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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Product Claim Has Longer Arm Than Method Claim

Readers may recall our report on Menashe v William Hill, in which a patent for an on-line casino game product was infringed in the UK even though the server was located in the West Indies. Not so for Motorola's method of operating a messaging gateway system.

Research in Motion (RIM) is the Canadian company behind the well-known "Blackberry" wireless hand held devices. Motorola sued RIM under four patents, and RIM countersued Motorola for infringement of one of its patents. Of interest here is one of Motorola's patents that claimed a method of operating a messaging gateway system including:

  • receiving commands from a wireless device,
  • translating the commands into a protocol understood by a remote messaging system, and
  • transmitting the translated commands to the remote messaging system so that the user of the device can control the operation of the messaging system.

Many users of Blackberry devices have a corporate mail server, but for those who do not, RIM offer a service that periodically polls for new email from the user's private email server (such as Yahoo or Google Mail). This service operates from a server maintained by RIM. That server is located in Canada. This presented a difficulty for Motorola in establishing infringement of RIM's patent in the UK.  

In the earlier case of Menashe v William Hill, the patent claimed

  • a gaming system for playing an interactive casino game comprising:
  • a host computer and a terminal computer forming a player station.

The claimants were able to establish that there was contributory infringement under Section 60 (2) of the Patents Act notwithstanding that the host computer was located in The Netherlands Antilles. In that case the Court asked the question "who uses the gaming system?" to which the answer must be the on-line punter sitting at his computer terminal. The Court asked "where does he use it?" to which the plain answer was that he uses his terminal in the UK. It was thus concluded that he uses the host computer in the UK, even though the host computer is located abroad. 

Applying the Menashe questions to the present case gives a different result. In asking "who uses the method of operating the messaging gateway system?" the answer was RIM. Asking the question "where do they operate it?" the answer was in Canada. The patent was not infringed. 

Comment

As ever, it is the claims that are critical. In the telecoms field, one always seeks to break down the elements of the system and identify which elements are used at the handset and the infrastructure, or which elements are used at the application layer and the physical layer etc. It is not always possible to construct a claim to novel and inventive features in each part of the system, even if there is a novel and inventive interaction between them. 

In this case there is no suggestion that the Blackberry handset operates in any way specific to the invention. Might it have been possible to construct a claim to a system which is used at the subscriber device (as in the interactive casino game system)? Perhaps. The claims specified that the user of the subscriber device can control the operation of the remote messaging system utilising commands transmitted to the remote messaging system. Perhaps a system claim, or even a different method claim (to a system of controlling the remote messaging system) might have been viewed differently.