England and Wales High Court (Patents Court) Decisions
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URL: http://www.bailii.org/ew/cases/EWHC/Patents/2005/B2.html
Cite as: [2005] EWHC B2 (Pat)
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London, EC4A 1DZ |
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B e f o r e :
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| E-DATA CORPORATION |
Claimant |
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| - and - |
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| (1) GETTY IMAGES, INC. (2) GETTY IMAGES (UK) LIMITED |
Defendants |
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John Baldwin Q.C. and Brian Nicholson (instructed by Willoughby & Partners) for the Getty Defendants
John Baldwin Q.C. and Robert Onslow (instructed by Dorsey & Whitney) for the Corbis Defendants
Hearing dates: 18-21, 25-26 April 2005
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Crown Copyright ©
- In these proceedings the Claimant ("E-Data") claims that the Defendants have infringed European Patent (UK) No. 0 195 098 ("the Patent"). The Defendants deny infringement and counterclaim for revocation of the Patent. There are two sets of proceedings involving two sets of Defendants. In the first claim the Defendants are Getty Images, Inc. and Getty Images (UK) Ltd, which I shall refer to collectively as "Getty" since it is unnecessary to distinguish between them. In the second claim the Defendants are Corbis Corporation and Corbis U.K. Ltd, which I shall refer to collectively as "Corbis" since it is again unnecessary to distinguish between them. Although the two sets of Defendants instructed separate solicitors and junior counsel, from a fairly early stage of the proceedings they have sensibly co-operated with each other to present a united front. This has extended to serving joint Amended Grounds of Invalidity and instructing the same leading counsel. Although the activities of Getty and Corbis which give rise to the claims of infringement differ in certain respects, those differences make little difference to the case on infringement. Accordingly for most purposes it is unnecessary to distinguish between them.
- The application for the Patent was filed on 19 March 1985. No priority is claimed. The granted Patent was published on 3 October 1990. The specification is entitled "System for reproducing information in material objects at a point of sale location". For once, this is an accurate, as well as a pithy, description of the claimed invention. This consists of methods and apparatus enabling articles embodying information (such as records embodying sound recordings) to be manufactured on demand at the place where they are to be sold under the control of the "owner" of the information (that is to say, the owner or licensee of the copyright in the information).
- Under the heading "Background of the Invention", the specification states (column 1 lines 7-25):
- The specification goes on to identify certain particular problems with this traditional method of distribution illustrated by reference to the example of recordings of performances of musical compositions (column 1 line 26 – column 2 line 35). First, the owner of the information faces what the specification labels the "configuration problem": how many phonograph (i.e. vinyl) records, cassette tapes, 8-track tapes and reel-to-reel tapes[1] are to be manufactured. Secondly, the owner faces the problem of distributing the various configurations of material object ("MO") to retail outlets. Thirdly, the owner faces the problem of collecting money for the sale of such MOs, particularly if many do not sell and are returned. Fourthly, the owner faces the problem of ensuring that the MOs are available when they are needed to be e.g. at a time coinciding with the owner's advertising campaign. Fifthly, retailers face the problem of deciding which configurations, and how many of each, to stock. (In a later passage at column 3 lines 12-22 the point is made that, because retailers cannot stock all available recordings, sales may be lost.) Sixthly, retailers face the problem of pilferage.
- Next the specification identifies two previous attempts to solve these problems (column 2 line 26 – column 3 line 11). The first is to market recordings by direct mail, for example to members of a record club. The second is to advertise recordings on television for direct sale to the consumer. The specification says that neither of these approaches solves all the problems with the traditional method of distribution.
- The specification then points outs that the problems which it has identified have resulted in high prices of MOs to the consumer. It continues (at column 3 lines 27-47):
- The specification then encapsulates the problems to which the claimed invention is addressed as follows (at column 3 lines 48-56):
- The specification goes on to say that similar problems exist with "motion picture type information" and other types of information such as software, books, handheld calculators, handheld electronic games, greetings cards, maps, sheet music and the like (column 3 line 57 – column 4 line 16).
- The specification acknowledges that there have been vending machines capable of dispensing MOs at a point of sale location ("POSL") in response to receiving payment, but says that the MOs still need to be manufactured and distributed (column 4 lines 17-24). It also acknowledges (at column 4 lines 24-39) that:
- This opening section of the specification concludes with the following promise:
- Unlike most patents, the specification does not contain a summary or general statement of the invention. Indeed, it does not even contain the conventional consistory clause. Instead, it proceeds directly from the background section to introduce the drawings, of which there are four, and then to a "description of the preferred embodiment". The latter section in fact describes a number of embodiments. Each of these embodiments is described by reference to Figures 1, 2 and 3.
- Figure 1, which is reproduced in the Annex to this judgment, is a diagrammatic representation of a point of sale information manufacturing system 10. It comprises two main elements, an information control machine 12 ("ICM") and an information manufacturing machine 14 ("IMM"). These machines are shown in slightly more detail in Figures 2 and 3 respectively.
- The ICM is generally described (at column 5 line 60 – column 6 line 17) as follows:
- The IMM is generally described (at column 6 lines 18-29) as follows:
- The specification envisages (at column 6 lines 30-47, column 15 lines 20-21 and column 27 lines 1-3) that there will be multiple IMMs, one or more of which are located at each POSL remote from other IMMs located at other POSLs. There may be one or more ICMs, each of which is located at a remote location with respect to each of the POSLs.
- As can be seen from Figure 1, there are two communication links 18 and 20 between the ICM and the IMM. One problem which arises in understanding the Patent is that there is an inconsistency between Figures 1, 2 and 3 and the description of the preferred embodiment: Figures 1, 2 and 3 show link 20 as unidirectional and link 18 as bidirectional, whereas some passages in the description appear to require link 20 to be bidirectional (e.g. column 6 line 24, column 7 lines 7, 9 and 13, column 11 line 34 and column 15 line 43). It is not entirely clear whether there is an error in the Figures or whether there are errors in the text with link 20 being referred to when it should refer to link 18. In my view the latter is the correct interpretation, since some of the references to link 20 involve the manufacturing control unit 34 which incorporates a modem 80 and is connected to link 18. This interpretation is supported by a passage which describes link 20 as involving physical delivery of information embodied in tangible media whereas link 18 is an electronic data transmission link (column 25 lines 35-63). It is also supported by the existence of some other instances where it is clear that the wrong reference numeral has been given (e.g. column 6 line 8 and column 10 line 48). Confusingly, there is also at least one passage where it appears that the opposite mistake has been made and link 18 is referred to when link 20 is intended (column 11 line 24). As will appear, these are not the only inconsistencies in the Patent.
- The general mode of operation is described (at column 6 line 51 – column 7 line 23) as follows:
- This passage concludes with the following important statement (column 7 lines 23-32):
- The specification goes on to describe the ICM and the IMM and their functions in more detail. In particular, it describes the use of "encipher programs" and "decipher programs" to encode and decode (i.e. encrypt and decrypt) the information inputted into the ICM and stored at the IMM and the use of certain anti-tampering mechanisms to provide further protection for information stored in the IMM. The specification also describes the operation of the system in more detail by reference to the example of sound recordings. The description is lengthy, repetitive and somewhat confusing. Matters are not helped by the employment of a number of rather similar pieces of invented pseudo-technical terminology such as (in addition to those employed in the claims) "file reproduce command", "file transmit command", "catalog transmit command", "file select code", "IMM code", "owner code", "select code" and so on. Fortunately, it is not necessary for present purposes to go into most of these details.
- As already mentioned, the "description of the preferred embodiment" in fact describes a number of different embodiments. First, there is a main group of embodiments (described down to column 28 line 58), which encompasses certain variants the details of which it is unnecessary to go into. Secondly, there is an alternative embodiment (described at column 29 line 23 to column 31 line 8) which is value-based. In this embodiment, the request reproduction code requests authorization[2] to reproduce information up to a specified value and the authorization code confers authorization to reproduce information up to that value. Thus the IMM can reproduce a number of items of information provided that the total price of those items does not exceed the specified value.
- This section of the specification also contains the following passage (at column 28 line 59 – column 29 line 22):
- The final section of the specification before the claims is a description of another embodiment shown diagrammatically in Figure 4. In this embodiment the IMM is constructed as a vending machine which accepts cash or credit cards and dispenses MOs. In this case there is no remote authorization of reproduction. Instead, authorization depends on validation of the payment transaction. The essential difference between this embodiment and the prior art vending machines acknowledged earlier in the specification is that the MOs are manufactured on demand within the vending machine.
- The only claims which are contended to be independently valid are claims 1, 2 and 6. Of these only claims 1 and 6 are alleged to be infringed. Claims 1 and 2 are process claims while claim 6 is a product claim. Of the process claims, claim 1 covers the main embodiments while claim 2 covers the vending machine embodiment of Figure 4.
- Claim 1 may be broken down as follows (omitting reference numerals and inserting letters and roman numerals in square brackets to identify the integers):
- Substituting the abbreviations ICM, IMM, MO and POSL to reduce the verbiage gives the following:
- Claim 2 may be broken down as follows:
- Substituting the abbreviations gives:
- Claim 6 may be broken down as follows:
- Substituting the abbreviations gives:
- There was no dispute between the parties as to the addressee of the Patent. The person skilled in the art to whom the Patent is addressed is an IT (information technology) professional. He (or she, I will say for the first and last time) would probably be a generalist rather than a specialist, although experience in retail and distribution systems would be considered an advantage. As such, he could come from a variety of backgrounds in terms of his education and technical expertise. I would categorise him as more of a systems analyst rather than a systems engineer. In implementing the Patent he would probably lead a team of people, but I do not consider that this is a case where the other members of the team are also addressees of the Patent.
- The parties called as expert witnesses to represent the addressee Mr Edward Kalin and Mr Rod Dowler respectively.
- Mr Kalin graduated from Massachusetts Institute of Technology in 1977 with a degree in Management Science with a concentration on Electrical Engineering and Computer Science. From 1977 to 1999 he was employed by IBM Corporation and its subsidiaries in various capacities of increasing seniority. Since 1999 he has founded and acted as technical consultant to two start-up IT companies. In 1985 he was a marketing administrator employed by IBM Instruments, Inc. working on the IBM 5520 office system and the IBM PC. As well as his technical qualifications, Mr Kalin is a qualified US patent agent, having been admitted to practice in 1992.
