J had made an order for a trial according to the streamlined procedure. Pumfrey J disagrees with Laddie J's proposition that once a party to an action proposes the use of the streamlined procedure, that procedure will be used in the absence of a convincing objection from the other. "The decision to use the streamlined procedure is an objective one to be arrived at on all the material. There are no presumptions. It is not unusual in patent actions for one or (sometimes) both parties to consider that their case is both straightforward and easy to try. They are often wrong: and in any event, the dissentient must be allowed a proper opportunity proportionate to the matters at stake fairly to put its case, and that may preclude use of the streamlined procedure. Speed is highly desirable in all cases, but not at the expense of fairness. One relevant factor is the commercial importance of the patent."

Peter Hill, Simmons & Simmons