England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Pumfrey
HC 05 CO1175

		Royal Courts of Justice Strand, London, WC2A 2LL
		7th February 2007

Lord Justice Jacob:

1. On February 2^nd 2006, on RIM's application for its revocation, Pumfrey J held that Inpro's patent No EP (UK) 0 892 947 was invalid for obviousness, [2006] EWHC 70 (Pat). He also held that an application to amend the patent in the form of so-called "A claims" was unallowable but that an application to amend to the "B" claims was in principle allowable. However, he held that, since the "B" claims if allowed would nonetheless be invalid, there was no point in the amendment being made. On Inpro's counterclaim for infringement he held that RIM's "BlackBerry" computing system "infringed", i.e. fell within certain of the claims of the patent as held allowable in principle.
2. With the Judge's permission Inpro appealed the finding of invalidity. RIM in addition to supporting the Judge's reasons, raised others by a respondent's notice which also challenged the finding of infringement. We began by hearing Inpro's appeal, for unless that succeeded, there was no point in hearing the matters raised by the respondent's notice. Having heard the appeal (Mr Guy Burkill QC for Inpro, Mr Antony Watson QC for RIM) we decided to hear no more at that stage. We have now concluded that the appeal must fail.
3. It is not suggested that any important or even novel issue of law is raised by the appeal: the submission is that the Judge misapplied or failed to apply settled principles. So there is no need to set out the facts in detail for a readership wider than the parties and I do not propose to do so.
4. Before settling down to the details of the appeal itself, I should mention one other matter. At an early stage in the proceedings, Laddie J made an order for it to be decided by the streamlined procedure. Pumfrey J did not actually criticise this decision but said, rightly in my view, that in retrospect, it was inappropriate. He disagreed with Laddie J's suggestion that whenever one side proposed such a procedure, the onus lay on the other to raise a convincing objection to its use. I agree. The decision to use that procedure must depend on all the circumstances of the case, which in particular includes its commercial importance, degree of complexity, the commercial and financial position of the parties and so on. In essence the decision is one of proportionality. By saying this, it should not be thought that I regard the streamlined procedure as one to be used rarely. On the contrary there will be – or should be – plenty of smaller cases where it will be the best way forward. And parties should always consider (and discuss) whether it would be sensible to use it whatever the size of the case.

The expert witnesses

5. Most unusually for an English patent action, one of the experts, Prof. Eisenstein who was called by Inpro, was held to be "simply an unsatisfactory expert" for the reasons set out by the Judge at [5-9]. Most importantly, apart from not being a worker in the field himself, "it was clear that he did not research the position properly." The result of this was that there was for practical purposes only the evidence of Professor Handley, called by RIM. His evidence, tested by cross-examination, was held to be "cogent and helpful". So it is clear that when he gave evidence on a point and stated his opinion with reasons, there was not only ample material for the judge to reach a conclusion based on that opinion, but that was the only real material on the point.

Obviousness on appeal

6. There was no dispute about the principles – the approach is that laid down by Lord Hoffmann in Biogen [1997] RPC 1 at 45. I do not set it all out – it is sufficient to say that in essence an appellant must show that the trial judge made an error of principle. Given the fact that there was in effect only one expert, showing an error of principle in this case is particularly difficult.

Obviousness – general principles

7. There was no dispute about these. It is helpful, but not essential, to follow the structured approach of Windsurfing [1985] RPC 59 at 73. Mr Burkill contended that the Judge, although he said he would follow Windsurfing, in fact did not do so. And in particular he failed to identify the differences between the prior art and the inventive concept of the impugned claims (Windsurfing step 3) and applied step 4 on a wrong basis – in particular by failing to have regard to the dangers of hindsight. For the latter he cited the well-known judgment of Fletcher-Moulton LJ in British Westinghouse v Braulik (1910) 27 RPC 209, re-affirmed as part of the current law in Technip France's Patent [2004] RPC 919 at [112]. A number of times Mr Burkill submitted that the judge had wrongly taken the step-by-step approach deprecated in Braulik and that the patent described an invention with real practical advantages.

Background Technology

8. The patent is for a computing system which uses small devices (often now called "hand-helds" and in the patent called "field computers") for use with the internet. The priority date of the patent is 10^th April 1996. By then the internet had been in existence for some years and was bent on the world-wide domination which it has now achieved. Mr Burkill accepted that Pumfrey J had accurately summarised the well-known state of the technology in [12-18] which I need not set out here.
9. Summarising even more briefly, web servers make web pages available for use by client computers. When a client computer "asks for" a page, the appropriate server is connected and makes it available. The "page" may (and generally will) consist of a number of files (e.g. text and images) and the server may itself get a file from another server, e.g. where the image is on that server. There were agreed protocols upon which the whole system depended, particularly so-called TCP/IP, HTTP and HTML.