- Mr Dowler graduated from Oxford University with a degree in Physics in 1965. From 1965 to 1970 he worked initially as a computer programmer and then as a manager of programming teams. From 1970 to 1979 he was a data processing consultant with Deloitte Haskins & Sells management consultants. From 1979 to 1987 he ran the KMG Thomson McLintock IT consultancy practice. From 1987 to 1994 he was a partner in KPMG Peat Marwick McLintock. For most of this period he led the KMPG European High Technology Practice. Since 1994 he has run his own IT consultancy company. In 1985 he was at KMG Thomson McLintock and his work involved defining requirements for business IT systems, selecting suppliers and overseeing the implementation of the systems.
- In my view both of these gentlemen are reasonably representative of the addressee in terms of their qualifications and experience. Of the two, Mr Dowler is perhaps slightly closer to the ideal addressee save for the fact that he has had experience with airline reservations systems which the addressee would not necessarily have had.
- I regret to say that Mr Kalin did not impress me as a witness. In my judgment he tended to act as an advocate for E-Data's case rather than as an impartial expert witness. This manifested itself in two ways. First, he was prepared to espouse views supportive of E-Data's case without due regard as to whether they were really tenable. For example, he opined in his first report at paragraphs 25.2 and 26.2 that claim 1 did not require the steps of the process to be performed in any particular order, a proposition that even counsel for E-Data did not support in its full width (see below). Secondly, during cross-examination he was evasive or argumentative or took refuge in semantics rather than giving direct answers to straightforward questions. By contrast, Mr Dowler was much more direct and helpful. Although counsel for E-Data exposed a couple of errors in Mr Dowler's report, he readily acknowledged these and I do not regard them as undermining the rest of his evidence.
- Accordingly, were it necessary to do so on any technical issue, I would tend to prefer Mr Dowler's evidence to that of Mr Kalin. As will appear, however, the issues between the parties lie much more in the realm of construction than on technical matters. Quite a lot of the evidence related to such issues. In the circumstances of this case I do not criticise the parties for leading such evidence or for cross-examining to it, and I have taken the evidence into account in attempting to read the Patent through the eyes of the skilled person, but at the end of the day the construction of the Patent is a matter for the Court and not the witnesses. I therefore do not propose to burden this judgment with references to the evidence on such issues.
- There was little dispute as to the common general knowledge of the addressee in March 1985. It was common ground that this included the following matters, which I take from section 3 of Mr Dowler's report with which Mr Kalin substantially agreed:
- Although it is common ground that the existence of the Prestel system was common general knowledge as set out above, it is not common ground that anything more about it was. The Defendants submitted that the details of the way in which Prestel, including its Micronet 800 subsystem described below ("Micronet"), worked were also common general knowledge, but in my judgment this was not proved.
- As is common in patent litigation, many of the issues on infringement and validity in this case depend on the true construction of the claims. E-Data advocates a broad construction of the claims with a view to catching the alleged infringements. The Defendants advocate a narrower construction of the claims which avoids infringement. The Defendants say that the Patent is invalid even on their narrow construction, but argue that it is even more clearly invalid if the claims are interpreted as contended for by E-Data. As a result there are disputes as to the construction of a number of phrases and integers of the claims.
- The law as to the construction of patent claims was recently reviewed by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 5. He said:
- Jacob LJ summarised the applicable principles in Technip SA's Patent [2004] EWCA Civ 381, [2004] RPC 46 at [41]. He repeated this summary in a slightly abbreviated form and omitting one sub-paragraph in Mayne Pharma Pty Ltd v Pharmacia Italia SPA [2005] EWCA Civ 137 at [5] :
- Although there are a number of disputes on construction, there is a common point which underlies several of them. The Defendants submit that it is fundamental to the claimed invention that it provides a technical means of controlling reproduction of information onto MOs by IMMs located at POSLs. By contrast E-Data submits that the claims do not require there to be any technical means for controlling the ability of the operator of the IMM to reproduce information onto MOs following authorization.
- The parties are agreed that one of the objectives of the Patent, as set out in the passage quoted in paragraph 6 above, is to reduce the economic incentive for "downstream piracy", i.e. unlicensed copying of MOs after they have been manufactured and distributed, by making manufacture and distribution more efficient and hence lowering the price to consumers while maintaining returns to owners of information and retailers. They are also agreed that it is not an objective of the Patent to prevent downstream piracy by technical means.
- Where the parties differ to some extent is over "supply chain security". They are agreed that it is an objective of the Patent to provide supply chain security, but diverge over the extent of such security.
- E-Data says that the Patent merely aims to ensure that the owner is paid for reproduction of the information onto MOs that he has authorised, not to ensure (at least by technical means) that there is no further reproduction thereafter.
- The Defendants say that a key aspect of the claimed invention is that it seeks to address a problem of its own creation. In order to reduce the costs of the traditional method of distribution, the invention supplies each IMM with the means to make MOs reproducing the information in question. In the case of sound recordings, such means would be a "submaster" recording i.e. derived from the original master recording but of sufficiently high quality to enable records and tapes to be produced from it. The Defendants say that the invention creates a new risk of piracy by the operator of the IMM and seeks to remove that risk by ensuring that the IMM can only manufacture MOs with the authorization of the owner of the information.
- The difference between the parties' positions is as follows. E-Data says that the invention embraces a system in which the IMM itself can be used to make further unauthorized copies of the information after the authorized copies. The Defendants say that such a system is outside the scope of the invention, and that the invention requires that the IMM cannot be used to make further copies unless there has been a further request for reproduction and a corresponding authorization code.
- In my judgment the Defendants' interpretation accords with the way the person skilled in art would understand the Patent. I consider that this is supported by a number of passages in the specification. First, the passage quoted in paragraph 6 above is about piracy of recordings i.e. unlicensed reproduction of MOs. It is not about unlicensed reproduction of the information in further MOs. As counsel for the Defendants put it, the difference is the difference between the production of children and the production of siblings. The skilled reader would appreciate that the difficulty of preventing the former otherwise than by minimising the economic incentive does not reduce the need to prevent the latter. Secondly, the passage quoted in paragraph 7 above indicates that the invention virtually assures the information owner of compensation for the manufacture and sale of MOs. On E-Data's interpretation this would not be the case. Thirdly, the passage quoted in paragraph 10 above says that the invention provides a means for manufacturing MOs at POSLs only with the permission of the information owner. Again, on E-Data's interpretation this would not be the case. Fourthly, the passage quoted in paragraph 18 above says that the IMMs are constructed to reproduce information in MOs only in response to an authorization code and hence only with the permission of the information owner (and see also the words I have emphasised in the passage quoted in paragraph 9 above). On E-Data's interpretation, however, the IMMs can be used to produce further MOs without an authorization code and hence without the permission of the owner. Fifthly, the Defendants' interpretation is supported by the numerous passages in the specification describing the use of security measures such as encryption and anti-tampering systems to prevent unauthorized reproduction of the information. More generally, the Defendants' interpretation provides a coherent explanation for the function and inter-relationship of the various features of the claims whereas E-Data's interpretation gives rise to a number of difficulties as outlined below.
- There is no dispute as to the meaning of this phrase. The specification states (at column 5 lines 23-29):
- It is common ground that the expression "information manufacturing machine" cannot be understood literally according to the acontextual meaning of the words which comprise the phrase, since the IMM does not manufacture information. Instead the meaning of the expression must be ascertained from the specification.
- E-Data contends that an IMM is merely a machine which is capable of carrying out the functions recited in claim 1 (or claim 2 or claim 6 as the case may be). Accordingly E-Data says that any general purpose computer which is loaded with software to enable it to download information from a remote source (e.g. a web browser) and which includes reproduction means such as a CD burner or printer can be an IMM.
- The Defendants agree that an IMM must be capable of carrying out the functions recited in the claim, but argue that it is does not follow that a general purpose computer can be an IMM. The Defendants contend that, to be an IMM, a machine must have the characteristics set out in the passage of the specification quoted in paragraph 18 above, that is to say, it must be constructed to reproduce information in an MO at a POSL only with the owner's permission as manifested by the authorization code.
- In my judgment the Defendants are correct. This is partly for the general reasons discussed above and partly because I consider that the passage quoted in paragraph 18 above does define the essential characteristics of an IMM for the purposes of the invention.
- The specification states (at column 6 lines 47-50):
- The Defendants contend that, on this definition, "point of sale location" bears essentially the same meaning as it does (and did in 1985) as a term of art in the retail industry (namely, according to Mr Dowler, "the actual customer-facing sale location") and as it does as a matter of ordinary English at least according to the current edition of the Shorter Oxford English Dictionary (namely "the place at which goods are retailed"). This argument is supported by a number of passages in the specification where POSL is used as a synonym for "retail outlet", for example:
- The Defendants accept that this does not mean that the POSL must be a shop, however. As noted in paragraph 9 above, the specification says that vending machines may be located at POSLs. In the case of a vending machine, including the Figure 4 embodiment of the Patent, the POSL may be located in a railway station or an office or even (in principle) someone's home. The Defendants submit, however, that a POSL is a location where MOs embodying information are sold and purchased.
- E-Data contends that any location where a consumer can purchase an MO embodying information, or even the means to make such an MO himself, is a POSL. Accordingly, E-Data says the consumer's home or office can be a POSL even if the consumer uses his own computer as an IMM and makes the MO embodying the information himself using his own blank medium.
- In support of this argument E-Data points to the passage describing pay television quoted in paragraph 9 above and in particular the words "at the consumer's home (point of sale location)". The problem with E-Data's reliance upon this passage, however, is that it is not describing a situation in which there is a sale of an MO at all. On the contrary, it says that the information is transitory and that such systems do not permit an MO to be manufactured at the POSL in response to the owner's authorization. This is despite the fact that, as would be apparent to the skilled reader, the viewer could videotape the information and thus make an MO himself without the owner's authorization. In these circumstances I conclude that this passage does not assist E-Data. Instead, I consider that the addressee would read it as (i) distinguishing between distribution of information in intangible form and distribution of information recorded in MOs and (ii) acknowledging that in the former case the customer's home is a location that is analogous to the POSL in the latter case.
