Posted: January 10th, 2014
Motorola Mobility LLC and another v. Microsoft, Court of Appeal (Civil Division), London  EWCA Civ 1613 The Chancellor of the High Court, Sir Terence Etherton; Kitchin LJ and Jackson LJ
In a judgment handed down on 11 December 2013, the English Court of Appeal has dismissed Motorola’s appeal from the Order of Mr Justice Arnold revoking Motorola’s European Patent (UK) No. 0 847 654 (“the Patent”) and dismissing Motorola’s claim for infringement of the Patent. The Patent concerned the synchronisation of message information across multiple mobile devices.
The appeal turned solely on the issue of the proper interpretation of claim 1 of the Patent, which the Judge had found invalid for obviousness over the common general knowledge of paging and/or certain pleaded prior art. The main dispute on interpretation concerned the meaning of the term “responsive to” in relation to the workings of a wireless messaging infrastructure in transmitting a message to a second device in order to synchronise it with a first device.
In particular, the issue concerned whether the term required the infrastructure to initiate the sending of the message to the second device, i.e. synchronisation only by a “push” system, as contended by Motorola; or whether it also covered methods in which the second device requests updates from the infrastructure, i.e. synchronisation also by “polling”, as contended by Microsoft and accepted by the Judge at first instance.
Similarly to Arnold J at first instance, the Court of Appeal saw compelling reasons for holding that the claim did not exclude the possibility of poll commands, and consequently rejected Motorola’s interpretation. Motorola attempted to run a further argument on interpretation should it fail on its main argument (above). This alternative argument – which was that claim 1 should be confined to non-manual commands from the second device – was apparently advanced in order to challenge the first instance Judge’s finding that claim 1 was obvious over two particular items of prior art.
However, the Court of Appeal refused to consider the new argument on the basis that it had not been advanced before the Judge at first instance; it had not been raised by Motorola in its Grounds of Appeal; and, in any event, because “it would be quite wrong to permit Motorola to advance the linked and consequential attack on the Judge’s findings of obviousness”, where the attack depended on certain factual and expert evidence and, while there had been some such evidence before the Judge, it was given in the absence of the alternative argument that Motorola was seeking to advance at the appeal hearing.
Read the entire decision here.
Head note: Sara de Sousa