The Patent

10. The Judge summarised the body of the specification at [22-30] and I do not repeat it all here. He was somewhat critical of the fact that it contains little or no detail about how in practice what it teaches should be performed. However, given that it was not suggested that the specification did not "describe the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" (Art. 83 of the EPC, part of our law by virtue of the Patents Act 1977) this does not matter. The real significance of the fact that the invention is an "ideas" only invention (as Mr Burkill described it) is that one must necessarily assume that the skilled addressee has a considerable degree of skill and knowledge of how computers and the internet works – for otherwise he could not perform the invention.
11. For present purposes I can be briefer than the Judge. The patent is concerned with how a small field computer (with a small display and limited battery life) can access the internet. To try downloading all of a full web page into a small computer with limited computing power, battery life and a small screen is at best impractical and at worst impossible. The screen will not show the full page properly or at all, lots of time (and thus battery) will be taken and so on. The main idea behind the patent in its unamended form is to interpose a "proxy-server" between the field computer and the web. The field computer tells the proxy server what it can cope with. The proxy does all the "heavy" computing and just sends a "reduced" page suitable for the field computer concerned. Mr Burkill put it this way in his skeleton argument:

The patent provides an elegant and convenient way to improve upon this trade-off, by making use of a proxy server to carry out much of the "heavy" computing when the portable computer is using the internet.

12. Although a mass of claims (amended and unamended) were in issue before the judge, the case has distilled, so far as the appeal is concerned, to just two. Mr Burkill accepted that if these fail, no others can survive. The claims are 1 and 1B as proposed to be amended:

1. A computing system comprising:

a field computer (13) comprising a display having a specific size and resolution; and

a Proxy-Server (19) connected to the field computer by a data link (15), the Proxy-Server having an Internet port (37);

wherein the Proxy-Server (19) is adapted to access Internet servers (23) through the Internet port (37) directed by commands and data received from the field computer (13), to download data from the Internet servers (23) thus accessed, to transpose the downloaded data by reducing information density, and to transfer the transposed data to the field computer (13) via the data link in a TCP/IP format

characterised in that upon connection, the field computer (13) transfers to the Proxy-Server (19) information particular to specific characteristics of the field computer (13), including information identifying the specific size and resolution of the display of the field computer (13),

and wherein the Proxy-Server (19) downloads data comprising WEB pages and transposes the data in reliance on such information to match the specific size and resolution of the display of the field computer (13).

1B. A computing system as claimed in claim 1 wherein during transposition, HTML and image files are assembled into a single file for transfer to the field computer (13).

13. The concept of claim 1 is thus essentially to have a proxy-server between the field computer and the internet and for the field computer to send information about what it can display to the proxy so that the proxy can "transpose" what it gets from the internet into what can be displayed by the screen of the field computer. This concept is a bit narrower than one might expect from some passages in the specification. The wider concept is quite generally to have the proxy to do as much processing as possible, see e.g. [83].
14. Consistent with that, claim 1B adds the feature of assembling text and image files into a single file in the proxy before sending to the field computer.

The Prior Art generally

15. The Judge found the patent obvious over three citations, "Pythia" (a demonstration of a system called GloMop devised by a group at Berkeley, CA), "Mowser" and "Bartlett" (the full citations are in the judgment). He rejected the attack based on a publication by the GloMop group. I note in passing that the Federal Patent Court of Germany took an opposite view about obviousness over GloMop finding the patent invalid for that reason (decision of 27^th January 2006 in joined cases 2 Ni 30/05 and 35/05 (EU)). I understand that an appeal to the Supreme Court is pending. Obviousness over GloMop was an issue which was to have been raised by the respondent's notice, but we have not had to decide the point.
16. Before considering the citations individually, I observe that all three of them propose a proxy-server between a "field" computer and the internet. All three use that proxy-server to do heavy computing to reduce what is sent to the field computer. Given that that general idea was known, the question then really boils down to whether adding the ideas that the field computer should tell the proxy about its screen capacity (claim 1) and combining files in the proxy so as to send a single file (claim 1B) are obvious.

