Federal Circuit: Apple’s Slide-to-Unlock Patent is Invalid

by Dennis Crouch

In the Federal Circuit’s most recent Apple v. Samsung decision, the court has, inter alia, invalidated two of Apple’s asserted patents and held the third was not infringed – despite a jury verdict to the opposite.

At the district court, the jury found that three of Apple’s touch-screen patents (covering slide-to-unlock, spell correction, and automated data-structure detection) infringed by Samsung devices (resulting in $119.6 million in damages)[1] and that one Samsung patent (covering particular photo/video operations) was infringed (resulting in only $158,400 in damages).[2] This case is parallel to (but entirely separate from) the iPhone design patent case now pending before the Supreme Court that resulted in a $600,000,000 judgement for Apple.

Invalidity: Samsung had argued that the slide-to-unlock and automatic spell correction claims were invalid as obvious.  In support of the patents, Apple presented evidence of copying, commercial success, industry praise, and long-felt but unresolved need  — all as secondary considerations of nonobvoiusness.

[S]econdary considerations must be considered in evaluating the obviousness of a claimed invention. But weak secondary considerations generally do not overcome a strong prima facie case of obviousness. This is particularly true when an invention involves nothing more than the predictable use of prior art elements according to their established functions.

(internal quotation marks and citations removed).

The Federal Circuit walked through Apple’s evidence – pointing out its weakness:

  • Copying: What was copied was not the iPhone unlock mechanism in its entirety, but only using a fixed starting and ending point for the slide — features shown in the prior art.
  • Industry Praise: Evidence of approval by Apple fans—who may or may not have been skilled in the art—during the presentation of the iPhone is not legally sufficient.
  • Long-Felt Need: Apple’s contention here is nothing more than an unsupported assertion that Apple’s method is better and more “intuitive” than previous methods. This is not sufficient to demonstrate the existence of a long-felt but unmet need.
  • Commercial Success: “[E]vidence that customers prefer to purchase a device with a slide-to-unlock capacity does not show a nexus [to the claimed invention] when the evidence does not show what alternative device consumers were comparing that device to. For example, it is not clear whether the alternative device had any unlocking feature. A reasonable jury could therefore not find a nexus between the patented feature and the commercial success of the iPhone.

Collectively, the Federal Circuit found this evidence of secondary conditions too weak to overcome the evidence of obviousness based upon the prior art documents.  As such, the appellate panel reversed the jury verdict and lower court denial of Judgment as a Matter of Law — now holding the patent claims invalid as obvious.

Infringement: Apple’s automated data-structure detection claims cover the process of automatically identifying items in within text such as telephone numbers or dates.  The claims require an “analyzer server” that detects the structures. That patent claim term had been previously construed by the Federal Circuit and this narrow construction was adopted by the district court – although not until the last day of trial.  However, Apple’s expert testified that the Samsung device infringed under this narrow definition (Samsung’s expert disagreed) and the jury sided with Apple. On appeal, however, the Federal Circuit reversed – finding that no reasonable jury could have found infringement based upon the testimony:

[Apple’s expert] testimony is not sufficient evidence to allow a jury to conclude that the Samsung software met the “analyzer server” limitation. Our previous construction required more than just showing that accused software was stored in a different part of the memory and was developed separately. We found that the “analyzer server” limitation is a separate structural limitation and must be a “server routine,” consistent with the “plain meaning of ‘server’.” That is, it must run separately from the program it serves. . . . Apple could point to no testimony where its expert stated that the library programs run separately.

Thus, the holding of infringement was reversed and Apple’s $120 million award has vanished.

The court did uphold Samsung’s win, but that award is only $158,400 in damages.  In addition, the court awarded appellate costs to Samsung.

= = = = =

 

 

[1] Apple alleged infringement of five U.S. patents: U.S. Patent  Nos. 5,946,647 (the ’647 patent), 6,847,959 (the ’959 patent), 7,761,414 (the ’414 patent), 8,046,721 (the ’721 patent), and 8,074,172 (the ’172 patent). The jury found infringement of the ’647 patent, the ’721 patent, and the ’172 patent but no infringement of the other two.

[2] The Jury found that Apple infringed Samsung’s U.S. Patent No. 6,226,449 (the ’449 patent) but not U.S. Patent No. 5,579,239 (the ’239 patent).

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

80 thoughts on “Federal Circuit: Apple’s Slide-to-Unlock Patent is Invalid

  1. Regarding secondary considerations, why do so many applicants/examiners screw up teaching away? Are you just hoping something sticks sometimes? Do you actually believe the bad teaching away arguments, or are you just making them because you never learned what exactly teaching away is?

    Like, A can be worse than B, and there can be good motivation to combine A and X, but you’ll get applicants arguing nobody would combine A and X because B and X is better.

    Some examiners won’t use something labeled as “prior art” from a reference, even if it makes the strongest case of obviousness, because they’re afraid applicants will say “the invention is meant to improve on the prior art, you’d want to combine the invention and X instead of the prior art and X, so it teaches away from the prior art and X.” Even though this isn’t a correct teaching away.

    1. Pretty much the only time teaching away applies is when a specification states “I have tried [the exact combination you are thinking of] and it doesn’t work.” Specifications almost never say that.

  2. Can you believe this: link to news.yahoo.com

    “The treatment harnesses viruses called phages to attack and kill dangerous bacteria, including “superbugs” which have become progressively resistant to antibiotics.”

    “Discovered during World War I and developed during the 1920s and 1930s, it has few undesirable side-effects. ”

    “Pharmaceutical companies have shown little interest in phage therapy, in large part because viruses cannot be patented, according to participants at the Paris conference.”

    Viruses cannot be patented? Should that not say that “naturally occurring” viruses cannot be patented? Or is that viruses cannot be “made” at all.

    How can this patenting problem be solved?