- In my judgment the Defendants' construction is the correct one, for the following reasons. First, it is more consistent with the definition at column 6 lines 47-50. Secondly, it is more consistent with the rest of the specification, and in particular the passages quoted in paragraph 55 above. Thirdly, I do not consider that it is contradicted by the passage quoted in paragraph 9 above for the reasons I have just given. Fourthly, the effect of E-Data's construction is that the POSL ceases to be a limitation on the claims: any location remote from the ICM can be a POSL. If that was what the inventor intended, it would have been easy for him to draft the Patent that way and unnecessary for him to include a definition of POSL. Fifthly, on E-Data's construction the Patent comes close to being a patent for selling information. As I have said, however, the passage quoted in paragraph 9 above indicates that the inventor was distinguishing his system from systems for distributing information in intangible form.
- It is common ground that the word "code" which forms part of a number of expressions in the claims is to be understood generally rather than as requiring, say, some form of encryption. In effect, it simply means "signal".
- It is also common ground that, for there to be a request reproduction code within the meaning of the claims, there must be an unequivocal request to reproduce information in MOs which, if accepted, will lead to authorization of such reproduction. An expression of interest which the user can back out of is not a request reproduction code. Counsel for E-Data drew an analogy with the law of contract, saying there must be an offer capable of acceptance and not a mere invitation to treat. Counsel for the Defendants disputed the accuracy of the analogy, but it seems to me to be helpful provided that one bears in mind that one is concerned here with a technical rather than a legal mechanism.
- E-Data contends that in the context of claim 1 this expression refers to the information the customer wants i.e. "selected" means selected by the customer. In support of this contention, E-Data points out that the first use of the expression in claim 1 is in integer [D] and argues that in the context of integer [D] it must mean information selected by the customer. Furthermore, E-Data says that the reference to "the selected information" in integer [E] must refer back to the antecedent "selected information" in integer [D]. E-Data also argues that this construction is supported by a passage in the specification at column 6 line 62 – column 7 line 7.
- The Defendants contend that, at least in the context of integer [E], the expression refers to the information which the owner of the information has decided shall be supplied to and stored in the IMM i.e. "selected" means selected by the owner of the information. By contrast the information which the customer wants is "the information to be reproduced": see integers [F] and [G]. Thus the Defendants say that claim 1 requires the storage at the IMM of a library of submasters all or some of which the customer may choose to have reproduced onto an MO. In support of this interpretation the Defendants rely upon the following passage at column 10 lines 9-18:
- As will appear, this dispute is connected with another dispute, which is as to the sequence of steps in claim 1.
- At first blush E-Data's construction appears persuasive. On reflection, however, I do not consider it correct. This is a classic example of "meticulous verbal analysis" being misleading. While it is true that, as a matter of language, the expression "selected information" in integer [D] of claim 1 appears to be the antecedent to "the selected information" in integer [E], this does not make sense when considered from a functional point of view. If that were the case, the storage step, integer [E], would always have to be the second step in the process, after the requesting and authorizing step, integer [F]. Even E-Data does not go that far, however. As will appear, E-Data contends that the storage step may occur after the requesting and authorizing step, but it accepts that it may come first. It has to do so, since it is clear that this is the sequence of events in the preferred embodiments.
- The reason why the linguistic analysis is misleading is that integer [D] forms part of the pre-characterizing portion of the claim whereas integers [E] and [F] form part of the characterizing portion of the claim. It follows that the linguistic relationship between the integers cannot be equated with their functional relationship.
- While the passage at column 6 line 62 – column 7 line 7 is consistent with E-Data's construction, little weight can be placed on this given the points made above and given that the specification is not clear or consistent in its use of language in this respect – see, for example, the various references to "preselected information".
- The passage quoted in paragraph 63 above is more telling. This passage appears to be the basis for a distinction between claim 1 and claim 2. By contrast with claim 1, integer [D] of claim 2 requires storage of "all of the information to be reproduced". As I understand it, it is common ground that this means that the IMM must store all the information which the customer may wish to have reproduced in an MO. In my view the idea behind the distinction between claim 1 and claim 2 is that in claim 2 the IMM stores the whole of the owner's library of information (such as all the recordings of CBS Records, as discussed at column 13 lines 57-62), while in claim 1 the IMM can store a subset of that library (such as the jazz repertoire). This accords with claim 2 being directed to the vending machine embodiment. It should be said, however, that it is not easy to see what the limit of "all of the information" in claim 2 is.
- My conclusion is that claim 1 uses the expression "selected information" in two different ways. In integer [E] it refers to information selected by the owner of the information to be stored at the IMM. In integer [D] it refers to information selected by the customer to be reproduced in an MO. The latter is a subset of the former.
- It is common ground that storing in the context of the claims means storing permanently (e.g. on hard disk, floppy disk, cassette tape etc) as opposed to temporarily (e.g. in a buffer or volatile memory). Although there are a number of places where the specification distinguishes between permanent and temporary storage (e.g. column 11 line 21, column 12 lines 8, 12 and 19-20, column 17 line 9-10 and column 23 line 28), which might be thought to suggest that "storing" covers both, I agree with the parties that on a purposive interpretation what the claims require is permanent storage.
- It is common ground that the catalog code is a code which uniquely identifies the information to be reproduced i.e. a code which at any one point in time is recognised by the ICM or IMM as the case may be to refer to a particular item of information. Nevertheless, there are two disputes between the parties.
- First, the Defendants say that the catalog code can be the information itself, at least in some circumstances, whereas E-Data disputes this. In my judgment E-Data is correct. In my view it is clear from the claims that the catalog code is something different from the information itself (and compare the authorization code considered below).
- Secondly, E-Data says that it follows that the information must be pre-existing information rather than information created for the first time in response to the reproduction request. I do not understand the Defendants seriously to dispute this proposition provided it is subject to the two qualifications discussed below. In any event, in my judgment E-Data is correct. As E-Data says, the invention and claims are for reproduction of information, not production. Furthermore, this interpretation is more consistent with the Defendants' own argument on the sequence of steps (as to which, see below).
- On the other hand, I do not consider that the claims exclude a method in which the information is updated periodically e.g. where the information is a computer program which is released in improved form every three months. The specification expressly envisages additional information being supplied to and stored in the IMM after the initial information has been supplied to and stored in the IMM (see column 18 line 7 – column 19 line 22). Such additional information could be updated information. Furthermore, the specification makes express reference to updating the information in the passage quoted in paragraph 21 above (although this passage needs to be treated with care for the reasons discussed below). In such circumstances, it is sufficient if the catalog code identifies the version of the information current at the time of the reproduction request. Thus the same catalog code can be used to identify different versions of the information at different times.
- Furthermore, I consider that, provided some information is stored in the IMM and reproduced in an MO following the communication of a request reproduction code and an authorization code, the claims do not exclude the reproduction in the MO of other information, such as information communicated from the ICM in real time. In other words, the claims do not require that the MO removed at the end contain only stored information and no other information. On the contrary, I consider that the passage quoted in paragraph 21 above indicates the opposite for reasons discussed below.
- By the end of the trial it was common ground that the authorization code is something different from the information itself, although the parties have different reasons for saying so.
- It is also common ground that the authorization code is a code which authorizes reproduction of the information which the customer has requested to be reproduced in the MO. The parties have different interpretations of what this means, however. The Defendants contend that a code which merely enables reproduction to take place is not an authorization code, and that to be an authorization code the code must control reproduction. E-Data disputes this. The difference between the parties' position is that, on the Defendants' interpretation, the authorization code must limit the extent of reproduction of the information in MOs by the IMM to what the owner has authorized; whereas on E-Data's interpretation this is not necessary.
- In my judgment the Defendants' interpretation is correct, for a number of reasons. First, for the general reasons discussed above. Secondly, as the Defendants point out, a code which merely enabled reproduction to take place would be unnecessary because it would be sufficient to supply the information itself. Thirdly, the claims state that the authorization code authorizes "the reproduction of the information" by the IMM, which in my view includes the extent of the reproduction. This is particularly clear from claim 2, where integer [G][ii] involves "reproducing in a material object the information … in response to the authorization code authorizing such reproduction [emphasis added]". Fourthly, E-Data's construction is difficult to reconcile with the description of the value-based embodiment where the authorization code authorizes reproduction of information in MOs up to the relevant financial limit, but no more.
- The Defendants contend that the four[4] steps in claim 1 must be performed in the order in which they are set out in the claim i.e. [E]-[F]-[G]-[H]. The Defendants argue that this is the natural reading of the language of the claim, and supported by the description of the embodiments which fall within claim 1. The Defendants also argue that, if this were not the case, storage would be a technically redundant step.
- E-Data contends that steps [E] and [F] can be transposed in sequence, although it accepts that both [E] and [F] must be performed before [G] and that [G] must be performed before [H]. E-Data argues that this construction is consistent with the language of claim 1, saying that the language indicates that steps [G] and then [H] must be performed after steps [E] and [F] but does not compel any such conclusion with regard to the order of steps [E] and [F]. E-Data also argues that the specification does not give the skilled reader any technical reason for believing that steps [E] and [F] have to be performed in the order set out in the claim. E-Data says that the purpose of storing the information is in order to reproduce it, but no more than that.
- Before coming to a conclusion about this, it is necessary to consider the passage of the specification quoted in paragraph 21 above. Both sides rely upon this passage, in relation to this and other issues, but draw different conclusions from it. It is common ground that it describes streaming encoded information from the ICM to the IMM over the link 18 for reproduction in an MO. Thereafter the parties' interpretations diverge.
- The Defendants point out that it is stated at column 29 lines 4-5 that the IMM "would not have any encoded information stored therein". Accordingly, the Defendants say that this embodiment does not store information at all and therefore falls outside the claims. The Defendants say that this makes sense, because the passage at column 29 line 9-15 says that streaming in real time would not be economical from a time or expense viewpoint. Counsel for E-Data accepted that in some cases one may find upon analysis that an embodiment described in the specification of a patent falls outside the claims, but disputed that this is such a case.