Mowser

17. Mr Watson said that was his best citation, so I turn to that first. Mowser is a name coined by the authors from (Mobile Browser). It contains the following passages:

Since wireless networks do not have the data transmission speeds of wired networks, downloading large files over wireless networks will consume a longer time. Not only will it take longer to display large files, but it will also consume more battery power, reducing the time the mobile computer can be used. Web servers also have no notion of the resources available at the client's end, and blindly assume that the client is capable of properly displaying the data that it receives. For example, a user may follow a hyperlink to a sound file, on an X terminal [i.e. a terminal running an X server] which is not capable of playing sound. As a result, the Web server will consume time and network bandwidth to deliver a sound file that cannot be used by the client. While more and more workstation PCs are becoming multimedia-capable, the same is not true of mobile computers.

To overcome these problems, a smarter Web browsing application is needed. It must take into account the differences between a static and mobile host, and the quality of the network connection between the server and client. The objective is to let the user set his or her own preferences for optimal use.

So clearly the general idea of a proxy to do the work is disclosed by Mowser

18. Mowser goes on to say:

Mowser … allows a mobile user to set his or her viewing preferences, based on the network connection and available resources.

Pausing there, this identifies exactly the two things that matter: the connection (how fast material can be downloaded) and the capabilities of the field computer.

19. It goes on to say that there is:

a proxy server that serves files based on preferences and a caching server that stores the preferences for mobile hosts.

So the idea of storing characteristics of the mobile with the proxy is disclosed.

20. Mowser goes on to talk about this more:

Mowser is based on the premise that, instead of blindly serving files to a client, a Web server should take into account the limits and preferences of the user's MH [mobile host]. Since currently available Web servers do not have this capability, we designed a proxy Web server that acts as a 'smart' server to the mobile host, and as a client to the rest of the world. All communication between the mobile host and the rest of the WWW is done through this server … Each mobile host's preferences are known to this server. … The preferences file contains information about the hardware capabilities of the MH, and its user preferences. The following information is stored for each MH:

Then different types of preference are set out. They include:

Text File Size- maximum size of text files that may be downloaded

Image File Size – Maximum allowed size for image files

21. Mowser later says:

Once the preferences are stored the proxy server starts the browsing session by loading the starting URL defined in the preferences [i.e. a "home page"]. All HTTP GET requests from that point are handled by the proxy server. If a file requested by the MH does not meet the requirements described in the preferences, the proxy server can modify the file before sending it to the MH. ….. 'If a file does not meet the size requirement for its type, the proxy server will not send it to the MH. Files that cannot be properly displayed by the MH will not be sent either. A MH with no sound capabilities will not receive any sound files. If the MH has only monotone [sc. monophonic] sound capability, stereo sound files would be converted to [monophonic], before they are sent. Image files can be compressed by sacrificing quality without sacrificing semantics. In particular, the size of the image, and the number of colors can be reduced, resulting in a smaller image that conveys the same information. Whenever a file is modified by the proxy server, a URL will be provided to retrieve the original unmodified file, if the user so requires.

…

Our current implementation performs conversions on image files if they do not meet the user's preferences. Both GIF and JPEG format files are subject to this conversion. The preferences allow the user to choose between reduction by image size or by number of colors. If the user decides colors are more important than the image size, no color loss will occur during the conversion. The file size is compared to the maximum size permitted in the preferences, and a scale factor is determined. The image file is then scaled down till it meets the size requirement.

I emphasise the passage also emphasised by the Judge.

22. Mr Burkill abandoned a point about what Mowser meant by "video resolution" (dealt with by the Judge at [156]). It would be read as a reference to screen size – so that is one of the things the user can set for his machine.
23. Mr Burkill in a helpful summary of his case submitted that it:

Teaches:

Use of standard HTTP protocol between proxy and field computer.

Proxy server to transpose documents.

Reduction of image size to either

thumbnail of user-defined number of bytes (not pixels), or

reduced colour depth.

Does not teach:

Using screen size and resolution.

Matching of images to screen size and resolution.

Departing from HTTP in order to assemble HTML and image files into a single file to transfer to the field computer.

24. The first two points of alleged difference (step 3 of Windsurfing) are all that matter for claim 1. They are really different aspects of the same thing, for once you have the idea of matching images to screen size and resolution, you must use the information about them to do it. The Judge dealt with the point this way:

[159] Professor Handley was willing to see in Mowser use of the Video Resolution preference (i.e. screen size) to reduce image files. He based himself on the passage quoted at [154]. He was adamant that Mowser was clearly contemplating image size reduction based on screen size in his cross-examination at transcript 719-722. The crucial point is that Mowser's general description (section 2) is more general than the implementation (section 3) and that the passage bridging the columns (italicised in [154]) plainly related to a principle, as he put it, 'not to send stuff that would not fit within that'.

The Judge went on to hold that there was no anticipation because:

[160] I do not think that size reduction based on display size is disclosed as a matter of language. Nor do I think it falls within the category of necessary inferences.