    1. Ned: Should that not say that “naturally occurring” viruses cannot be patented?

      That is what it should say. There’s no rule or reason preventing new and useful recombinant viruses from being patented.

      1. But it would be the virus itself, wouldn’t it? That was patented. Not the idea of using a custom virus to battle Cancer, HIV, etc? So someone else could come up with a different virus and patent that virus, yes?

    2. 1. A new use for an old virus can certainly be patented.

      2. DISCOVERIES are patentable, so If you DISCOVER that a virus can be used to cure another infection….

      3. Methods of mass producing a particular virus can be patented.

    3. I’m glad to hear about that Ned. Good to hear of some old forgotten techs getting a boost during the failure of one kind of tech.

  3. But weak secondary considerations generally do not overcome a strong prima facie case of obviousness.

    This is one of those true statements that evidences an extreme misunderstanding. Secondary considerations absent invention will not make patentability.

    “Samsung contends, and Apple does not dispute, that Neonode discloses all of the limitations of claim 8 except for limitations concerning an ‘unlock image’…The Plaisant paper, Samsung argues, supplies the missing element…On appeal, Apple does not dispute that Plaisant, when combined with Neonode, discloses all of the claimed features of the ’721 patent.”

    Apple then argues 1) teaching away and 2) non-analogous art. The court disagrees. The court’s disagreement as to (2) ends the case, because now we have a persuasive rationale as to why the subject matter is obvious.

    Long-felt need, industry praise and copying (to the extent “copying” of a results-based patent can be seen as indicative of anything other than utility) go toward enablement to make the combination, which was never argued because its ridiculous on its face. Commercial success and teaching away go toward a motivation to combine, which was only argued with respect to the motivation being applied to non-analogous art. There is no situation in which the art could have knowledge of the parts and ability and motivation to combine them and yet ultimately have the resultant system be non-obvious. Secondary considerations evidence a failure of the art to have the knowledge, ability and motivation to make something, they are not reasons to award a patent despite those things being present .

    It is wrong for the CAFC to perform a two part analysis where the motivation is found and then put the “strength” of that invalidity against the “strength” of the secondary considerations because Graham made clear that the secondary considerations are part of the original obviousness inquiry. That is why when KSR discusses United States v. Adams, KSR makes clear (just as Adams itself did) that specific teaching away in this circumstance defeated the generic theory of simple substitution, NOT that simple substitution was applicable and then a second step applied a teaching away which resulted in non-obviousness.

    It’s entirely improper to consider, for example, “copying”, which the Supreme Court has never validated as a secondary consideration, which is a post-issuance rather than at-the-time-of-filing data point, which is illogical because it suggests that validity turns upon the willfulness of its infringers, when the only thing copying could go toward based upon the prior art and theory of obviousness presented in THIS case would be something that Apple’s own specification failed to do – establish how to marry the image of the second reference with the swipe feature of the first reference. The CAFC blindly cites a case saying “copying can be relevant to obviousness” without asking what the evidence of copying in this case is trying to prove or why it is relevant.

    The fact that the CAFC considers “copying” absent a discussion of why it makes no logical sense with respect to the obviousness theory evidences how off the rails they are. Samsung could have come out and said “We did no R&D on this feature, we simply copied Apple’s code”, the court could have found it to be extremely strong evidence of “copying” and it should STILL be inadmissible because it is entirely unprobative about whether one of skill at the time of filing was enabled to display a picture while accepting swipe input (they were, which is why Apple’s specification doesn’t enable it) and whether one would be motivated to do so, which are the only two questions remaining in a case where Apple admits the prior art teaches all of the features of the claim.

    Obviousness is a flexible test, but it is not a totality of the circumstances test. Particular strength in one area of the analysis does not overcome a weakness in another area. What definitely makes no sense is putting forward a theory (e.g. lack of prior enablement evidenced by a long-felt need) which, if true, would be an admission that your claim is still invalid, just under a different part of the statutory scheme.

    1. Random, The claim says,

      “to continuously move the unlock
      image on the touch-sensitive display
      in accordance with the
      movement of the detected contact
      while continuous contact with the
      touch-sensitive display is maintained,
      wherein the unlock image
      is a graphical, interactive user interface
      object with which a user
      interacts in order to unlock the
      device; and”

      Swipe right to unlock was known. Graphical sliders where known, where pressing and sliding to the right moved the slider/toggle, presumably, in a continuous manner. On this point the court said, “While the user is moving
      his finger, the screen display will move the image.” But if Apple admitted that all the elements were present, the continuous movement of the graphical display followed the continuous movement of the contact.

      On this evidence, a known graphical slider was applied to unlock the phone, where swiping to unlock was at the time known.

      Now, it would be interesting if the speed of movement of the slider were controlled such that unlocking would not occur if the contact move too fast so that the contact got ahead of the image. That is not disclosed by these references, but it does seem to be a feature present in Apple’s devices.

      1. It’s irrelevant whether the references disclose them when Apple admits the art discloses all of the claimed features. Then the only questions are if the art had a reason to combine and an ability to combine.

        What happened here is Apple popularized an obvious variant of the Neonode disclosure, then tried to argue that because they enjoyed such success (people praised them, copied them, and they made money) that their claim was valid. That’s not even a cognizable argument and should never have been heard. You can’t just randomly spout secondary considerations – the secondary considerations have to be tied in some relevant manner to the issue being argued over.

        If you’re not going to raise the issue of whether the art was enabled to combine Neonode and Plaisant, then bringing up Copying, for example, isn’t relevant. The point of raising copying (according to the CAFC, which I don’t agree) is that it is supposedly secondary evidence that the art did not understand the principles at play, and lacking that enablement the only way one can achieve the result is to blindly copy the patented embodiment. But this is software – nobody in the industry ever says there’s an enablement issue. That’s why Apple’s specification doesn’t teach how to do it. Copying in the software field is a dead secondary consideration because the issue that it is probative of is never in play. Apple would be ridiculous to raise it and if they did they’d be opening themselves up to a 112a invalidation (because if they convince the court it was unenabled in the prior art their spec sure didn’t enable it).

