Thursday, December 12, 2013

UK appeals court affirms invalidation of Google's (Motorola Mobility's) synchronization patent

Yesterday, almost exactly a year after the England and Wales High Court declared Google's (Motorola Mobility's) infamous synchronization patent invalid (report on decision, full text), the England and Wales Court of Appeal threw out Google's appeal.

Google's Motorola had enforced that patent (EP0847654 on a "multiple pager synchronization system and method") against Apple in Germany for 19 months. It also sued Microsoft over it, which defended itself successfully in Germany and brought this declaratory judgment case in the UK in order to prove its invalidity and license-based defenses, which findings Microsoft leveraged in the German proceedings (and which also helped Apple in its own dispute with the Google subsidiary).

About a month ago, the Bundespatentgericht (BPatG, Federal Patent Court of Germany) declared this patent invalid in its granted form and confirmed only a substantially-narrowed, amended version. Google can and presumably will appeal that decision to the Bundesgerichtshof (BGH, Federal Court of Justice), but this is a long shot to say the least. It's more likely that the Federal Court of Justice will also throw out the narrowed-down version than that it reverses the finding of invalidity of the granted claims.

All in all, three courts (in chronological order: England and Wales High Court, Federal Patent Court of Germany, England Wales Court of Appeal) have now held this patent invalid. Two other courts (the Karlsruhe Higher Regional Court and the Mannheim Regional Court) stayed proceedings because they doubted the validity of this patent. The next court to look at this will presumably the United States District for the Southern District of Florida at next year's Motorola v. Apple trial. For now, Google's Motorola is still asserting the U.S. equivalent of that patent in the Miami proceedings, though I believe it should withdraw it well ahead of trial.

Technically, a UK decision isn't binding on a German court or vice versa, even if it relates to the same patent granted by the European Patent Office. And European decisions obviously don't bind U.S. courts (and vice versa). Still, when a patent is held invalid again and again and again, it becomes incredibly hard to find a judge who would deem it valid.

The UK appeal was resolved rather quickly and easily because even Google's counsel conceded that its appeal was bound to fail in the absence of a reversal of the High Court's claim construction. The High Court interpreted claim 1 as covering push as well as pull (or "poll") synchronization. Motorola asserted the patent only against push notifications by Apple's iCloud email service and various Microsoft products and services (Outlook, Hotmail, Xbox Live etc.), but for purposes of determining the validity of the patent, it must be interpreted as broadly as the claims allow, regardless of what Motorola does in the infringement proceedings. Also, the Federal Patent Court of Germany threw out not only the patent in its granted form but also a long list of amendments that sought to narrow its scope to push synchronizations (the amendments that the court deemed valid involved further limitations).

The UK appellate opinion mentions the mid-November decision by the Federal Patent Court of Germany (and the parties' related disagreement), but the UK judgment itself does not refer to the German ruling after concluding that in the absence of a detailed written reasoning by the German court, it was not "safe for either side or this Court to rely on the German proceedings as to the correct outcome of this appeal". According to the UK ruling, Microsoft told the court that the Federal Patent Court of Germany adopted the push-and-poll type claim construction at the mid-November hearing, but its counsel "accepted that it was not possible, in the absence of a written statement as to the court's reasoning, to state definitively that, in reaching its decision, the court must have rejected Motorola's interpretation of claim 1". Actually, since I attended the mid-November nullity trial in Germany, I can confirm that the court indeed rejected Motorola's proposed, narrower interpretation. This claim construction question was discussed in the morning. Then there was a lunch break, and when everyone returned to the courtroom after lunch, the court said that it was not inclined to adopt Motorola's proposed claim construction, which is why the attention turned immediately to Motorola's proposed amendments to the patent. Anyway, the fact that the UK appeals court arrived at its claim construction without definitive certainty about the German finding makes the combination of those two rulings (and other rulings) even more useful as persuasive authority in future proceedings (in Florida and before the Federal Court of Justice of Germany).

The UK appellate opinion did not evaluate Microsoft's license defense. It presumably considered this question moot after holding the patent invalid. The opinion does mention that Motorola was also appealing from the license-related part of the High Court ruling.

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