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High Court Judgment Highlights the Importance (or not) of the Location of Physical Servers when Considering Infringement

11 August 2021

The High Court has handed down a judgment in the case of Promptu Systems Corporation v Sky UK Limited et al. The case related to the alleged infringement by Sky’s Sky Q subscription television service of a European (UK) patent owned by Promptu. A number of issues were considered relating to infringement and validity, with the court eventually finding that although the operation of the Sky Q system would have infringed, the patent was invalid for obviousness and therefore should be revoked.

However, the court considered an interesting point regarding the territoriality of the alleged infringement. The Sky Q system includes components that allow a user to use voice commands to access content. To facilitate this, the system included a voice platform which was hosted on Amazon Web Servers (AWS) in the UK, a speech recognition function provided by Google which may or may not take place in the UK (Sky would not be aware of the location of any particular use of the system) and a Sky Search content engine containing searchable metadata for the content available to the user. This was also hosted by AWS, but in Ireland.

Each of these steps was relevant to infringement of the patent claim and it is therefore arguable that infringement is not occurring due to some of the relevant acts taking place outside the UK. This kind of situation has been considered in a number of previous cases such as: Menashe v. William Hill [2002]; EWCA 1702 RIM v. Motorola [2010] EWHC 188 (Pat); and Illumina Inc v Premaitha Health Plc [2017] EWHC 2930 (Pat). The principles set out in these judgments are that it should be identified by whom and where in substance the method is being used - it may not matter where the processing power that performs the act is located. The Judge found that the overall method took place at the server end, remote from the user. Although some parts of the method took place even more remotely, the judge considered that the “content engine access and speech recognition are subordinate and in the Sky Q system are essentially sub-contracted”. In the case of the speech recognition system, the Judge referred specifically to the fact that Sky would not even be aware where the step was being performed when arriving at this conclusion. The Judge, therefore, found that the method was performed, in substance, in the UK. Operation of the Sky Q system therefore would have infringed the patent if it were valid.

This case is therefore a further confirmation that although in principle all relevant steps should take place in the jurisdiction of the patent for infringement to take place, the UK courts consider the substance of the method as a whole and less important processing steps being physically performed elsewhere may not escape infringement.

For further information contact John Leeming or your usual J A Kemp adviser. 

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