- E-Data points out that it is stated at column 29 lines 15-17 that the encoded information may be transmitted "to update the encoded information in the [IMM]". E-Data says that this must mean that this embodiment does store information, and therefore falls within the claims. E-Data attempts to square the circle by arguing that the passage at column 29 lines 4-5 does not mean that information is never stored in the IMM, but rather that it is not stored before transmission from the ICM.
- In my view the way the skilled reader would understand this passage is as follows. It acknowledges that theoretically it would be possible to stream encoded information from the ICM to IMM over link 18 for reproduction in an MO, but says that doing so in real time would be too slow and expensive. Accordingly, it says that in the preferred embodiments all that is transmitted over link 18 in real time in response to a request reproduction code (other than the authorization code itself) are "programs", namely the encipher/decipher "programs" described earlier in the specification.
- As an exception to this, it says that transmission over link 18 could be used to update encoded information stored in the IMM. There are two ways of understanding this. The first is that it is referring to updating not in real time (i.e. when the customer wants to make an MO) but off-line (i.e. between making MOs). This would be a reference back to the method for supplying "additional information" described at column 18 line 47 – column 19 line 6. The second is that it is referring to updating in real time of the information stored in the IMM. In the latter case, the point is that most of the information is already in the IMM, and only a small quantity of updating information needs to be transmitted in real time. On balance, I prefer the second reading; but I do not think it matters greatly which is correct.
- It follows that this passage actually describes two different embodiments. The first involves streaming all the information required for reproduction in the MO from the ICM to the IMM in real time, and falls outside the claims because there is no storage of the information at the IMM. The second involves streaming just updating information from the ICM to the IMM in real time, and falls within the claims because most of the information is stored in the IMM.
- Returning to the construction issue, in my judgment the Defendants' construction is correct, for the following reasons. First, in general a process consists of a sequence of steps. Prima facie, a process in which the steps are carried out in a different order is a different process. Secondly, the language of the claim indicates that the steps are to be performed in the sequence set out. Thirdly, given that the skilled reader would (as is common ground) appreciate that integers [G] and [H] have to be performed after integers [E] and [F] and in that order, I consider that he would assume that integers [E] and [F] also have to be performed in the sequence set out in claim 1. Fourthly, there is nothing in either claim 1 or the specification to suggest that integer [E] can be carried out after integer [F]. Fifthly, if integer [E] could be carried out after integer [F], it would be technically redundant. As the passage quoted in paragraph 21 above just discussed makes clear, it is not necessary permanently to store information in the IMM in order to reproduce it in an MO because it could be streamed from the ICM to the IMM and onto the MO in real time. The reason why the information is permanently stored in the IMM is precisely in order to avoid the need for real time transmission of the information from the ICM to the IMM (with the possible exception of limited updating information). Sixthly, it seems to me to be clear that the storage step must come first in claim 2 (i.e. integer [D] must precede integer [E]), because in the vending machine embodiment of claim 2 the IMM cannot get the information from an ICM in real time. Given the close similarity in drafting, it would be strange if claim 1 were to mean something different from claim 2 in this respect.
- The Defendants supply digital copies of images from libraries accessible over the Internet via their respective websites (www.gettyimages.com and www.corbis.com). Customers who wish to reproduce these images enter into a licence agreement whereupon they can download digital copies of the images onto their computers and thereafter reproduce them as required. The way in which the Defendants characterize their businesses is that they sell licences to reproduce images rather than selling MOs.
- The process of acquiring a licence to reproduce an image and thereafter downloading the image from these websites is described and illustrated in the process descriptions served by Getty and Corbis respectively. As noted above, there is little difference between them for present purposes. Furthermore, subject to one small point, there is no dispute between the parties as to what happens. Accordingly it is sufficient to describe the processes in outline. They can be broken down into the following steps.
- First, the customer registers personal details (if he has not done so before) and signs in (although it is possible for an unregistered user to access certain functions of the websites, an unregistered user cannot acquire a licence or download an unwatermarked high resolution image).
- Secondly, the customer carries out a search for one or more images which meet his requirements. Thumbnails of the images found by the search are displayed to the user together with related information including an identifying code. E-Data says that this identifying code, which also features in subsequent stages of the Defendants' processes, is the catalog code required by the claims.
- Thirdly, the customer selects one or more images and puts them in a "shopping cart" i.e. a list of images that the customer intends to purchase a licence for. Further searches may be carried out and additional images added to the shopping cart or images may be removed from the cart.
- Fourthly, the customer enters details of the licence(s) he requires. The user is then informed of the price of the licence(s). At this point the customer may decide to change the details and recalculate the price or remove the image from the cart altogether.
- Fifthly, the customer enters payment and billing information. In most cases, this will involve the customer entering credit card details, although this is not the only payment mechanism available.
- Sixthly, details of the order are displayed to the user for him to review and he is invited to confirm the order by clicking on a button. If the button is clicked, then (assuming that the credit card provider authorizes the transaction) the order is completed and the customer's account is debited. E-Data says that the signal sent from the customer's computer to the server when the button is clicked is the request reproduction code required by the claims. It includes the identifying code which is relied upon as the catalog code. At this stage the customer still does not have the image. All that has happened is that he has entered into a contract which licenses him to reproduce and use the image.
- Seventhly, the customer is thanked for his order and invited to proceed to download the image. E-Data says that the web page sent from the server to the customer's computer at this point is or includes the authorization code. Furthermore, E-Data says that it includes the catalog code because the images are still referenced by the identifying code.
- Eighthly, if the customer proceeds to download the image, after certain intermediate steps (as to which see below) a digital copy of the image is sent from the server to his computer, where it is stored on the hard drive.
- Ninthly, the customer can then reproduce the image in MOs at his leisure e.g. by printing the image onto pieces of paper using a printer connected to his computer. The customer is only authorized to reproduce the image in accordance with the terms of the licence, but there is nothing in either of the Defendants' processes which prevents the customer from making unauthorized copies using his computer e.g. by printing more than the authorised number of copies.
- One point which is apparent from the process descriptions, but which was not clearly brought out and was not mentioned in Mr Dowler's report, is that the image may be available for download in more than one resolution. Thus Figure M on page 10 of the Getty process description shows that each of the two selected images was available for download in two different resolutions. Similarly, pages 17 and 18 of the Corbis process description suggest that the selected image was available for download in more than resolution. As each of these pages shows, the customer must choose which resolution he wants, and hence which image file to download. I find, however, that this is not always the case and that both Getty and Corbis supply some images that are only available in a single resolution. Furthermore, in such cases, the customer does not have to exercise any choice at this point in the process.
- There is one difference between the Getty and Corbis processes which has a bearing on the question of infringement. This relates to what I have described as the seventh step of the processes. In the Getty process, a single web page (shown on page 16 of the Getty process description) thanks the customer for the order, displays the images which have been licensed together with their identifying codes and invites the customer to proceed to download them. In the Corbis process, this step is spread over two web pages. The first (shown on page 17 of the Corbis process description) thanks the customer for the order and invites the customer to proceed to download. The second (shown on page 18 of the Corbis process description) displays the image which has been licensed with its identifying code and, in an appropriate case, gives the customer a choice of resolutions to download.
- The significance of the difference is with regard to the identification of the authorization code including the catalog code. In the case of the Getty process, E-Data can point to a single web page (page 16) as constituting or including an authorization code including a catalog code on its construction of the claims. As the cross-examination of Mr Kalin demonstrated, however, this is much less straightforward in the case of the Corbis process. E-Data's pleaded case is that the second of the two web pages I have described (page 18) is or includes the authorization code including the catalog code. It does not appear, however, that this page gives the customer any authorization beyond that which he has received by virtue of the previous page (page 17). It is clear that the reason why E-Data does not allege that page 17 is the authorization code is because it does not include anything which fulfils the function of the catalog code.
- There are two principal issues on infringement. The first is whether the Defendants' processes fall within claim 1 or involve apparatus falling within claim 6. The second is whether, if so, the Defendants have committed any infringing act within section 60(1) or (2) of the Patents Act 1977.
- In my judgment the Getty and Corbis processes do not fall within claim 1 as I have construed it. There are a number of reasons for this.
- The first and most important is that the Defendants' processes do not include any technical means to prevent the customer from making as many copies of a downloaded image as he likes. Thus a customer can make infringing copies of an image using the very same computer and printer as the customer has used to make authorized copies. Accordingly, the processes do not involve an IMM or an authorization code. It is true that during the course of a transaction web pages and cookies are downloaded from the Defendants' servers to the customer's computer, that the web pages include instructions written in javascript and that data is exchanged between the Defendants' servers and the customer's computer. It is also true that the result of the transaction is that the customer is authorized to reproduce the image in MOs such as pieces of paper. However, the customer's computer can reproduce the information in further MOs without the Defendants' authorization and without making a further reproduction request or receiving a further authorization code. Thus the key characteristic of an IMM and an authorization code according to the invention, namely that they only permit reproduction of the information in MOs with the owner's authorization, is absent. It is debatable whether there is a request reproduction code either, since the customer is not committed to reproduction of the information even if the request is authorized.
- Secondly, in the Defendants' processes the customer's computer is not located at a POSL. This is because there is no sale of an MO embodying information. What the customer purchases is a licence to reproduce in MOs information supplied to him in electronic form using his own equipment and his own blank media. In principle, the customer may decide not to reproduce the information in MOs at all. For example, he could use the image in the design of a web page. Thus the Defendants' processes involve the distribution of information in intangible form rather than the distribution of information embodied in MOs.
- E-Data contended that, even if the customer's computer was not located at a POSL in the ordinary case, it was located at a POSL when the customer used a computer in an internet café and purchased MOs from the internet café. In my judgment this case is not open to E-Data since it is not pleaded in the Particulars of Infringement.
- Thirdly, in the Defendants' processes storage of the information at the customer's computer occurs after the customer has requested to reproduce and been authorized to reproduce the information, not before as required by claim 1.
- Fourthly, in the Defendants' processes what is stored is not information selected by the owner of the information from which the customer may choose what to reproduce, but information selected by the customer and authorized by the owner to be reproduced.
- In cases where the image file is available for download in more than one resolution, there is an additional reason why there is no infringement, which is that the identifying code does not uniquely identify the information to be reproduced and therefore does not qualify as a catalog code.