        The CAFC performs this two step analysis where they weigh the strength of obviousness against the strength of secondary considerations – its just wrong. Secondary considerations are things to consider when concluding whether something is obvious, and they are only relevant in respect to the factual and argumentative context they are raised in.

        1. >But this is software – nobody in the industry ever says there’s an enablement issue. That’s why Apple’s specification doesn’t teach how to do it.

          Damn, that’s pretty good.

        2. “Then the only questions are if the art had a reason to combine and an ability to combine.”

          Glad to see you’ve seen the light.

      2. And just to clarify what I mean when I say I don’t agree about Copying –

        “Copying” traces back to Diamond Rubber v. Consolidated Rubber. The issue in that case was that there was a combination patent with all of the parts previously known to the art, and the defendant argued that the art was crowded and that there was no special utility to the particular claimed configuration. The court pointed out that if there was no special utility then it seems odd that in a crowded field with a lot of prior art to use, the defendants would happen to choose the patented configuration.

        The CAFC views this as a holding that “copying is evidence of non-obviousness.” I think the better view is that the issue being argued over was whether unexpected/synergistic results existed, and that copying was tertiary evidence of unexpected results which is secondary evidence of a non-obvious motivation to combine. Diamond Rubber was cited by AP Tea Co which was a mere aggregation/predictable results case, and even though AP Tea, Anderson’s Blackrock and Sakraida were all cited by KSR (they’re all similar cases), Diamond Rubber was not, which leads me to believe the discussion of copying there was limited to a refutation of predictable results rather than it’s own secondary consideration.

    2. Does anyone have any idea how many patent applications or patents have provided enough secondary considerations in the last 20 years to overcome an obviousness rejection? It is my understanding that the answer is close to zero because the “nexus” bar is set too high. I once had a couple of patent applications where secondary considerations were presented, and after considerable back and forth with the examiners, asked them how many cases they had allowed based on secondary considerations. The answer was revealing – none had allowed any patent applications. The “nexus” is difficult (and costly) to prove.

      1. What area do you practice in? You should see some of the junk where I’m at. Applicants can pretty much make up anything and get a patent.

        “Unexpected results” for some means “slightly better”. Did they even read the case law? Once, my SPE told me to allow something because one property was 5% better than the prior art when only the substrate temperature at which the material was deposited, and it’s known to optimize temperature/sputtering power/pressure/etc. for these conditions, but the prior art only had made the material deposited at a single substrate temperature; I protested “but it’s known to optimize these conditions” to no avail.

        I have a friend who had to allow a case recently because the attorney argued that the compound they made has an “unexpected” property compared to some extremely similar compound (might have been one carbon length difference on some side chain). I think it was “unexpectedly high melting point” for something where the melting point really doesn’t matter (drug).

        Sometimes I swear you can just measure physical properties of materials that you would expect to change because changing structure tends to change those physical properties, come up with some BS rationale why it’s unexpectedly better.

        Random/6, have you seen anything like this where you are?

        1. I’ve never withdrawn a rejection based on secondary considerations, but I’ve never had anything submitted to me either. Arguments of counsel do not replace evidence where evidence is necessary, so the only secondary consideration arguments I get are improper teaching away ones.

      2. Even worse, I’ve had examiners FLAT OUT TELL ME that they won’t consider my secondary considerations. I had color images that showed more clearly the obvious difference in crystalline structures created by the claimed method vs. the prior art, and the examiner said he wouldn’t even consider them. Not that he disagreed, but that he WOULD NOT CONSIDER them. That’s how hard it is to convince them.

        1. Well, without telling what the differences in the method are, I could see that. Like, if your color evidence is showing grain size from electron back scatter diffraction (your use of “crystalline structure” is kind of ambiguous, because it’s not clear if you’re talking about differences in crystallinity or different crystal structures as in different unit cells, and EBSD is pretty commonly in color and used to show crystal grain size), and the only difference in method is a typical REV, I wouldn’t consider it.

          1. You have to consider it. The fact that you don’t think you do just tells us that you’re bad at your job.

            But you knew that already.

            1. You have to consider it. The fact that you don’t think you do just tells us that you’re bad at your job.

              As usual, its an “it depends.” If the “color images” go toward an unclaimed feature, it is not improper to not consider it. If they merely illustrate the counsel’s argument rather than being independent evidence (and independent evidence usually requires an accompanying affidavit) then arguments of counsel do not replace evidence where evidence is necessary.

              When it is properly submitted evidence probative of an issue in the case, it is improper to not consider it as opposed to not find it persuasive. Examiners, not being lawyers, often accidentally say the first when they mean the second.

              1. No, it doesn’t “depend.” If it’s timely submitted it has to be considered. If it’s not found persuasive, or even probative, then that conclusion has to be explained.

                1. Timely submitted *evidence and argument* has to be considered. Something which is not probative of an issue is not evidence.

                  I agree that an examiner has to come to a conclusion that something submitted is not probative of a rejection. I also agree that the conclusion that something is not probative needs to be explained why it is not probative. I simply disagree with your assumption that you always need to consider the submission to determine whether or not it is probative in all cases. Rebuttal evidence (and argument of course) needs to be considered. A submission which, even if true, would fail to be relevant to a legal question is neither evidence nor a rebuttal.

