Re Protecting Kids the World Over (PKTWO) Ltd

JurisdictionEngland & Wales
JudgeTHE HON MR JUSTICE FLOYD,Mr Justice Floyd
Judgment Date26 October 2011
Neutral Citation[2011] EWHC 2720 (Pat)
Docket NumberCase No: CH/2011/0033
CourtChancery Division (Patents Court)
Date26 October 2011

[2011] EWHC 2720 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

ON APPEAL FROM THE UK INTELLECTUAL PROPERTY OFFICE

Royal Courts of Justice

Rolls Building, London, EC4A 1NL

Before:

The Hon Mr Justice Floyd

Case No: CH/2011/0033

In The Matter Of The Patents Act 1977

and

In The Matter of Uk Patent Application No. Gb 0723964.3 In The Name Of Protecting Kids The World Over (pktwo) Limited
and
In The Matter Of An Appeal From The Decision Of The Comptroller General Of Patents Dated 23rd December 2010

Mr Keith Beresford (of Beresford & Co.) for the Appellant

Ms Charlotte May (instructed by Treasury Solicitor) for the Respondent

Hearing date: 13 th October 2011

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

THE HON MR JUSTICE FLOYD Mr Justice Floyd
1

This is an appeal from a decision of the Hearing Officer (acting for the Comptroller General of Patents), Mr B. Micklewright, by which he rejected UK Patent Application No. GB 0723964.3 in the name of Protecting Kids The World Over (PKTWO) Limited. The appeal raises what are now familiar questions relating to the patentability of computer programs as such. Mr Keith Beresford argued the case for the Appellant; Ms Charlotte May argued the case for the Comptroller.

2

The hearing before the Hearing Officer, and that before me, focussed on claim 33 of the patent application. By his decision the Hearing Officer held that claim 33 was excluded from patentability because it related to a computer program and to a method of performing a mental act as such.

3

Before the hearing of the appeal the Comptroller informed the Appellant that he no longer relied on the mental act exclusion. This decision was prompted by the publication of the judgment of HHJ Birss QC sitting as a Deputy High Court Judge in Halliburton Energy Services' Inc's Application [2011] EWHC 2508 (Pat). In that judgment he approved what is sometimes referred as the narrow interpretation of that exclusion. The appeal therefore concerns only the computer program exception. Ms May on behalf of the Comptroller contended that the actual decision of the Hearing Officer to reject the application could be supported by relying only on that exclusion.

4

The application relates to a system for monitoring the content of electronic communications to ensure that users (e.g. children) are not exposed to inappropriate content or language. As claimed in claim 33, the invention comprises a data communications analysis engine which samples (or in jargon "packet sniffs") data packets from a communications channel for further analysis of their content. The data packets are then monitored using a sequence of "hash tables" which assign a score to the data packet depending on the expressions found in the data packets. An aggregate alert level is assigned to the packet. The aggregate alert level is passed to a security warning algorithm which generates an alert notification to users. There is then a "request and response engine" for sending a notification to an administrator/user such as a parent and for receiving a response from the administrator/user comprising one of several actions to be taken by the computer. The actions to be taken by the computer include one of (a) alerting a user, (b) terminating the electronic communication on the channel or (c) shutting down the equipment. What is envisaged is that the computer will send the alert notification, in effect an alarm, to a parent by email or SMS message. The parent will be able to send a remote response command of one of the specified types and the computer will respond accordingly.

5

The Appellant contends that claim 33 is both novel and inventive. The process which carries out the monitoring of the electronic communication does so more rapidly and reliably than the prior art. In a letter dated 14 May 2010, the Examiner reported that he was persuaded that the claims were novel and inventive over the cited prior art. He also accepted that the hash table approach might produce a reduction in analysis time, whilst not accepting that the approach meant that the computer functioned better generally. Although the Comptroller is not of course bound by those observations, I must accept for present purposes that the Appellant has a serious case that the contribution of the claim results in a more rapid and reliable processing of the expressions.

6

Mr Beresford for the Appellant argues, and I also accept for present purposes, that if the processing of the expressions is more rapid and reliable, then the relevant alarm notifications are sent out more rapidly and more reliably as well.

7

The Appellant asks that the appeal be allowed with claim 33 as it stands. In the alternative, it asks that claim 33 be allowed but with an amendment that the request and response engine be operable to shut down the user equipment if no response is received within a predetermined time. Other amendments are put forward to earlier claims—not contended to be allowable as they stand–namely (claims 1, 5 and 20). Each of these claims is proposed to be limited by a further feature

"means for automatically transmitting to a remote terminal, via a telecommunications network, an alert message in response to said aggregate alert levels reaching or exceeding a threshold"

The Law

8

The relevant legislation, though translated into section 1(2) of the Patents Act 1977, can conveniently be taken from Article 52 of the European Patent Convention, on which it is based, and which reads:

"(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."

9

There is no shortage of authority, both at first instance and in the Court of Appeal (not to mention from the Boards of Appeal of the European Patent Office) on the patentability of computer implemented inventions. For present purposes I need refer only to five of the decided cases. These are Aerotel v Telco/Macrossan's Patent Application [2007] RPC 7; [2007] EWCA Civ 1371; Symbian v Comptroller-General [2009] RPC 1; [2008] EWCA Civ 1066; ATT&T Knowledge Ventures [2009] [EWHC] 343 Pat; Halliburton Energy Services' Inc's Application [2011] EWHC 2508 (Pat); and Gemstar-TV Guide International inc v Virgin Media Ltd [2010] RPC 10; [2009] EWHC 3068 (Ch).

10

In Aerotel the Court of Appeal set out a four step approach to deciding cases where the exclusions from patentability were engaged:

"(1) properly construe the claim

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter;

(4) check whether the actual or alleged contribution is actually technical in nature".

11

At [43] in Aerotel, Jacob LJ cites with apparent approval a submission made by counsel for the Comptroller as to how one identified the actual or alleged contribution for the purposes of steps (2), (3) and (4):

"…it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form–which is surely what the legislator intended."

12

In Symbian the Court of Appeal commended, at [48] onwards, the guidance given in a number of prior English and EPO authorities on the meaning of the term "technical" for the purposes of applying the computer program exclusion. However the Court of Appeal declined to formulate any "bright line" test for what did and for what did not amount to a technical contribution in this field. Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned.

13

In >ATT&T Knowledge Ventures [2009] EWHC] 343 Pat, Lewison J (as he then was) helpfully analysed the guidance to be obtained from the authorities on the Court of Appeal's recommended reading list. He agreed with the Court of Appeal that it was impossible to define the meaning of "technical" in this context but considered that there were a number of signposts to what amounted to a relevant technical effect. These he set out at [40]:

"i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented."

14

All these difficulties arise because, as a matter of ordinary language, the programming of a computer is a technical exercise, and the consequence of so programming it can, again in ordinary language, be regarded as achieving a technical effect. It is therefore the case that in applying the exclusion one is seeking...

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