- A final point is that, in the case of the Corbis process, even if (contrary to the view I have expressed), there is an authorization code, it does not include a catalog code for the reasons explained in paragraphs 100-101 above. This provides a further reason for non-infringement by Corbis.
- Nor do the Getty and Corbis processes involve apparatus falling within claim 6, for the first, second and fourth reasons I have given in relation to claim 1.
- It follows that it is unnecessary for me to express any view on whether, if the claims were differently construed, the Defendants would be caught by any of the provisions of section 60, and I do not consider that it would be desirable for me to do so.
- The validity of the Patent is challenged on a number of grounds. The way the Defendants put their case at the conclusion of the trial was in two ways. First, the Defendants contend that claims 1, 2 and 6 of the Patent are in any event either anticipated by or obvious in the light of United States Patent No. 4,439,631 ("Lockwood"). Secondly, the Defendants contend that, if the claims are construed as advocated by E-Data, then claims 1, 2 and 6 are also invalid for a number of other reasons, namely as being obvious in the light of each of Micronet, a system operated by a company called Telephone Software Connection, Inc. ("TSC") and Gremillet; as being insufficient; and as being excluded from patentability by section 1(2)(c) of the 1977 Act. The Defendants do not contend that the claims are invalid on these grounds if construed as they advocate. Certain other prior art was not in the end relied upon at all.
- This patent was published in November 1982. Its disclosure is conveniently summarised in the abstract:
- Five particular types of operation using his terminal are described by Lockwood, namely (i) viewing a travelog, (ii) obtaining a flight schedule, (iii) making a flight reservation, (iv) issuance of a ticket and (v) sale of goods such as maps. These operations are shown in a number of flow diagrams in Figures 9-11 of Lockwood. The Defendants contend that the flight schedule operation anticipates or renders obvious claim 2 and that the flight reservation operation (or more accurately, the combination of the flight schedule operation and the flight reservation operation) renders claims 1 and 6 obvious.
- The flight schedule operation is described in the following terms (column 7 lines 41-61):
- There is a dispute between the parties as to what this passage would teach the skilled person, which centres on the meaning of the expression "flight schedule". The Defendants say that it means a relatively invariant set of information about flights between the relevant points, albeit one that may be updated periodically, like a railway timetable. In support of this interpretation the Defendants rely upon the evidence of Mr Dowler that this is how he understood the expression based on his experience of the airline industry and in particular airline reservations systems. E-Data says that in the context of Lockwood the expression means a list of flights on which seats are available for the customer to book at the time he makes his enquiry. E-Data argues that Mr Dowler's evidence is based on his particular experience, which would not necessarily be shared by all addressees of the Patent. To this the Defendants riposte that, if in doubt as to the meaning of Lockwood, the skilled person would consult someone with relevant experience, and that Mr Dowler's experience means that he is well-placed to interpret Lockwood.
- I am not convinced that Mr Dowler's understanding of the expression is peculiar or different to that of other addressees. Thus I note that Mr Kalin when discussing Lockwood in his first report (at paragraph 45.2) referred to "a static travel schedule document such as was commonly available in the form of a pre-printed 'airline guide'". Furthermore, "schedule" is defined by the Shorter Oxford English Dictionary as "A timetable (orig. & chiefly N. Amer.): a programme or plan of events, operations, broadcasts, etc." and one of the illustrative quotations given is "He looked up the schedule of the planes flying out of Brussels to New York".
- In any event, however, I consider that what matters is not how the expression "flight schedule" is (or was in 1982) generally used in the airline industry, but what Lockwood means by it. Although Lockwood refers (at column 3 lines 19-25) to the mass storage unit containing
- The flight reservation operation is described in the following terms (at column 7 line 62 – column 8 line 6):
- Further information about the flight reservation operation, and in particular what happens if the customer first carries out the flight schedule operation and then jumps into the flight reservation operation, is provided by Figure 10. The first three boxes in the flight reservation column of the flow diagram are labelled "system displays reservn mask", "customer enters airline/flight # etc." and "customer 'fills' in blanks in bal. of mask". The penultimate entry in the flight schedule column is a diamond labelled "customer wants reservn". The yes line from this diamond is connected to the third box in the flight reservation column, the one labelled "customer 'fills' in blanks in bal. of mask". This indicates that, if the customer has already obtained a flight schedule, he can bypass part of the information entry stage for the flight reservation operation, and in particular will not need to enter the airline/flight number. As the experts agreed, it is implicit that the customer has (in some unspecified way) selected a flight from the flight schedule obtained as a result of the flight schedule operation. Thus flight information (such as the departure and destination points, flight number and departure and arrival times) will have been retrieved from the local mass storage device (ignoring for this purpose the alternative possibility of obtaining it from the remote reservation computer) as part of a schedule, displayed on the terminal, selected and then copied into the reservation mask.
- Although the passage quoted in paragraph 120 above does not refer to entering the date, it is also implicit that the information entered by means of the reservation mask will include the date of travel.
- Novelty. In order to deprive claim 2 of novelty, the Defendants must show that Lockwood contains clear and unmistakable directions to perform a process falling within claim 2: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485 line 13 – 486 line 15.
- E-Data contends that the flight schedule operation of Lockwood does not anticipate claim 2 of the Patent because it is concerned with information created in response to the customer's request using two codes rather than with reproduction of pre-existing information. Therefore E-Data says that Lockwood does not disclose a catalog code, a request reproduction code or an authorization code.
- I do not accept this argument. For the reasons given above, I consider that the flight schedule operation does involve reproducing pre-existing information, namely the flight schedule from the departure point to the destination point, stored in the local mass storage device. It is immaterial that the customer enters two codes, since the combination of the two codes uniquely identifies the information to be reproduced and thus constitutes a catalog code. It is also immaterial that the information is periodically updated from the remote computer, and accordingly what is reproduced is the current version of the information at the time of the request. It follows that Lockwood also discloses a request reproduction code and an authorization code. Like the Figure 4 embodiment of the Patent, Lockwood limits reproduction of the information by the IMM to what the owner has authorized by validating the payment transaction: as described at column 7 lines 55-58 of Lockwood, a code is generated when the correct amount of money has been deposited.
- Accordingly, in my judgment the flight schedule operation falls within claim 2 of the Patent as I have construed it and deprives it of novelty.
- Obviousness. I shall adopt the four-step structured approach to the assessment of obviousness recommended by Oliver LJ (as he then was) in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73 line 46 – 74 line 3:
- As has been pointed out by several judges, strictly speaking the inventive concept of a claim is the concept embraced by the words of the claim on their true construction. Nevertheless, it is often a useful analytical tool for assessing obviousness to seek to identify the essence of the claim, in the way that Oliver LJ identified the essence of the claim in Windsurfing as the free-sail concept, provided that one does not overlook the remainder of the claim.
- In the case of claim 1, I consider that the inventive concept is storing information in a machine located at a POSL and remotely controlling the reproduction of such information by the machine in MOs by the exchange of a request reproduction code and an authorization code.
- I have identified the person skilled in the art and his common knowledge above.
- In considering what the differences are, the relevant aspect of Lockwood is the flight reservation operation carried out after the flight schedule operation as described above. The result of this operation is that, if the reservation is confirmed, the reservation information can be printed on paper.
- It is common ground that Lockwood does not expressly disclose the details of the confirmation message and in particular whether it would include details of the reservation. The Defendants argue that this is implicit, but I do not accept this. Although Lockwood is clear that the reservation information can be printed out after confirmation, the information could be held by the terminal in volatile memory pending receipt of a confirmation message which could be a simple "yes" or "no" and printed from there.
- It is also common ground, however, that including details of the reservation, and in particular the flight number and date, in the confirmation message would be an obvious way to implement Lockwood's flight reservation operation. The Defendants contend that, if Lockwood was implemented in this obvious way, then the method would fall within claim 1 and the terminal would fall within claim 6 (compare, for example, Lubrizol Corp v Esso Petroleum Co Ltd [1998] RPC 727 at 756 line 33 – 760 line 18). The Defendants say that the information in question is the flight information which was stored in the local mass storage device, retrieved and selected by the customer and ultimately reproduced in an MO. Furthermore, they say that the signal from the terminal to the remote reservation computer qualifies as a request reproduction code and the confirmation message qualifies as an authorization code. Both include a catalog code, namely the combination of the flight number and the date, which uniquely identifies the flight information. Finally, they say that it is neither here nor there that the reservation information which is printed will include other information which was not stored in the local mass storage device because (as I have held above) the claims do not exclude the reproduction in the MO of other information.
- E-Data says that the flight reservation operation is a request to make a reservation and to print details of that reservation, and thus it is not a request to reproduce information but to produce it. Accordingly, E-Data says that there is no request reproduction code, authorization code or catalog code. Finally, E-Data says that there is no evidence that it would be obvious to transform Lockwood's flight reservation operation into a method for pure reproduction of information.
- If one looks at the totality of the information printed at the end of the reservation operation as a package, E-Data's argument appears persuasive. The flaws in the argument in my judgment are that (i) a subset of the information, namely the flight information, is reproduced from the local storage and (ii) the claims do not exclude a method in which additional information transmitted by the ICM in real time is also reproduced in the MO.
- Accordingly, I conclude that claims 1 and 6 are obvious having regard to Lockwood.
- Since I have substantially accepted the Defendants' contentions on construction, it follows from the way in which they put their case that the Defendants' other contentions on validity fall away. (I would comment, however, that I consider that some of those contentions would have considerable force if the claims were to be construed as E-Data contend.) Nevertheless, in case this litigation goes further, I should make the necessary findings of fact in respect of two further objections which are based upon allegations of prior use. The first relates to the system operated by TSC and the second relates to Micronet. In both cases, the only direct evidence about the prior uses comes from documentary sources, which to a large extent speak for themselves, but I did have the advantage of hearing the experts' opinions regarding the disclosure of the documentary sources.
- Telephone Software Connection was founded in mid 1979 as a partnership between Edgar and Marilyn Magnin. In December 1980 the business was incorporated as TSC. TSC's business consisted of selling computer software online. By November 1983 it was supplying almost 70 different programs in this way, of which about 15 were free samples. All of these programs ran on Apple computers. Users obtained the programs by downloading them from TSC's computer to their own over a dial-up modem connection. TSC advertised its system as "like having a software vending machine in your living room".