25. The judge went on, however, to hold the claim obvious, saying:

[161] I turn to the question of obviousness. If the paper immediately suggests to the skilled person that he can use size reduction to meet the display size then it renders claims 1 and 7 bad for obviousness. In my judgment, Professor Handley's view on this is well thought out and convincing. I conclude that it does.

26. Mr Burkill submitted that Prof. Handley's evidence amounted to ex post facto illegitimate step-wise reasoning. He took us to the cross-examination (and Mr Watson took us to a little more) at Day 5 p.714-732. I have read this several times. The more I read it the more sense it made to me. It was specifically put to Prof. Handley that he was using ex post facto analyses (which he did not accept). It was evidence the Judge was entitled to accept. Nor, at the most basic level, can I see that it could be inventive over Mowser to tailor the image so that it fits the screen of the field computer. Mowser says "the size of the image … can be reduced, resulting in a smaller image." Given that, you do not have to be an inventor to make a smaller image which will fill your screen.
27. Accordingly, in my judgment, Mr Burkill is miles away from showing that the Judge was wrong – and many many miles away from showing any error of principle.
28. I turn to claim 1B. This adds the feature set out in the last of Mr Burkill's bullet points. The Judge considered this in the context of all the citations collectively. That was legitimate given that the feature is an independent idea from that of screen size matching and so there is no question of the addition of the two features being an inventive combination. The question is whether, given the idea of a proxy server, using that to combine files so that a single file is sent to the field computer is obvious (Windsurfing 3).
29. Normally if one uses a browser to access a web page the various files making up the page are sent individually, text first, images later. Some of the files may even be obtained from some other server. That is what was required by the various protocols in force at the date of the patent. If one wants an analogy, the information is sent in a series of discrete packages. The idea of claim 1B is to avoid sending separate packages to the field computer – put it all in one package suitable for that computer.
30. The Judge held this feature "trivial" and obvious. He did so at [181-183]. The heart of his reasoning is this:

I am firmly of the view that the use of a single file, and the appropriate changes to the protocol between mobile and proxy, is entirely trivial. It saves on TCP/IP connections and is obvious to use for that reason.

31. I cannot see how this conclusion can be wrong, still less wrong in principle. It is accepted that the purpose of using a proxy is to do the heavy computing. We were shown in an article by Padmanabhan a diagram illustrating "packet exchanges and round-trip times for HTTP." Whether or not the article as a whole is common general knowledge does not matter – anyone familiar with how the internet works would have known that "overhead" is involved when files are sent separately – the client and server enter into a dialogue about the requesting and sending of each file. It makes entire sense to avoid that overhead between client and proxy both because the speed of communication matters and because the capacity of the client computer is limited. Pursuing the "packet" analogy, it is easier to send and unwrap just one parcel than a number of smaller ones.
32. The fact that single files combined from several were actually proposed in earlier proposals for internet protocols (1992 and 1993) provides some good confirmation that the idea is obvious. The Judge did not actually find the earlier proposals to be common general knowledge in 1996 even though only newcomers to internet technology would not have seen and been aware of it since it was contained in a basic internet technology document. If he had, claim 1B would have added nothing but self-evident common general knowledge. As things stand, the earlier proposals are good supporting evidence of the obviousness of the idea.
33. Mr Burkill's main point was that:

the inventor has appreciated that you are no longer bound by the standard web protocols between hand-held and proxy and can generate this additional frequency thereby further saving on the processing and the battery life.

34. This is specious. Once you have the idea of a proxy to do as much work as possible, sending single files to reduce overhead just follows. It is hardly clever to realise that you are not bound by the web protocols when you have deliberately isolated the handheld from the web. The Judge accepted Prof. Handley's evidence on this point and he was entitled to do so.

Pythia

35. That is actually an end of this appeal. However since the judge's conclusions as to obviousness over Pythia and Bartlett were also challenged I will deal with them briefly. The Judge considered Pythia at [140-151]. I do not set it all out again – there was no attack on the Judge's description of what Pythia discloses. Mr Burkill's summary of the position on Pythia was:

Teaches:

Use of standard HTTP protocol between proxy and field computer.

Proxy server to transpose documents: demonstration version.

Reduction of image size to user-defined thumbnail size.

Preferences set by user and recorded by IP address.

Does not teach:

Sending screen size and resolution.

Matching of images to screen size and resolution.

Departing from HTTP in order to assemble HTML and image files into a single file to transfer to the field computer.

