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

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Motorola Sue Microsoft but invention is obvious

Motorola sued Microsoft before the High Court for infringement of European Patent (UK) No 0847654 which related to synchronization of messages between multiple two-way pagers or other transceivers.

Motorola was largely sunk by one of its own prior art patents for an electronic wallet that aimed to facilitate financial transactions by removing the need for a user to carry multiple financial cards, a cheque book and cash, for example where a husband and wife concurrently use multiple financial cards for the same account.  The claims called for changing the status of a transceiver as a result of receiving a user input, transmitting a message indicative of the new status and receiving a second message at a second receiver and changing its status in response to the message.

The Court held that entering a requested increase in an account limit from, say, £1000 to £2000 was the same as changing the status of the wallet from a first status to a second status and sending the approved request with the increased limit to a second wallet was the same as changing that wallet’s status.

The only difference, if any, lay in whether there was a difference between synchronizing transceiver statuses and synchronizing message statuses, but Motorola’s own witness conceded that there was no significant difference on this point.

Also detrimental to Motorola’s case was that it was known in the prior art to send a message to a group of doctors requesting that one of them attends an emergency.  When one doctor receives and acknowledges a message, a further message is sent to the other doctors that they no longer need to attend.  Further relevant prior art lay in the field of PCMail.

Nevertheless, Motorola appealed.  The point of appeal upon which Motorola sought to turn the debate lay in the words “responsive to” in the claim.  Motorola argued that these words were limited to sending the message to the second transceiver solely as a result of receipt of the message from the first transceiver.  Motorola sought to distinguish over the various prior art systems in which the sending of the message to the second transceiver was dependent on other things going on at the second transceiver or in the network, for example by the second transceiver requesting periodic updates. 

In parallel proceedings in Germany (between Motorola and Microsoft and Motorola and Apple) the Mannheim regional Court had held that Apple had infringed claim 1 of the German counterpart of the patent.  Each side argued that the Mannheim Court’s interpretation of “responsive to” was consistent with its position before the High Court.  Mr Justice Arnold at first instance found the Mannheim Court’s interpretation to be more consistent with Microsoft’s broad interpretation and hence found the patent invalid.  The Court of Appeal agreed.


One might ask whether Motorola had not done enough homework to identify the state of the art before beginning proceedings, given that its claims were not new vis-à-vis its own earlier patent, but Motorola is a very diverse company with many different divisions.  Complete knowledge of the relevance of its patents to each other is impractical.  It is no more practical to search within its own portfolio than across the prior art at large.  Nevertheless, failure to distinguish over the commonly-known doctors’ scenario was indicative of a weak starting point.

Motorola were doubtless emboldened by their success before the Mannheim Court.  In Germany, the regional courts do not consider validity.  They consider only infringement, and leave validity to be considered by the Court in Munich.  This case is surely one to cite against that bifurcated system.  Had the Mannheim Court been free to consider validity, perhaps it would have had cause to analyze the words “responsive to” more rigorously, and perhaps it would have come to a different decision against Apple, in which case litigation in the UK High Court might have been avoided.

Whether and to what extent to bifurcate proceedings is a hotly debated topic for the Unitary Patent Court.  There are keen proponents of each system.  Article 33(3) of the UPC Agreement gives the local or regional division of the Court discretion to:

  • proceed with an infringement action and a counterclaim for revocation; or

  • bifurcate the issues and refer the counterclaim for revocation to the central division (in London, Paris or Munich depending on the technology); or

  • with the agreement of the parties, refer the entire case to the central division.

If there is a local division in Mannhein, as expected, that division may seek to continue the rocket-docket reputation of the present Mannheim Court and may favour bifurcation with a view to speedy resolution of the infringement action, even at the expense of an increased rate of reversal upon conclusion of the counterclaim.  This is likely to be more popular with patentees and may drive forum shoppers to such a venue.  On the other hand, regional divisions may relish the additional responsibility of being able to try the entire action.  The general expectation is that whether to try the issues together or bifurcate them is a matter of good case management to be considered case-by-case.