- The way in which TSC's system operated is described in various documents, and in particular an affidavit sworn by Mr Magnin in proceedings between Interactive Gift Express, Inc. and Compuserve, Inc. relating to the US equivalent of the Patent in the US District Court for the Southern District of New York. The contents of this affidavit were adduced as hearsay evidence. The operation of TSC's system is clearly illustrated by two sample sessions printed by Mr Magnin in August and September 1992, copies of which are exhibited to the affidavit as Exhibits D and E. Exhibit D shows the supply of a free sample program and Exhibit E the sale of a program.
- In Exhibit D, a new user first supplies registration details. Having done so, he is presented with a list of programs currently available for the Apple II, each of which has an identifying number. #1 is a program called "Call TSC", which is free. The user is asked "would you like a free sample program" and responds "Y". He is then asked to select a free program by number and responds "#1". He is then asked to confirm that he wishes to purchase #1 Call TSC for free with a total purchase cost for the call of $0.00 and responds "Y". The program is then sent to the user's computer over the telephone network.
- Exhibit E is very similar except that the user purchases program #21 "Desk Calender II" at a cost of $35.00 plus tax. Another difference is that in Exhibit E the TSC system asks the user to confirm that he has inserted an initialised diskette (floppy disk) in the relevant drive.
- As related above, Prestel was a bulletin board system run by British Telecom. It could be accessed either using a specially-adapted television set or a computer, in either case via a telephone line and modem. By the early 1980s thousands of pages of information could be accessed in this way. Much of this information was publicly accessible i.e. anyone with the necessary equipment could access it. Although it did not operate on the Internet, Prestel can be regarded as a forerunner of the World Wide Web.
- In March 1983 a subsystem called Micronet 800 was launched by a consortium consisting of Telemap (a division or subsidiary of EMAP Business and Computer Publications Ltd), ECC Publications Ltd and Prism Microproducts. Micronet provided a library of computer-oriented information, including both free software and software for sale (referred to as "telesoftware"), to subscribers. Micronet was a closed user group of Prestel, meaning that the pages of Prestel comprising Micronet could only be accessed by subscribers. In addition, some pages of Micronet were private, meaning that access to such pages was restricted to particular users.
- Both Micronet and Prestel generally are described in a book called The Micronet Handbook by Barbara Hickford published in November 1984 ("the Handbook"). Extracts from the Handbook were adduced as hearsay evidence. There is no other evidence as to how Micronet worked. This is of some significance, because E-Data contends that the Handbook is unclear in certain respects and that, to the extent that it is unclear, the Defendants have failed to establish how Micronet worked.
- The Handbook explains (at page 26) that to access and take best advantage of Micronet, the user needs a telephone, a modem and a microcomputer with monitor and cassette tape or disk storage loaded with suitable software. It is said that modems and software are available for a number of models of microcomputer, including the Apple II, BBC microcomputer, Commodore 64 and Sinclair ZX Spectrum. In order to subscribe, an application form needs to be sent off. In return the subscriber will receive any equipment and software ordered, a welcome package and subsequently a Customer Identity Number, Personal Password and Account Number (page 24). Subscribers must pay a basic quarterly subscription charge plus usage charges which comprise a connection charge for each minute the user is connected and charges for accessing pages (and frames, as to which see below). Micronet information pages are free, but the prices charged for programs for sale are included within the access charges (pages 25-26).
- Once the user has set up his subscription and equipment, he can log onto Micronet by dialing up and entering his Customer ID and Password (page 27). His computer will then display the Micronet welcome page (shown on page 17). Pressing the hash key will take him to the main menu giving a list of options (page 28).
- The Handbook states that the Micronet database is made up of about 35,000 pages, each one of which is assigned a unique number of up to 9 digits (page 28). The pages are hierarchically arranged in a tree structure with up to 9 levels. The top level consists of pages 1 to 99, the second level pages 10 to 99, the third level pages 100 to 999 and so on down to the ninth level of 100000000 to 999999999. Each page "owns" the pages below it in the hierarchy which start with the same number e.g. page 7 owns all pages beginning with 7 and page 77 owns all pages beginning with 77 (page 12). The number of each page forms part of each page and is displayed on screen (see the examples at pages 2, 18, 54 and 58). The Micronet pages begin with the numbers 600, 700 and 800 (page 28).
- The Handbook explains that some pages consist of a single frame or screenful of information, but others may consist of up to 26 frames (pages 12, 28 and 96). The different frames are identified by the letters a, b, c and so on. Thus if page 70021 consists of three frames, these would be denoted 70021a, 70021b and 70021c. The Handbook states, however, that with the exception of telesoftware, most Micronet pages do not extend much beyond the first frame. The Handbook is not always precise in distinguishing between pages and frames, but usually the meaning is reasonably clear.
- The Handbook describes two basic methods of navigating between pages (page 28). The first, which is the method of interest to the Defendants, is to go directly to a particular page by keying *page number# e.g. to go to page 70021 one would key *70021#. The second method is to move sequentially from page to page following a menu or index by keying a number usually in the range from 1 to 9 (see, for example, the index page shown on page 54). If a page consists of more than one frame, the user can move from frame to frame by pressing the hash key (page 54). It is not possible to go directly to a b frame or beyond (page 28).
- The Handbook states that, depending on the sophistication of the user's computer, facilities may be available for saving and holding frames, printing, downloading telesoftware, repeating a frame and revealing a frame. It also says that the commands for such facilities differ from machine to machine (page 29). As I read it, however, this does not mean that the basic navigational commands differ from machine to machine (see the table of useful commands on pages 29-30 and compare the equivalent table for Prestel on pages 54-55).
- The Handbook states that, when purchasing telesoftware, the early frames are free with the charges being made in the later frames (page 31). This, together with the fact that b and later frames cannot be accessed directly, means that users should not go directly to a priced frame by accident (pages 12 and 28).
- The Handbook includes a directory of Micronet pages (pages 31-49). This includes entries for free telesoftware (page 37) and the telesoftware supermarket (page 48). To acquire free software, the user would start by going to page 600 where he would be shown a list of available programs. In order to acquire a particular program, the user would call up the page for that program (page 15). In order to download the program, the user would press the hash key to access the continuation frames carrying the program. He would then be able to download the program. It could then be saved by the user onto hard disk or floppy disk or cassette tape and/or printed out.
- Similarly, to purchase programs for a Commodore computer, for example, the user would need to go to page 6006120 (see page 35). Again, the user would be shown a list of available programs. In order to purchase a particular program, the user would go to the page for that program e.g. to purchase the fifth program in the list the user would go to page 60061205. At least the first frame of that page would be free of charge and would no doubt contain a description of the program and perhaps other information such as licence conditions. In order to download the program, the user would again press the hash key to access the continuation frames carrying the program, for which the user would be charged.
- The principal dispute between the parties concerns the authorization mechanism. The Handbook states (at page 13):
- The Defendants say that this passage means that, if a user tries to access a particular Micronet page such as a page selling telesoftware by using the *page number# command, the system will carry out an authorization step which compares the user's credentials with the notation on the "back" to see if the page is a closed user group page and, if so, whether the user is a subscriber to that closed user group before permitting the user to access that page. E-Data says that, while there must be some form of check as to whether a particular user can access a particular page, it is not clear from this passage that the check is carried out in the way that the Defendants allege and that there are other possibilities. The experts were agreed that there were a number of ways in which the system could check whether a user was permitted to access a particular page, and in particular that there could be a check on whether the page number lay within a specified range. I conclude that the Handbook is not clear as to the exact method by which the check was carried out, and that in this respect the Defendants have not established how Micronet worked.
- E-Data also says that it is not clear whether the check is made only for each page or also for continuation frames. As to this, I consider that it is reasonably clear from the description of the system that the check is made for each page, and that a user who is authorised to access a particular page can access all frames associated with that page without a further check. As the glossary in the Handbook puts it (page 96), the page is "the logical unit of information" even though it may consist of up to 26 frames.
- I conclude that neither set of Defendants has infringed the Patent, and that the Patent is invalid. I shall hear counsel as to the orders to be made in the light of this judgment.
Mr Assistant Recorder Richard Arnold Q.C. :
The Patent
"In the past, owners of information such as the information embodied in recordings (phonograph records and tapes), video games, motion pictures, software, books, handheld calculators, handheld electronic games, greeting cards, maps, sheet music and the like, for example, typically have created such information, embodied the information in material objects and distributed the material objects to various retail outlets (point of sale locations) for ultimate sale to the consumer. This system thus required manufacturing facilities for reproducing the information in material objects and a distribution network for distributing the material objects to the various point of sale locations for sale to the consumer. The manufacturing facilities and the distribution networks represent substantial costs to the owner of the information, which expenses ultimately have resulted in increased costs to the consumer."
"Since the actual cost of manufacture has been relatively low compared with the retail selling price of the material objects (phonograph records and tapes), this large money difference has attracted unscrupulous individuals and entities to pirate recordings (reproduce without the owner's permission). A majority of the attempts to solve the piracy problems have been directed to legislative solutions. Although helpful, the legislative solutions still have not completely solved the piracy problems. If the retail price of the recordings could be reduced whilst simultaneously virtually assuring the same compensation to the information owner, this substantially would reduce the economic incentive to pirate recordings. Further, if the problems of manufacturing and distributing information could be solved, this likely would result in a lower retail price to the consumer while maintaining or increasing the compensation to the information owner."
"In summary, the problem which has not been solved by the owners of information embodied in recordings has been how to manufacture and distribute material objects embodying the information in an economical and efficient manner and in a manner which virtually assures that the owners of such information will be compensated in connection with the sale of such material objects. [emphasis added]"
"… in recent years, pay, cable or subscription television has become a popular means for distributing television type information. In some of these systems, the television type information only was delivered to the consumer at the consumer's home (point of sale location) in response to the consumer requesting such information and paying an appropriate amount to the owner of such information. The television type information distributed in this manner was transitory in nature (existing only for [a] transitory period of time at the point of sale location). These systems did not permit a material object embodying the owner's information to be produced or manufactured at the point of sale in response to the owner's authorization. [emphasis added]"
Finally, it acknowledges (at column 4 lines 40-58) the disclosure of European Patent Application No. 0 082 077, which I was informed corresponds to one of the items of prior art relied upon the Defendants in this case, namely United States Patent No. 4,499,568 ("Gremillet").