                  Simple example – The examiner makes an anticipation rejection. Secondary considerations are legally insufficient to overcome an anticipation rejection, because secondary considerations only go to obviousness. Applicant submits a 100 page analysis of copying as evidence of secondary considerations. A statement that “Examiner has not considered the evidence of secondary considerations because they are legally irrelevant to an anticipation rejection, and the anticipation rejection is maintained” is not legal error, nor does the Examiner have to read the 100 page analysis to come to that conclusion, nor is “not considered” statement grounds for procedural reversal; because the only thing the MPEP requires is for the rebuttal argument and evidence to be considered, and in this instance the secondary consideration analysis does not constitute rebuttal evidence, and the statement of law disposes of the rebuttal argument. Ditto if that secondary consideration was drawn to an unclaimed feature, ditto if the thing submitted was not evidence at all but merely an illustration of an already-existing argument, ditto if something purports to be evidence but in fact is merely arguments of counsel at a time when evidence is necessary.

                2. Something which is not pr0bative of an issue is not evidence.

                  You want to double check that….

                  Pr0bative legal definition of pr0bative – Legal Dictionary

                  [URL not permitted by filter]

                  Pr0bative. Having the effect of proof, tending to prove, or actually proving. When a legal controversy goes to trial, the parties seek to prove their cases by the introduction of evidence. All courts are governed by rules of evidence that describe what types of evidence are admissible.

                  You seem to be overplaying the “proof” part, where that is just not the case (the level to be evidence is a bit lower than your statement).

                3. That’s one of your favorite little tricks, isn’t it? Rebutting an argument that wasn’t actually made. It’s on page 1 of the examiner play book, so I guess it’s not a surprise that you go to it a lot.

                  I wasn’t talking about a situation where applicants submit evidence of secondary considerations to rebut an anticipation rejection. And you knew that. But you’re just so clever that you had to let me know that evidence of secondary considerations isn’t relevant in an anticipation rejection.

                  Congratulations.

                4. You want to double check that….

                  You’re either not a lawyer or you failed evidence. It has to be probative of an issue to be evidence. You don’t get to just submit stuff and call it evidence. Then it has to be more probative then prejudicial, or it won’t even be entered (not applicable here). That just makes it evidence which alone or together may be persuasive on the ultimate issue.

                  There is a difference between non-persuasive evidence and non-probative submissions, as the latter are not even evidence.

                  You seem to be overplaying the “proof” part, where that is just not the case (the level to be evidence is a bit lower than your statement).

                  That definition is precisely what I said. Something which does not affect the ultimate question in any manner (i.e. is not probative) is not evidence, because it does not “have the effect of proof, tend to prove or actually proves.” There simply is no question about the example I made – because no secondary consideration proof would be probative to an anticipation rejection, secondary considerations are not rebuttal evidence, and therefore need not be considered.

                5. Rebutting an argument that wasn’t actually made.

                  I said it depends and gave examples, you disagreed and said no it does not depend, you then said this:

                  If it’s timely submitted it has to be considered. If it’s not found persuasive, or even probative, then that conclusion has to be explained.

                  The first sentence is outright wrong. You are wrong. Does that make my rebutting clear enough for you? The second sentence does not support either the first or your statement that “it does not depend.”

                  The reason the second sentence is true but irrelevant is because you can explain the conclusion that something is non probative without considering it. Courts do it all the time. My secondary-considerations-in-an-anticipation example is an extreme example of that, but the other examples I had at 7.4.2.1.1.1 (again, which you specifically said no to) are legally indistinct from the anticipation example. I made the anticipation example to illustrate a point.

                  When something is not probative of an issue it is not evidence. If it is not evidence it is not part of a rebuttal. The MPEP only requires examiners to respond to timely submitted rebuttal *argument and evidence.* So “yes, it does depend” whether it has to be considered – it depends upon whether the thing submitted is evidence. If it only illustrates an argument otherwise made it is not evidence. If it would need to be evidence (i.e. there is an evidence requirement) but it is an assertion of counsel rather than an affidavit from one of skill, it is not evidence. (Both examples I gave in 7.4.2.1.1.1, which you said no to) Non-evidence, whether timely filed or not, need not be considered and the examiner doesn’t have to do anything other than say that it is non-probative to justify his non-consideration. It is legally no different than trying to submit secondary considerations in an anticipation rejection, or an affidavit that the claim term has definite meaning when there’s no pending 112(b) rejection, or a submission of War and Peace. I’m not forced to read whatever you send me under penalty of error, I’m only forced to consider rebuttals to my rejections.

                  But point taken, maybe instead of exhaustively explaining myself with examples, I should just get into a one-sentence anon-like shouting match where I poke fun at how you get the wrong answer without explaining why I think that is wrong. In that vein, I issue a new response to “No it doesn’t depend”:

                  “Yes, it does depend. I’m not required to consider anything just because its timely submitted. Go ahead and try it, hahaha.”

                6. Just to make it super clear for you AAA JJ, here is anony’s original complaint (at 7.4.2):

                  I’ve had examiners FLAT OUT TELL ME that they won’t consider my secondary considerations. I had color images that showed more clearly the obvious difference in crystalline structures created by the claimed method vs. the prior art, and the examiner said he wouldn’t even consider them.

                  Now just ask yourself – assume the pictures prove what he says – the pictures show unequivocally that there is a clear “difference in crystalline structure” from the prior art method. What is the relevance of that? What is it probative of? It is a *method* claim. Is the fact that the resultant structure different from a prior art structure IN ANY MANNER RELEVANT to whether the modification made to a prior art method is obvious?

                  The answer is no. The claim is to a method. The fact that it can clearly be shown to produce a different structure does not matter to whether the art would find the change to the method steps obvious.

                  The closest one could come to a relevant argument about the method (and I realize you’re not making this argument) by submitting evidence of the resulting structure is that the method is non-obvious because the results are *unexpected* (i.e. unexpected results). But unexpected results isn’t proven by showing how clearly the results are *different from the prior art* method. It is shown by producing evidence of what the art *would have thought would have happened by performing the claimed method versus what actually happened.*

                  The picture of different resulting structures is directed to an unclaimed feature, therefore they are not probative of the rejection, therefore they are not evidence, therefore it was not improper for the examiner to say he wouldn’t consider them.

