In the latest episode of the Apple patent saga, the United States Court of Appeals has altered a decision by the International Trade Commission (ITC) discussing two crucial features of the modern smartphone: multi-touch functionality and a method of determining if this touch is a “finger touch.”
Apple Inc. v International Trade Commission and Motorola Mobility Inc. concerned two patents: US 7,663,607 (Patent ‘607) and US 7,812,828 (Patent ‘828). Patent ‘607 is a hardware patent that discloses a capacitive sensing medium for multi-touch functionality by measuring displaced charge using an electrode grid to determine the location of the touch. This patent also discloses how to make the touch screen appear transparent using Indium Tin Oxide (ITO) electrodes and “dummy” ITO to fill in the gaps thereby making the electrode matrix uniform. Patent ‘828 discloses a method of determining whether the displaced charge is as a result of a finger touching the screen whereby the touch panel software is able to mathematically fit an ellipse around the nodes where touch had been detected and track this movement.
The majority opinion was a medley of decisions by the court: affirming in-part, reversing in-part, vacating in-part, and remanding for further proceedings. Claims 1-7 of Patent ‘607 were affirmed to have been anticipated by US 7,372,455, which discloses a sensor matrix with two matrix-scanning algorithms able to detect more than one finger touch at one time, considered by the Court to be very similar to Patent ‘607, overlying a transparent layer and an electronic display. As such, they were considered invalid.
Claim 10, which relates to the “display arrangement” was given a more rigorous analysis by the Court. In agreement with the ITC an article describing “Smartskin,” a prior touchscreen system, was determined to be unanticipatory as the system disclosed an opaque system of copper electrodes rather than the transparent system of ITO electrodes as claimed. The ITC declared, however, that the claimed system would be obvious in light of Japanese Patent Application No. 2002-342033A. In turn, Apple argued that the Commission incorrectly applied a “hindsight analysis” and disregarded objective evidence, including commercial success and evidence of copying, which suggested that this invention would not have been obvious to a person skilled in the art. The Court of Appeals determined that although a strong prima facie case was established disclosing every limitation of Claim 10 that the ITC failed to follow precedent by allowing this to conclude the ultimate determination of obviousness. As such, the decision of the ITC was vacated. The court remanded the proceedings to allow the ITC to consider the prima facie case in conjunction with the objective evidence to determine the question of obviousness.
Finally, issue was taken with the decision of the ITC not to review the construction of the term “mathematically fitting an ellipse” in Patent ‘828. This was determined by the administrative tribunal to require a two step mathematical process whereby an ellipse is fitted to the data and after which parameters are calculated. As a result of this determination Motorola’s products were considered not to infringe on the Apple patent. Upon an assessment of the plain language of the claims, the Court of Appeals considered this term to refer to the software mathematically fitting an ellipse to the parameters, implying that there is no separate step of calculating ellipse parameters. As such, the ITC conclusion that Motorola does not infringe on Patent ’828 was vacated and remanded for further proceedings to the ITC to consider whether the products in question infringe under this construction of “mathematically fitting an ellipse”.
These types of patent infringement cases generally represent high stakes for both companies (an example of this is an ongoing dispute in Germany regarding Apple’s iCloud was cited to represent 2.7 billion dollars in collateral damage). Although by this point the current dispute around multi-touch patents relates to "dated" technology, the release of the Motorola Xoom tablet may, upon further investigation, prove to be beneficial to Apple. The Xoom angle may allow Apple the opportunity to argue that newer Motorola devices infringe on these patents and potentially have them banned for sale in the United States. In any event, it appears that the conflict between Apple and Motorola is far from over. The ultimate outcome should determine the functionality of this technology and may determine whether we will see greater similarity or evolutionary divergence in our future smartphones.
Naomi Metcalfe is an IPilogue Editor and a JD Candidate at Western University