Google loses ActiveSync patent case in London

On December 23, 2011 Microsoft sued Motorola Mobility in the High Court in London in an action (reference HC11C04536) that eventually came before Mr Justice Arnold on December 3, 2012. I first heard about the case in May when I was contacted by Bird & Bird, a firm of London solicitors who specialize in Intellectual Property law, and asked to come over for a “chat about email”. Such an invitation was just too good to turn down, so I traveled over to London and found myself in a conference room being questioned about the history of email and my background in the subject.

Because lawyers are usually careful about revealing what they are doing and because information has to be revealed in a certain order to people who might be witnesses in a patent case, I didn’t learn what they were really concerned about for quite some time. Over the coming months the layers of the onion were gradually peeled away as we discussed issues such as the nature of email in the 1980s and 1990s, PCMAIL, and IMAP4. Of course, IMAP4 was an old friend that was well-known to me, but PCMAIL was a blast from the past. It’s referenced in the IMAP4 RFC but never saw the light of day outside MIT. Instead, PCMAIL is a description of some early work to understand the challenges of email systems that had to support multiple different clients that connect to a server.

Motorola’s case was that three Microsoft products (ActiveSync or “EAS”), Lync Server 2010, and Live Messenger infringed a patent EP 0847654 granted on 31 August 1995 that describes the process of synchronization of messages and status values between multiple pagers. Although pagers use completely different technology to email or instant messaging servers, Motorola alleged that the synchronization mechanisms used by EAS, Lync, and Messenger used the same basic method as described in their patent. For EAS, the issue was all around how email is synchronized between Exchange and mobile devices; for Lync and Messenger, it was how presence status (like “Busy” or “Do Not Disturb”) was synchronized between multiple clients connected to a single account.  Applying pager technology to modern email and instant messaging products proves that old patents can come back to life with a vengeance.

My role was to assist the court as an expert witness. Although engaged by Microsoft for this purpose, English law makes it quite explicit that an expert witness cannot be an advocate for a cause and must instead do everything possible to help the court understand the issues involved in a case. In this matter, my focus was to assess email technology that existed at the priority date (when the patent was granted) to understand whether the invention claimed in the patent existed beforehand and also whether the infringements as claimed were valid. Each side engages experts, all of whom submit reports covering topics such as “common general knowledge” (what people knew at the time) and the “skilled person” (an engineer or other working in a field) and how they would have understood the patent. These reports form evidence that is given to the judge. The experts are then cross-examined on their evidence in court, which is where the fun really starts as the debating skills of top-notch English barristers are second to none.

Google took over the case following their acquisition of Motorola Mobility on 22 May 2012. By that point the case was well advanced and it’s hard to know what advantage Google sought in pursuing it. After all, Google technical staff know a lot about ActiveSync because Google has licensed the technology from Microsoft (a point debated during trial) and as such, were probably aware of more of its internal workings than Motorola Mobility would have been (however, this did not come out during the hearing as Google’s evidence of how EAS works was very different to the way that EAS actually does). Of course, if Google won, they might have been able to get an injunction against Microsoft that prevented Microsoft distributing EAS or making it available to customers in the U.K., or perhaps forced Microsoft to pay a hefty license fee to be able to use the patent. And after winning in the U.K., they could have brought actions in other countries to achieve similar results. If you think about the number of EAS clients in use worldwide, the end result could have been very expensive for Microsoft.

From the start, my view was that the patent claims were untenable in the light of the work done in email before 1995. Synchronization was a well-known challenge as were the issues involved around working with multiple clients accessing a single mailbox. It might have been an invention to the pager community as they developed from a point where one-way pagers were the norm to dealing with two-way communications, but the invention was well known and understood in the email world. I always thought that Google was barking up a tree with no prospect of getting anywhere except having to deal with a multi-million pound legal bill. And that’s exactly what happened when Mr. Justice Arnold handed down his formal judgement this morning. All in all, the result was a slam-dunk win for Microsoft.

I really enjoyed working on this case. The legal team marshaled by Bird & Bird were easy to work with, I had a chance to debate points with some pretty sharp minds that teased out the issues to precise details, and everything revolved around the world as it was in 1995, so I could focus again on email that wasn’t so connected (the Internet was still evolving), when messages were smaller (maybe 2KB-4KB on average), and we didn’t have the volume of email to deal with that we have today. Sheer bliss!

Winning the case marks a successful end to 2012. I sure hope that next year is as good.

Follow Tony @12Knocksinna