                  When the thing being submitted evidences a “difference” in structure the only time that would matter is if a) the structure is claimed and b) it is an anticipation rejection. The fact that things are different in an obviousness rejection isn’t probative because *that is the assumption in an obviousness rejection – that there is some difference from the prior art*. It never defeats an obviousness rejection to prove that the claimed subject matter is different from the prior art – that is why 103 starts out “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed…”

                  Anony’s submission, whether he calls it “secondary evidence” or not, is irrelevant and therefore not evidence, and therefore need not be considered. Anony’s submission could have conclusively proven what he was trying to show (a difference in crystalline structure) and it would have no bearing whatsoever on whether the method claim was obvious.

                7. Examiners, not being lawyers, often accidentally say the first when they mean the second.

                  Including by you in the immediate exchange.

                  Read again what I wrote and do not be so quick to cast an aspersion that just does not fit.

                8. Random,

                  I think that you are “overplaying” the word “considered as well.

                  Think of the data dump of a few hundred items in an IDS. You DO have to consider them. But the word (in context) just is not the word you are trying to make it to be.

                  This is you “playing attorney” yet again – and missing.

                9. Think of the data dump of a few hundred items in an IDS. You DO have to consider them. But the word (in context) just is not the word you are trying to make it to be.

                  Of course I do, because there is a section of the MPEP which tells me I have to consider timely and sufficient IDSes. There is no section of the MPEP which requires me to consider everything you timely file. There is a section of the MPEP which requires me to consider rebuttal argument and evidence, which is what evidence of secondary considerations usually falls under. But simply calling something “secondary consideration evidence” doesn’t make it evidence – evidence has a definition that includes a standard that must be met. The example anony complained about did not meet that standard, therefore it is not evidence, therefore it need not be considered because nothing in the MPEP places a generalized requirement on me to consider everything you submit.

                  The fact that I can give it a cursory consideration the same way I can give IDS references a cursory consideration is irrelevant. I can always do that. I can always say it not sufficient to persuade too. That doesn’t change the fact that sometimes I don’t even have to do that.

  4. EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, INC.
    link to cafc.uscourts.gov

    During claim construction, the infringer argued that “portable” meant stationary, incapable of being moved. The patent owner argued that the term portable should have its ordinary meaning. The judge instructed the jury that the claim term should have its ordinary meaning. The jury found infringement. On appeal, the majority of the Federal Circuit found error in giving a disputed claim term to a jury, and further under a proper construction of the term, relying on the specification, that the jury could not have found that the accused device was portable.

    Judge Bryson in dissent argued that the rule that one cannot give the jury a plain and ordinary meaning instruction only applies where the plain and ordinary meaning has more than one normal meaning. He argued that the case here involved only one ordinary meaning: capable of being moved. As such, the jury instruction was proper and the evidence fully supported infringement.

    He accused the majority of effectively adopting the infringer’s construction of stationary without actually saying that it was doing so.

    The infringer’s device was a meter bolted onto a house. There is no doubt, that until it was so-bolted, the device was portable.

    Examples in the spec were meters in e.g., Coke machines. Bryson argued that since these meters would not ordinarily be moved, that the court’s construction to exclude meters that were movable, though bolted, amounted to a construction that they actually be moved.

    Regardless of who is right here, the court is apparently told us that if there is a genuine claim construction dispute between an infringer and a patent owner that the court cannot simply not resolve it by saying that the claim should be given its ordinary meaning.

    1. The infringer’s device was a meter bolted onto a house. There is no doubt, that until it was so-bolted, the device was portable.

      Except that houses can be moved, too. In fact, houses are moved every day in this country.

      The oral arguments were amusing. I think the CAFC got it right, here, although a better result for everyone would have been to invalidate the claims as indefinite or obvious. If the patentee intends to rely on the term “portable” in a claim, then (1) the term needs to be defined with particular reference to the art that is not similarly portable and art that is similarly portable; and (2) there’d better be some strong teaching away from portability in the art (good luck with that — humans tend to like devices that are optionally moveable, for obvious reasons).

      1. MM, apparently a lot of time at trial here was spent arguing the portability issue. The majority might be trying to send everyone a message — do not try claim construction issues to the jury. They must be resolved by the court.

        In the future, a district court is going to have to

        1. Find that the one party’s definition is incorrect; and that
        2. The ordinary meaning is but one meaning;

        before a court can give such a construction to the jury.

        If 2 is not possible, the court will have to come up with a construction of their own.

        Generally speaking, courts already require parties to give a proposed construction even if their main position is ordinary meaning.

    2. During claim construction, the infringer argued that “portable” meant stationary, incapable of being moved.

      I sincerely hope that this is not actually what the infringer argued. :)

    1. It’s definitely rare for the CAFC to find that a particular claim is prima facie obvious in view of the prior art and then find that the prima facie obviousness case is “overcome” by evidence of commercial success. It seems that only a very weak prime facie obviousness finding has a hope of being overcome by considerations of commercial success (in which case the CAFC would seize on the weakness and find that the prima facie case was not made); conversely, a strong prima facie obviousness case has effectively zero chance of being overcome by evidence of commercial success, regardless of the magnitude of that success. It’s not going to be worth the time and money to make a solid argument (with solid evidence) in that latter situation.

      As for secondary considerations generally (e.g., teaching away and unexpected results), they are still alive and well at the CAFC as of August 14 2015. See, e.g., Allergen v. Sandoz (Fed Cir 2015). Decent write up here: link to finnegan.com

      1. Thanks. I usually think of “teaching away” and “unexpected results” (neither are mentioned as secondary considerations in Graham v. John Deere or in Bilski, which admittedly don’t purport to list all of the secondary considerations) as rebutting the prima facie case itself, while I think of secondary considerations as factors that (theoretically, at least) can overcome a successfully established prima facie case. In other words, I think of a secondary consideration argument as being of the form “Yeah, you’ve got all the elements of a prima facie, but if it were actually obvious, we wouldn’t have had all this commercial success.” But maybe that’s just me. I can’t remember the last time a “commercial success” argument or “failure of others” argument carried the day.