36. So far as claim 1 is concerned, the argument was about the first two bullet points. Mr Burkill submitted that what Pythia was about was giving the user a thumbnail picture- then if he wanted the full picture he could ask for it although he would not be able to see all of it on his screen. The idea of matching the image to screen size was not there.
37. The trouble with that argument is that Pythia allows the user to set the x size of his thumbnail. So he could have the horizontal side of his thumbnail the same size as that of his screen. Indeed if the picture and screen were both square, there would be a perfect fit. The Judge gave a wide meaning to "match" (a meaning which Mr Burkill accepted). So even if the picture did not fit exactly, there is a "match."
38. The Judge set out Prof. Handley's evidence on the point at [149]. Prof. Handley thought it was "entirely reasonable to expect that you would choose the size of your thumbnails based on the size of your screen." Mr Burkill suggested this was hindsight – a matter rejected by the Professor when it was put to him. The Professor's evidence was accepted by the Judge. I am quite unable to see why he was wrong to do so, still less how any error of principle was made.
39. The last of the bullet points goes to claim 1B. Adding the single file feature was not inventive for the reasons I have already discussed.

Bartlett

40. The Judge dealt with this at [166-178]. At the outset I observe that he was clearly conscious of the weighing exercise he was undertaking and reached his decision with care:

[171] What worries me is whether this disclosure has, so to speak, been squeezed out of the document, not necessarily with hindsight but with too much effort.

And

[178] I am conscious that this decision on Bartlett may be thought surprising, given the brevity of the document, and the omission from the system actually described of any references to images.

So it is particularly appropriate here to remind oneself that it is not the function of the Court of Appeal to go through the same weighing exercise with a view to coming to a different conclusion.

41. Mr Burkill's summary on Bartlett was as follows:

Teaches:

Proof of concept of browsing text using cellphone/small PDA and proxy.

Proxy server which formats web page text in a videotext environment.

Use of some non-HTTP protocol between the proxy and the field computer.

Does not teach:

Sending screen size/resolution (unless clearly and unambiguously derivable from Fig.1).

"Reduction of information density" of reformatted text documents.

Handling of images, and hence does not teach any of:

transposition of images, or

(even if this were done) matching transposed images to screen size/res; or

combining image files with HTML files to transfer as a single file.

42. Bartlett says almost nothing about sending images to the field computer, saying no more than "New commands for handling images, line drawings and forms could be easily added to the protocol." Prof. Handley gave evidence as to how he thought a skilled man would follow up the suggestion [172-175]. The Judge accepted that evidence. There is simply no basis for saying he was wrong to do so, there is no error of principle here.
43. The argument, such as it was, is that the Professor was using hindsight. But that is not right. The point is that Bartlett did describe the objective – to send images. He invited his reader to consider how. So the end point is already specified, unlike the "normal" hindsight case.
44. Again the single file point is as I have dealt with it above. It was specifically included by Prof. Handley in his consideration of how the skilled man would implement Bartlett's suggestion to include images.

"New and important consequences in the shape of practical machines"

45. I should mention the point with which Mr Burkill opened. He showed us a RIM document puffing its BlackBerry system in the following words:

Browsing Information

The Mobile Data Service feature provides the following optimizations in delivering web content to the handheld browser:

Image optimization: By default, the Mobile Data Service converts .jpeg or .gif images to .png images, scales images to fit the screen dimensions, and reduces color depth to match the handheld capabilities. Refer to "Image conversion" on page 25 for more information.

Content filtering: The Mobile Data Service processes HTML content to remove unsupported tags, converts data to a tokenized format, and compresses the data for efficient delivery over the wireless network.

Page rendering: The Mobile Data Service retrieves images while it is processing HTML or XHTML content, and includes the images with the pages that it sends to the handheld.

These features provide a better browsing experience because the browser can download pages more quickly, and display a wider range of HTMP content.

46. Mr Burkill submitted (correctly) that this praises the very features of claims 1 and 1B. He asked us to take that into account, emphasising the above passage from Fletcher-Moulton LJ in Braulik. I am not moved by this for several reasons:

i) By and large the obviousness case does not actually involve a step-by-step analysis;

ii) When the document speaks of "a better browsing experience" it must be speaking of what was actually out on the market, as opposed to any of the cited prior art. Better than what?

iii) In any event the "practical machine" in the shape of the BlackBerry involved much more than just the "ideas" the subject of the claim – and owed nothing to the patent. We were told that BlackBerry was first on the market in 1999. That is three years after the date of the patent – three years is a long time in the world of computers where speed of computing, of connection and size of memory and price change so rapidly. And the "practical machine" must have involved a vast amount of actual detailed implementation and design.

Conclusion

47. The appeal should be dismissed.

Lord Justice Moore-Bick

48. I agree.

Lord Justice Tuckey:

49. I also agree.