"The present invention provides a means for reproducing or manufacturing material objects at point of sale locations only with the permission of the owner of the information, thereby assuring that the owner of the information will be compensated in connection with such reproduction. The system of the present invention solves the problems associated with manufacturing, inventory, configuration[,] distribution and collection previously discussed and permits sale of material objects embodying information in a more efficient, economical and profitable manner. [emphases added]"
"In general the information control machine 12 is constructed to receive information via an input line 16, encode the received information, store the encoded information, receive request reproduction codes requesting to reproduce certain preselected information at a particular information manufacturing machine 14 via a communication link 18, provide authorization codes authorizing the reproduction of certain preselected information at a particular information manufacturing machine 14 via the communication link 18, receive file reproduce codes via an input line 19 requesting the reproduction of information stored in the information control machine 10 [clearly this should read 12], provide the information stored therein for communication to particular information manufacturing machines 14 via a communication link 20, receive file transmit code via the input line 19 requesting the reproduction of the information stored in the information control machine 12, and provide the information stored therein for communication to particular information manufacturing machines 14 via the communication link 18."
"Each information manufacturing machine 14 is constructed to receive encoded information via the communication link 18 or the communication link 20, store received encoded information, receive request reproduction codes via an input line 21, provide request reproduction codes via the communication link 20 [for the reasons given below I think this should read 18], decode preselected information in response to receiving an authorization code and provide certain preselected decoded information via an output line 22 to a reproduction unit 24 which is adapted to reproduce received information in a material object."
"In general, information is inputted into the information control machine 12, via the input line 16 and the inputted information is encoded and stored in the information control machine 12. The encoded information stored in the information control machines 12 is communicated to the information manufacturing machine 14 via the communication link 18 or the communication link 20 and the received encoded information is stored in each of the information manufacturing machines 14.
When a request is made at a point of sale location for a material object embodying certain selected information, such request is inputted into the information manufacturing machine 14 in the form of a request reproduction code via the input line 21 and, in response to such a request, the information manufacturing machine 14 provides a request reproduction code requesting to reproduce the certain selected information in a material object which is outputted over the communication link 20 [for the reasons given above I think this should read 18]. The request reproduction code is received by the information control machine 12 on the communication link 20 [again I think this should read 18] and, in response to receiving the request code, the information control machine 12, if approved, provides an authorization code on the communication link 20 [again I think this should read 18] which is received by the information manufacturing machine 14. In response to receiving the authorization code, the information machine 14 decodes the preselected information stored in the information manufacturing machine 14 and provides the decoded information on the output line 22. The reproduction unit 24 is constructed and adapted to receive the decoded information provided on the output line 22 and to reproduce the preselected information in a material object."
"Thus, the information manufacturing units 14 are constructed to reproduce preselected information in material objects only in response to receiving an authorization code and, thus, preselected information is embodied or reproduced in a material object at a point of sale location substantially only with the permission of the owner of the information, such permission being indicated by the authorization code provided by information control machine 12. [emphases added]"
"In one embodiment and in response to receiving a request reproduction code, the information control machine 12 can be programmed to encode the encoded information and communicate the encoded information over the communication link 18 for reception and reproduction by the information manufacturing machine 14 in a manner like that described before with respect to the catalog reproduce codes and the catalog transmit codes. In this manner, the information manufacturing machine 14 would not have any encoded information stored therein and could only function to reproduce information in material objects in response to receiving an authorization code which would include the encoded information. However, considering the communication link 18 to be a telephone line or an airway transmission type of link, the real time required to transmit the actual encoded information would not render this last mentioned embodiment economical from a time or expense viewpoint, except for transmitting encoded information to update the encoded information in the information manufacturing machine 14. For this reason, the preferred embodiment has been described as transmitting only programs over the communication link 18 in response to receiving request reproduction codes, which transmission time would be relatively small."
The claims
"[A] A method for reproducing information in material objects
[B] utilizing information manufacturing machines located at point of sale locations
[C] and an information control machine located remotely with respect to the information manufacturing machines,
[D] the information manufacturing machines being capable of communicating from a point of sale location a request reproduction code requesting to reproduce selected information in a material object utilizing an information manufacturing machine located at the point of sale location,
characterized by:
[E] storing the selected information in the information manufacturing machine located at the point of sale location;
[F] [i] receiving the request reproduction code including a catalog code uniquely identifying the information to be reproduced at the information control machine at a location remote with respect to the point of sale location and [ii] communicating, for receipt by an information manufacturing machine at the point of sale location, an authorization code including a catalog code uniquely identifying the information to be reproduced authorizing the reproduction of the information identified by the catalog code by the information manufacturing machine located at the point of sale location;
[G] reproducing in a material object in the information manufacturing machine at the point of sale location the information authorized to be reproduced; and
[H] removing the material object with reproduced information from the information manufacturing machine for use independently of the information manufacturing machine."
"[A] A method for reproducing information in MOs
[B] utilizing IMMs located at POSLs
[C] and an ICM located remotely with respect to the IMMs,
[D] the IMMs being capable of communicating from a POSL a request reproduction code requesting to reproduce selected information in a[n] MO utilizing an IMM located at the POSL,
characterized by:
[E] storing the selected information in the IMM located at the POSL;
[F] [i] receiving the request reproduction code including a catalog code uniquely identifying the information to be reproduced at the ICM at a location remote with respect to the POSL and [ii] communicating, for receipt by an IMM at the POSL, an authorization code including a catalog code uniquely identifying the information to be reproduced authorizing the reproduction of the information identified by the catalog code by the IMM located at the POSL;
[G] reproducing in a[n] MO in the IMM at the POSL the information authorized to be reproduced; and
[H] removing the MO with reproduced information from the IMM for use independently of the IMM."
"[A] A method for reproducing information in material objects
[B] utilizing information manufacturing machines located at point of sale locations,
[C] including the step of providing from a source remotely located with respect to the information manufacturing machine the information to be reproduced to the information manufacturing machine, each information being uniquely identified by a catalog code;
and characterized by:
[D] storing all of the information to be reproduced and the associated catalog codes at the information manufacturing machine;
[E] providing a request reproduction code including a catalog code uniquely identifying the information to be reproduced to the information manufacturing machine requesting to reproduce certain information identified by the catalog code in a material object;
[F] providing an authorization code at the information manufacturing machine authorizing the reproduction of the information identified by the catalog code included in the request reproduction code;
[G] [i] receiving the request reproduction code and the authorization code at the information manufacturing machine and [ii] reproducing in a material object the information identified by the catalog code included in the request reproduction code in response to the authorization code authorizing such reproduction; and
[H] removing the material object with reproduced information from the information manufacturing machine for use independently of the information manufacturing machine."
"[A] A method for reproducing information in MOs
[B] utilizing IMMs located at POSLs,
[C] including the step of providing from a source remotely located with respect to the IMM the information to be reproduced to the IMM, each information being uniquely identified by a catalog code;
and characterized by:
[D] storing all of the information to be reproduced and the associated catalog codes at the IMM;
[E] providing a request reproduction code including a catalog code uniquely identifying the information to be reproduced to the IMM requesting to reproduce certain information identified by the catalog code in a[n] MO;
[F] providing an authorization code at the IMM authorizing the reproduction of the information identified by the catalog code included in the request reproduction code;
[G] [i] receiving the request reproduction code and the authorization code at the IMM and [ii] reproducing in a[n] MO the information identified by the catalog code included in the request reproduction code in response to the authorization code authorizing such reproduction; and
[H] removing the MO with reproduced information from the IMM for use independently of the IMM."
"[A] An apparatus for reproducing information in material objects at point of sale locations, comprising:
[B] an information manufacturing machine located at a point of sale location for reproducing information in material objects,
[C] each information to be reproduced being uniquely identified by a catalog code, and
[D] each information being received from a source remotely located with respect to the information manufacturing machine
characterized in that
[E] each information to be reproduced is stored in the information manufacturing machine,
[F] the information manufacturing machine includes [i] means for receiving a request reproduction code including a catalog code uniquely identifying the information to be reproduced and [ii] means for providing an authorization code including the catalog code included in the request reproduction code,
[G] the information manufacturing machine including means for reproducing information identified by the catalog code in a material object in response to receiving the authorization code, and
[H] said information being so recorded in the material object that the material object can be removed from the point of sale location and the recorded information used independently of the information manufacturing machine."
"[A] An apparatus for reproducing information in MOs at POSLs, comprising:
[B] an IMM located at a POSL for reproducing information in MOs,
[C] each information to be reproduced being uniquely identified by a catalog code, and
[D] each information being received from a source remotely located with respect to the IMM
characterized in that
[E] each information to be reproduced is stored in the IMM,
[F] the IMM includes [i] means for receiving a request reproduction code including a catalog code uniquely identifying the information to be reproduced and [ii] means for providing an authorization code including the catalog code included in the request reproduction code,
[G] the IMM including means for reproducing information identified by the catalog code in a[n] MO in response to receiving the authorization code, and
[H] said information being so recorded in the MO that the MO can be removed from the POSL and the recorded information used independently of the IMM."