        1. DanH I usually think of “teaching away” and “unexpected results” (neither are mentioned as secondary considerations in Graham v. John Deere or in Bilski, which admittedly don’t purport to list all of the secondary considerations) as rebutting the prima facie case itself, while I think of secondary considerations as factors that (theoretically, at least) can overcome a successfully established prima facie case.

          That’s actually how I tend to think of “teaching away” and “unexpected results”, too (and I would argue that a bona fide “long felt need” argument is typically subsumed by one of these).

          But I’m inclined to believe that most people (the PTO; judges; pundits) lump them together, even if they recognize that the other factors (e.g., “copying”, “commercial success”) are analyzed differently (for good reasons).

  5. Regardless of whether this case was correctly decided, my view is that this type of patent litigation (between large and motivated business entities) is exactly what the patent system should be providing. Litigation is not a bad thing if it results in a public decision based on evidence and application of law. Other market participants can now respond to decisions like these in terms of continuing making, selling, importing, etc. (or refraining from doing so), because this decision is public. I guess my point here is that patent litigation does not mark a failed patent system, but may instead be the mark of a patent system that works.

    1. Regardless of whether this case was correctly decided

      Seriously?

      patent litigation does not mark a failed patent system,

      Of course it doesn’t. But that’s not true “regardless of whether this case was correctly decided.” If Apple had ultimately succeeded with these claims that would not have been “the mark of a patent system that works.”

      The fact that Apple got the claims out of the patent office in the first place is the mark of a patent system that is failing. The fact that the claims got before a jury is the mark of a patent system that is failing miserably.

      Litigation is not a bad thing if it results in a public decision based on evidence and application of law.

      Good grief. Turning “bad litigation” into “good litigation” requires more than “a public decision based on evidence and law.” You might have an easier time understanding that if I took you to court and wasted years of your life and all of your family’s money on a b.s. “do it on a computer” patent lawsuit (because you use a computer after all … and it’s wirelessly connected! and portable! and it’s connected to a database! just like the system described by my “limited” claim).

      After all, I’m “zealous” so I’m going to “appeal! appeal! appeal!” no matter how meritless my position appears to be to you (after all, like all “copyists” out there, “you don’t really understand the law or techn0logy”). Maybe you’ll “do the right thing” and pay me off.

      Your ultimate success in that scenario may surely be a sign that the patent system isn’t completely broken. But there’s really no way to characterize that process as “good” … unless, of course, you’re one of the patent attorneys stuffing his/her pockets and laughing all the way to the bank.

      1. I invented that, MM’s modus operandi is to chastise people who disagree with him on any issue, so that people leave this board and he can use it as his own sounding board. You’ll also note that he seems to have unlimited time, as he’s posted a bazillion times on this already for this particular thread. So, any response you make to him (1) won’t be read for content and opposing views unless he can chastise you again, and (2) will be a small part of a gigantic number of postings by him. You’ll simply get drowned out.

        It’s best to simply ignore him and focus your arguments on people who might actually listen (like me).

        1. PB: focus your arguments on people who might actually listen (like me).

          Because PB is a really great “listener”. Sure he is! That’s why PB knows that Alice is just impossible to figure out or apply, no matter what anybody says. Because he “listens.” He’s not just another patent attorney reciting an inane script that’s impossible to defend. Nope. Not him.

          Meanwhile, PB is totally read to “listen” to one of his tribe preach about the awesomeness of litigation “that results in a public decision based on evidence and application of law.” Never mind the absurdity of the complaint or the ridiculousness of the subject matter that the patentee claimed to control or the incredible waste of time and money and judicial resources. All that really matters is that at the end of the day there is a “public decision based on evidence and law”. Therefore, litigation “good”.

          Given weird bubble-world assertions like the one I quoted — assertions that apparently please attorneys like PB — it’s no wonder that the public is often repulsed by the legal profession generally and patent attorneys in particular.

          We aren’t even close to midway through the process of cleaning up the horrific mess that the CAFC and the PTO created. It’s a little early to be celebrating contemporary “do it on a computer” patent litigation as “good” on the basis of the CAFC reversing a clueless jury’s $120 million verdict.

          1. Alice is difficult to apply in a consistent, repeatable manner. You asked for examples a few threads ago, I gave some, you ignored them.

            1. Martin: Alice is difficult to apply in a consistent, repeatable manner.

              It’s not any more difficult than any of the other tests for patentability. And for a lot of claims out there, it’s actually as easy as it gets.

              You asked for examples a few threads ago, I gave some

              I recall you wanted me to read two district court cases. The problem, Martin, is that I’ve been reading eligibility cases all the time for years and the existence of two district court cases that you think are incongruent for some reason falls incredibly short of the type of evidence you need to support your claim that Alice is difficult to apply.

              Remember that there is a big gulf between “difficult to apply” and “difficult to square with the results you personally desire.” The CAFC came up with an eligibility test that was very very easy to apply, as you may recall. That test, of course, was d.o.a.

              1. Martin – I’ve directly called out MM for being unwilling to address very simply hypos on Alice / 101 / subject matter eligibility. He is simply anti-patent in every aspect. He should just say that directly and then move along.

                1. I disagree I Invented That. MM clearly hates the injustice of the current system; in that we totally agree.

                  I think he is not anti-patent at all- and that’s a common smear for anyone trying to fix the problems. Instead, I think his motivation is reverence for a well functioning system. I also think he can be unduly arrogant and abrasive- although I can understand loss of sensitivity to the motivations of various interlocutors after years of combat with some truly obnoxious specimens of patent maximalism.

