16 December 2013Patents

Motorola patent case dismissed on appeal

The England & Wales Court of Appeal has upheld a ruling that a Motorola Mobility patent is invalid and was not infringed by Microsoft.

European Patent (UK) 0,847,654 covers the synchronisation of multiple mobile devices.

Mr Justice Arnold ruled in January that the patent is invalid on the grounds of obviousness and a lack of novelty.

But if the patent were valid, Arnold said, it would be infringed by a Microsoft system that synchronises emails and other messages, though he added that some infringements would be defended by a licensing agreement with Google.

Google acquired Motorola for $12.5 billion in 2011, acquiring about 17,000 patents.

Motorola’s appeal was limited to the patent’s first claim, which, Arnold said, had a wider reach than the company intended.

The Court of Appeal, in its ruling on December 11, said Motorola could succeed on appeal only if the scope of claim one is “more limited than the judge decided”.

“That is essential if Motorola is to be able to challenge the judge's conclusions on the invalidity of the patent for obviousness,” the Chancellor of the High Court, Sir Terence Etherton, said.

Claim one is described as: “A method of communicating changes in a status of message information in a pager comprising the steps of: wirelessly receiving a first message from a base station, the first message having first information for a user of the pager and having a status associated therewith; changing the status of the first information responsive to an input to the pager; and wirelessly transmitting a second message having second information indicative of the status of the first information to the base station responsive to the step of changing.”

On appeal, the words in claim one that Motorola was mainly relying on, said Etherton, were "responsive to receiving the second message".

But the judge said there was a “clear and compelling” case for rejecting Motorola's principal argument that claim one is “limited to push technology and excludes commands for updates by polling”.

This is the third time that the patent has been held invalid, following Arnold’s ruling and a decision from the Federal Patent Court of Germany (Bundespatentgericht), in November.

The German ruling came after Motorola asserted the patent against Microsoft and Apple in Germany. As a result, Apple was forced to switch off its push email notification services for 19 months, ending in October this year.

Etherton said that “bearing in mind the respect which is due to decisions of the German courts on issues of patent validity and infringement, it would have been of considerable value to know the detailed reasoning of the German Federal Patent Court in reaching its decision”.

The Court of Appeal ruling is available here.

Neither Bird & Bird LLP, which represented Microsoft, nor Powell Gilbert LLP, Motorola’s counsel, responded to a request for comment.

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