The addressee
The witnesses
Common general knowledge
i) The scale of the computer industry was already extremely large by 1985. Many different types of business were making use of computers. It was and had since the 1970s been clear that practically all kinds of information could usefully be stored digitally and processed by computers.
ii) Mainframe computers, minicomputers and microcomputers were all well established. Microcomputers available by 1985 included the IBM PC, Apple II and Apple Macintosh and some microcomputers included hard disk storage facilities.
iii) Some industries, such as travel agencies and retail banks, were deploying computers over a wide geographical area. For example, automated teller machines ("ATMs") were well established. These involved remote ATMs communicating with a central computer over telecommunications links. ATMs sent requests from customers to the central computer and the central computer responded by authorizing transactions.
iv) For many retail and business applications, data communication was possible over a telephone line using a modem. Line speeds readily available for use by remote terminals ranged from 75 to 600 characters per second. The communication protocol could be an established public system or a proprietary system developed by a particular supplier.
v) Many other industries had installed computer systems for a wide range of operational, accounting and administrative purposes that comprised a central computer with a database of information and a number of remote terminals connected to the computer by telecommunications links. The terminals might be intelligent terminals with processing power or "dumb" terminals without processing power. A common feature of such systems was the ability to transmit documents and other data from the central computer to the remote terminals. Another common feature was the central computer's ability to control to which remote terminals, and when, data was transmitted. For example, financial information held centrally might be made available only to specified remote terminals.
vi) IBM had several families of word processors at this time. These included single and multi-user machines, which could prepare, store and update text files and move them between local and remote machines. IBM also had software products known as Ofs and later Profs supporting multi-site document interchange for use with IBM mainframe computers.
vii) Computers were often linked together to exchange information. The Internet was not widely used at that time (and the World Wide Web had not been invented), but it did exist and was used by universities and defence agencies. In 1984 the TCP/IP transmission protocol was adopted for the Internet, which by then had 1000 host computers. By 1985 this supported the FTP file transfer protocol for transmitting files between computers.
viii) By 1985 many academic institutions had networks in place linking computers within institutions and linking computers to other organisations.
ix) Conversion of analogue data to digital form was standard practice and the benefits of having information in digital form were well understood. Data storage was relatively expensive, however. Therefore, although it was straightforward to convert sound recordings and films into digital form, in many situations it was too expensive to be commercially viable.[3]
x) In the retail market for computer software, bulletin boards were widely used. These systems were the precursors to modern downloading over the Internet. For example, a software house wishing to sell computer games would store the game programs on a computer at its office. Consumers could access that computer using their own computer and a telecommunications link, and download a chosen game. If the consumer's computer did not have a hard drive, the user could store the program on a cassette tape which would enable him to load the program from the cassette tape when he wanted to run it. Even if the consumer's computer had a hard drive, the user would commonly copy the program onto a removable floppy disk either as a back-up or to transfer the program to another computer (e.g. a friend's).
xi) One well-known bulletin board system was Prestel, run by British Telecom. Prestel provided dial-up access, using either a purpose-built terminal or a computer and modem, to a remote database of information (including software) supplied by a large number of different companies.
xii) In the USA pay television was delivered both by cable and by wireless broadcast. In such systems the transmission was in encrypted form. A subscriber would be supplied with a decryption box. If the subscriber requested access to the broadcast, and had paid to view the transmission, he would be provided with an electronic access "key" which enabled the box to decrypt the transmission.
xiii) Printers were routinely linked to computers to produce text and graphic images on paper. Mr Kalin agreed that it was commonplace to download information from a computer and then stream it directly to a printer. Video recorders were commonly linked to televisions and used to record television programmes onto videotape. Similarly cassette recorders were commonly used to record audio signals, if necessary via an amplifier, onto audiotape.
Construction
The law
"32. Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, 'the meaning of the words the author used', but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rule. It is highly sensitive to the context of, and background to, the particular utterance. It depends not only the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience…
33. In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is to both describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware. It is this insight which lies at the heart of 'purposive construction'…
34. 'Purposive construction' does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.
…
47. The Protocol … is a Protocol for the construction of art. 69 [of the European Patent Convention] and does not expressly lay down any principle for the construction of claims. It does say what principle should not be followed, namely the old English literalism, but otherwise it says only that one should not go outside the claims. It does however say that the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed, any other principle would also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on grounds of anticipation or insufficiency.
48. The Catnic principle of construction is, therefore, in my opinion precisely in accordance with the Protocol. It is intended to give the patentee the full extent, but not more than the full extent, of the monopoly which a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim…"
"(a) The first, overarching principle, is that contained in Art. 69 itself.
(b) Art. 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(c) It follows that the claims are to be construed purposively – the inventor's purpose being ascertained from the description and drawings.
(d) It further follows that the claims must not be construed as if they stood alone – the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(f) Nonetheless purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol – a mere guideline – is also ruled out by Art. 69 itself. It is the terms of the claims which delineate the patentee's territory.
(g) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(h) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(i) It further follows that there is no general 'doctrine of equivalents'.
(j) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic called (at p. 243): 'the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge'."
General observations
Material object
"The term 'material object' as used herein means a medium or device in which information can be embodied or fixed and from which the information embodied therein can be perceived, reproduced, used or otherwise communicated, either directly or with the aid of another machine or device."
A number of examples are given which make it clear that the MO can be a sheet of paper.
Information manufacturing machine
Point of sale location
"The point of sale location is a location where a consumer goes to purchase material objects embodying predetermined or preselected information."
The parties are agreed that this amounts to a definition of "point of sale location" for the purposes of the invention, but differ in their interpretation of this definition.
i) "… distributed the material objects to various retail outlets (point of sale locations) for ultimate sale to the consumer" (column 1 lines 14-16);
ii) "The material objects … were distributed to various retail outlets (point of sale locations) for sale to the consumer" (column 1 lines 35-39);
iii) "The retailers at the various point of sale locations…" (column 2 lines 23-24);
iv) "… it has not been practical for a retailer (point of sale location) to maintain all of the available recordings in inventory…" (column 3 lines 12-15);
v) "… a consumer … might not be able to locate a retail outlet (point of sale location) which carried such recording in inventory…" (column 3 lines 15-19); and
vi) "… the retail outlet, the point of sale location, has one or more information manufacturing machines…" (column 17 lines 32-34).
Request reproduction code
Selected information
"As described before, the information file unit 28 [in the ICM] is adapted to communicate all of the information stored therein [to the IMM] in response to receiving a file reproduce command or a file transmit command [via link 20 in the case of a file reproduce command or via link 18 in the case of a file transmit command]. It will be apparent to those skilled in the art that the information file unit 28 could also be adapted to communicate only selected information stored therein [to the IMM] in response to receiving a file reproduce command or a file transmit command if desired in a particular application. [emphases and interpolations added]"
Storing
Catalog code
Authorization code
Sequence of steps in claim 1
Infringement
The Defendants' processes
A difference between the processes
The issues
Claim 1
Claim 6
Section 60
Validity
Lockwood
"A self service terminal for dispensing voice and video information, printed documents, and goods; and for accepting service orders and payments therefor by currency or credit card. The terminal comprises a cathode ray tube display with mass storage for presenting information about the product or service sold, a keyboard for entry of customer requests, a printer for delivering coupons and tickets, a vending machine for dispensing small items, a coinbox and credit card reader for accepting payments for goods and services, and a telephone interface for communicating with the staff of a command centre. The operation of the terminal is controlled by a microprocessor linked to an automated reservation system. The preferred embodiment of the invention is dedicated to the promotion and sale of travel services. The terminal is operated from three memory devices. A non-volatile memory is used to store the operating program for the terminal. A semi-permanent storage in the form of a video disc is used to hold the travel documentaries and other sales presentations. A randomly accessible mass storage is used to record flight schedules, hotel occupancy and other variables which are periodically updated from the command centre via a phone line data communication link. The vending machine is used primarily for dispensing travel brochures, maps, foreign currencies and other goods related to the contemplated travel."
"The flight schedule program begins by the display on the CRT of a schedule mask through which the customer is invited to fill in the form [this must mean 'from'] and to locations of the flights. When the customer enters the departure point and the destination on the keyboard, two codes are generated which are used to seek the appropriate information in the mass storage or, alternately, are sent via the audio communications system to a remote reservation computer. When the list of available flights has been gathered from the mass storage or received back from the remote computer center, it is displayed on the CRT with an inquiry as to whether the customer wants a hard copy of the schedule. The amount of change to be deposited in order to obtain the hard copy is also displayed. When the proper amount of change is detected in the coinbox, the central processor generates a code which is recognised by the printer as a signal to print the raster scan image being generated on the CRT. At the end of the printing sequence the customer is offered the choice to jump immediately into the flight reservation mode or to return to the basic menu display."
"information of a more transitory nature such as flight schedules to various destinations, ticket prices, weather information, snow conditions at various skiing resorts, hotel occupancy status and other information … [that] is periodically updated via communication link 24 with a remote control center"
which might indicate frequent updating, I consider that, read as a whole, Lockwood is talking about something like a railway timetable which is updated periodically (say twice or four times a year) but not frequently. In my view this interpretation is supported by the following: (a) the references in Lockwood to schedules being consulted in the same way as brochures (column 1 lines 12-18); (b) the fact that both the passage quoted in paragraph 116 above and Figure 9 indicate that the customer only needs to enter the departure and destination points (and not, for example, the date of travel); and (c) the fact that the information may be obtained either from the local mass storage or from the remote computer (whereas the flight reservation can only be made via the remote computer), which indicates that the request for a flight schedule is not a request for available seats.
"The reservation sequence begins with the display of a mask from the CRT requesting such information as the flight number, number of passengers, and other information such as smoking or non-smoking section preferences. After the mask has been completed by the customer entering his selection, the central processor generates a request message which is sent via the audio communication system to the remote reservation computer. After receiving the confirmation message, the system again offers the customer the option to obtain a hard copy of the reservation information, after which the system offers the option to go directly into a ticket purchase mode, or a return to the basic menu display."
"The first [step] is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being 'known or used' and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention."
Other objections
TSC
Micronet
"Each viewdata page has a portion which is not visible to the ordinary user; in a sense it has a 'back' which cannot be seen. This is the area where the person editing that page stores details about its contents, and also the routeing information. For example, if the page can only be accessed by a member of a closed user group, that fact would need to be noted on the 'back', as would the price of the frame and whether it is a response frame or an information frame."
(A response frame is a frame which enables the user to send information to the information provider – see page 19.)
Conclusions
Annex
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Note 1 One of the curiosities of the Patent are the references to what by March 1985 were already out-dated formats such as 8-track and reel-to-reel tapes. By that date the CD format was well established and starting to gain mass acceptance. [Back] Note 2 For consistency I shall follow the Patent in adopting American spellings of words such as “authorization” and “catalog”. [Back] Note 3 Although the Patent acknowledges (at column 5 line 43) the existence of video discs, which were a read-only digital medium for audiovisual recordings. In addition, as noted above the CD format was well established as a read-only digital medium for sound recordings. [Back] Note 4 I say “four” because that is how the claim is set out, but as can be seen from paragraph 24 above the second step can be broken down into two stages. [Back]