                  I disagree with him that logic and information results should not be patent eligible- but the bar for those that may be eligible IMO should be quite a bit higher than the junk we have seen flowing for years.

                2. and that’s a common smear for anyone trying to fix the problems.

                  B$ – Malcolm IS anti-patent.

              2. MM, I agree that some district judges are likely less informed than some participants on this board, but Judge Robinson of Delaware is certainly one of THE most experienced and savvy district judges out there on patent matters. She recently wrote:

                “In reviewing post-Alice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the §101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. See DDR, 773 F.3d at 1257; Intellectual Ventures, 792 F.3d at 1371. In other words, even though most of the patent claims now being challenged under §101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a §101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under §112 and non-obviousness under 103, especially in light of the Federal Circuit’s past characterization of §101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Research Corp. Techs., Inc. v.Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010). Given the evolving state of the law, the §101 analysis should be, and is, a difficult exercise.

  6. drop by: a waste of time because Apple’s patents were obviously obvious

    Yes. The fact that these incredibly junky claims got close to a jury shows how broken the system is.

    1. MM – you’ve included both of your favorite words into a single sentence. “junk” and “broken system”. Now I know that you’re simply an A.I. bot on this blog.

  7. the predictable use of prior art elements according to their established functions.

    This is an accurate description of hundreds and hundreds of thousands of “do it on a computer” claims. Why? Because applying logic to information is old. Logic doesn’t become “new” just because it’s given a new name in a new context. A wheel doesn’t become “new” just because you call it a “circular location transfer enabilon” or because you apply it to a particular road that “the skilled artisan wouldn’t have looked at because, hey, other roads were more popular”. Eventually the CAFC and the PTO will expressly cop to the pattycake game that they’ve been playing with patent applicants for years. It can’t happen soon enough.

    1. “Because applying logic to information is old. ”

      Distill down to a gist much?

      Turning gears turning other gears is old too.

      That doesn’t mean it is not possible to invent and patent a new mechanical machine.

      Bending wings to control direction of flight is old too, that doesn’t mean it is not possible to invent and patent a new machine to do it.

      Combining elements to make compounds is old too. That doesn’t mean you can’t invent and patent a new drug.

      1. Of course it’s possible to patent new mechanical machines and new drugs. I never asserted otherwise.

        It’s also possible to eat a peanut butter sandwich. Enjoy!

        None of that has anything to do, of course, with the problems presented to our patent system by applicants who functionally claim the application of logic to information and who notoriously rely on jargon to stimy reasonable attempts to understand what (if anything) about the alleged “innovation” is eligible or patent-worthy.

        As has been pointed out to you hundreds of times already, when it became clear that complex biomolecules were going to be a subject of interest for patent applicants, the grown-ups in that field quickly arrived at a consensus system setting forth how both the specification and claims to such molecules must be presented before examination would be allowed to proceed.

        Where are the grown-ups in the s0ftie-woftie field? It doesn’t appear that there are any. Instead we have you and your fellow “patent everything and easier to enforce” zombies screeching the same nonsense here for years and years even as the tractor wheels of reason and history grind over your corpses for the thousandth time.

        1. “when it became clear that complex biomolecules were going to be a subject of interest for patent applicants, the grown-ups in that field quickly arrived at a consensus system setting forth how both the specification and claims to such molecules must be presented before examination would be allowed to proceed.”

          A consensus which was later gutted by the Supreme Court making a decade’s worth of biomolecule patents worthless. Most of those patents cover inventions which would still be patentable under the current standards, if only the claims and specifications had not been drafted under the consensus system in place at the time.

          Patentable material has become a rapidly moving target in both software design and complex biomolecules.

          1. mike A consensus which was later gutted by the Supreme Court

            Say what? The Supreme Court never gutted the sequence database submission requirements. It’s still being used by applicants today, every day.

            making a decade’s worth of biomolecule patents worthless.

            Which decade would that be?

            Are you suggesting that most biomolecule patents are devoid of eligible subject matter?

            I’d love to see the evidence for that assertion. Does it exist?

            I always knew that my peers and I were ahead of the curve (that’s why we were hired), and I’ve no doubt that there were many practitioners who didn’t plan ahead or who were simply incapable of understanding the ridiculous scope of some of the claims they were drafting.

            But after In re Fisher it was crystal clear that you needed a bit more than “I cloned this sequence from organism X” to have a patent you could actually enforce against an articulate defendant who wasn’t interested in licensing. And Fisher was the Federal Circuit’s decision in 2005, not the Supreme Court’s. And prior to that most of the world was already of the opinion that such claims (ESTs) were unpatentable. US practitioners filing internationally were already aware of the likely problems (or should have been) and were advising their clients and modifying practices accordingly.

          2. mike: Patentable material has become a rapidly moving target in both software design and complex biomolecules.

            In fact, the target hasn’t moved for many years: describe and claim your molecule in structural terms that distinguish it from similar structures in the prior art, provide evidence of unexpected results in your specification, and be sure that those results are substantially more than “hybridize to itself”.

        2. Did you really not understand the point of my post?

          No one is claiming anything so vague as “applying logic to information.”

          Just as new machines (arrangements of gears and known components) can, as you admit, be invented and patented, that process new or old work pieces to make new or old products or results, new applications of new or old logic (i.e., new processes) can be invented and patented that are applied to new or old information to generate new or old results.

          This is not the end of the world.

          While the end of the world does appear to be being Trump(eted), it is not being ushered in by method patents.

          1. Les No one is claiming anything so vague as “applying logic to information.”

            There’s nothing “vague” about “applying logic to information”. It’s broad and it’s an abstraction. But it’s not vague. And the breadth is the only reason that someone hasn’t claimed the method “on a computer.” Even the PTO wouldn’t let that claim out the door.

            But narrow “information” to “real estate information”, narrow the logic to “determine availability” or “sorting by price” or “displaying a hyperlink to a map showing the location of the real estate”, and all of sudden elementary logic (e.g., sort stuff according to aspects about stuff; display selected stuff or selected aspects of stuff based on user desires) is magically turned into “high technology.”

            This is a real problem for a patent system because logic is, well, kinda fundamental to our civilization (even Dr. McCoy would readily admit that). And the whole point of computers is to make the exercise of information processing (according to logic) less burdensome. There is nothing “innovative” about using a computer to perform a logical operation, as you surely understand. Given that, and given the fact that no patent system on earth has ever authorized the patenting of logic per se, you and your fellow software patent lovers are in a bit of a pickle. We can quibble about what you can patent “right now” but I have no doubt — none — about what the future has in store.

            The great news is that patents were never needed to promote progress in the “art” of instructing a computer to carry out logic. They weren’t needed before, they aren’t needed now, and they surely won’t be needed in the future. When s0ftware patents are expunged from the system, nobody will notice any decrease in “software progress.” There will be a marked decrease in the super silliest patent lawsuit, however, and some tightening of the market for patent prosecution in that particular area. Among the general public, very very few tears will be shed for that event.

            1. “But narrow “information” to “real estate information”, narrow the logic to “determine availability” or “sorting by price” or “displaying a hyperlink to a map showing the location of the real estate”, and all of sudden elementary logic (e.g., sort stuff according to aspects about stuff; display selected stuff or selected aspects of stuff based on user desires) is magically turned into “high technology.””

              Patents are not limited to “high technology.”

              New can opener patents are still being granted:

              link to patents.google.com

      2. Les: Turning gears turning other gears is old too.

        This is almost too painful to respond to, but the point is that if the only distinctions between the prior art and your claim is “an additional gear that turns another gear” and “wherein said substrate peanuts are subject to an RT24 license” then your claim is almost surely d.o.a. The claim would likely never even been filed.

        But as we all know, that’s not how it works in the “computer implemented arts” … at least not until very very recently (and far too late to prevent severe damage to the system as a whole). In that “art”, pretty much anything goes. That’s why we see applicants filing claims (thousand upon thousands of them) loaded up with meaningless “limitations” and distinguishing themselves from the art based on irrelevant abstract matter such as the contractual or legal status of the information being “processed.”

        All that stuff needs to be expunged from the system, forever, before the system starts working again. Unfortunately the PTO continues to grant that kind of junk like there’s no tomorrow. But tomorrow is definitely coming.

    2. I don’t understand why the USPTO should not have to cough up fees when their patents are invalidated. Why the one-way street?

      Wouldn’t that be a strong driver of “patent quality”?

      And yes, “wasted years of your life and all of your family’s money on a b.s. “do it on a computer” patent lawsuit” actually happens, but that’s never a problem because innovation, and omelets, or something.

      1. I don’t understand why the USPTO should not have to cough up fees when their patents are invalidated. Why the one-way street?

        Hahaha, well that’s one way to end the patent system, if you want. Why should the PTO have to cough up fees when the PTO doesn’t make a de novo determination? The applicant SHALL receive a patent unless the office can carry its burden to reject.

        Are you honestly asking why the Office, who employs engineers doing maybe 40 hours of work on a case, can’t do as well as a bunch of lawyers and experts who have collectively spent thousands of hours on the case?

        1. How would that “end the patent system”? Not many patents are invalidated- the act of coughing the fees back would be symbolic, not material. Cough them back to the treasury for all I care.

          Point is: pass junk, pay for it. The office can work harder on that burden- and the disgorgement can remind them to do that.

          How does it make sense that those asking for patents pay all the bills? Moral hazard or risk of capture mean anything to anyone?

          The whole thing should be funded like every other agency, but at least pony up when your junk is found to be junk….

    1. MM, just to clarify: a waste of time because Apple’s patents were obviously obvious (see what I did there) such that 4+(?) years of litigation to result in less than $150k in damages against one side (and who knows how much in attorney fees)?

      Well, yeah and no. No, because I’m not sure Apple’s war on Samsung helped it stem Samsung’s market creep – but then Apple probably doesn’t care about the entire smartphone market, they only care about the super high end of the market. Yes, because Apple was able to harass (within legal limits) Samsung – I assume you would decry this – but that’s a part of corporate litigation.

    2. MM, I would agree. I will note here that you have be saying all along that the slide to unlock patent was probably not valid.

      But I was surprised just how weak some of these patents were one we saw the prior art; and where there was invention, that Samsung did not infringe and clearly so.

      Surely Apple must have better patents that these to cover its iPhones. It sued exclusively on software type patents. I assume there must be some new technology in the phones beyond software? But it appears that Samsung did not copy that.

      1. Surely Apple must have better patents that these to cover its iPhones. It sued exclusively on software type patents. I assume there must be some new technology in the phones beyond software? But it appears that Samsung did not copy that.

        Sure, once you get out of the functional claiming of software it becomes a lot harder to “copy” that.

        Virtually no software is copied, and if the office made the claims be of appropriate scope then you’d have far fewer infringement actions which is, of course, the correct outcome when virtually no software is copied.

      2. There’s lots of fancy technology in smartphones, lots of it is new.

        But it’s all unpatented, impractical to patent, obvious based on prior art, patented as part of patent pools, subject to widespread cross-licensing, available in many competitive versions so licensing cost is minimal, or licensed through common subcontractors and suppliers.

        Samsung is an Apple supplier and makes custom patented Apple processors using custom patented Samsung fabrication technology. That business is worth billions to both. Still they couldn’t avoid litigation over the garbage patents.

        The patents that aren’t pre-empted out of high dollar litigation by one or more of the above circumstances are the most superficial and abusive software patents like the ones we see in this case. It is because these patents are so trivial and don’t involve innovation or new technology that they aren’t taken in by the above and therefore are potentially lucrative.

        It quite perverse. The existence of software patents makes the worst patents the most valuable.

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