Patently-O Bits & Bytes by Lawrence Higgins

Apple and the Slide to Unlock Patents!

  • On October 25, 2011 the USPTO granted Apple a patent (8,046,721) for "Unlocking a device by performing gestures on an unlock image". Almost every touchscreen smartphone manufactured, uses slide to unlock technology. It seems like the Apple patent, could potentially be a problem for smartphone manufactures. However, many individuals propose that this patent should not have been issued because of the prior art that was available, such as the Neonode N1m which has been discontinued. It seems like many people forgot that Apple already has patented the slide to unlock feature, (Patent 7,657,849—which is cited in the "721" patent) so unless the Neonode has related prior art before December 23, 2005, the Neonode is not prior art. The "721" patent is a continuation of the "849" patent, therefore the "849" patent is not counted as prior art. As a result, the "849" patent is not invalid in light of the "721" patent, and most likely if the prior "721" patent has not been found invalid, nor will the "849" patent. [Patent] [Neonode] [Link]

Sony Buys Ericsson Patents and Holdings for $1.5 Billion

  • Sony Ericsson has ended its joint venture and the 2 companies will go their separate ways. Sony paid Ericsson nearly $1.5 billion for the mobile phone joint venture, which will give Sony rights to smartphone patents held by Ericsson. Sony now expects to try to increase their market share. Sony held a market share of 11 percent (by value) in the Android phone market in the last quarter, representing 80 percent of the company's third quarter sales. 2011 has been the year of billion dollar patent deals, and it can be expected that many more patent deals relating to smartphones will be made in the future. [Link] [Link]

Call for Papers!

  • The Third Annual Special Issue and Symposium for the Review of IP law (RIPL) will take place on April 19, 2012 in Chicago. The general theme will be "IP Law of China and the US" and subthemes cover the implementation of the new Chinese patent, copyright and trademark laws and theoretical or practical aspects of the cooperation of the IP laws of the US and China.


    The Special Issue and Symposium aims to gather professional and scholars from many disciplines including IP, international law, international business, ethics, and economic theory. The Symposium will bring an inspiring group of individuals to publish their writings and present their works at the symposium. [Link]


Patent Jobs:

  • Apple is seeking a patent portfolio manager, with a minimum 5 years of patent preparation experience. [Link]
  • Klarquist Sparkman, LLP is searching for litigation associates with 1-2 years of experience in IP litigation. [Link]
  • Klarquist Sparkman, LLP is looking for a biotechnology patent associate or patent agent with 3+ years of experience. [Link]
  • Bacon & Thomas is seeking a patent attorney with 1-4 years of experience and a mechanical or electrical background. [Link]
  • Global Patent Group is searching for a patent attorney or patent agent with a background in plant biology and a Ph.D. [Link]

Upcoming Events:

  • On October 28, the Annual Utah Cyber Symposium will take place. The Symposium will provide business and legal decision-makers in attendance from the business, academic, and legal communities a forum to learn more about legal and business challenges and opportunities facing the high tech industry today. Key business and legal leaders will instruct on how to improve your professional performance and bottom line, including the DOJ, Venture Capitalists, Professors, Business Leaders and Leading Attorneys. [Link]
  • The Chicago-Kent Intellectual Property Law Society is hosting the "Patent Wars Round Table" on November 2, 2011 at 5:30 PM. The event will include a panel discussion on current trends in IP law, namely, the recent paradigm shift in patent strategy and valuation in mobile device companies. Panelists include David Ruder of RPX, Ragnar Olson of Global IP, John Paniaguas of Katten Muchin, and Pat Burns of Greer, Burns & Crain, and will be moderated by Professor Christopher Seaman of Chicago-Kent. Cost is $20 and includes open bar and appetizers. [Link]
  • K&L Gates is holding a free webinar on Nov. 3 entitled "How the Patent Reform Act will Impact Your Business." The Act includes many changes, large and small, affecting subjects as far-reaching as the available appeals from reexaminations to the subject matter eligibility of tax planning methods and human organisms. The webinar will include a presentation and question and answer session. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 4th. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

Contact with leads for future Bits and Bytes.


62 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 62

    Ok, but if a claim limitation is not functionally related to the claim as a whole, the claimed subject matter may be non obvious, but not because it is technically better.

    When we talk about these matters, we all approach the topic with certain assumptions in mind.  I think this just might be such a case.

    Sent from iPhone

  2. 61

    You know, Malcolm, your thinking is consistent with the thinking of the AIPLA patent law committee back in the mid-90s which voted for an amendment to section 112, paragraph 6, and section 282, to the effect that even means plus function claims should be literally construed to cover all apparatus, etc., that performed the recited function with the caveat that the full scope of the claim had to be enabled, and with a further caveat that the reverse doctrine of equivalents would be officially recognized in section 282.

    You would apply this thinking to all generic terms in claims.  It seems to be your position that generic terms should be construed broadly to cover everything their ordinary meaning suggests, without limitation to specific embodiments.  This
    would leave it to the defense to prove that the full scope was not enabled, or their accused device was not an equivalent.

  3. 60

    It seems that the courts do want to provide a narrower construction to preserve validity. This is another way to say they will confine the claims to the disclosed invention.

    It’s also another way to see that they will impermissibly read limitations from the specification into the claims so that the claims read only on the working examples. As I recall, this approach was heavily criticized before and after Phillips, by numerous judges, applicants and attorneys, for sound reasons that are easy to understand.

    At the end of the day, the claims define the invention, not the specification. The point of intepreting the claim terms in light of the specification is not to understand “what the applicant would have claimed had the applicant been using his/her brain and considered what was in the prior art and what was enabled.” The point is to clear up ambiguity when ambiguity exists (inherently, or by virtue of it being introduced after the fact by one of the parties during claim construction), e.g., if an unmodified generic term was used by the applicant to dicuss a broad genus but the same generic term was modified when used by the applicant to discuss a narrower genus, then honesty, fairness and consistency (justice?) suggests that when the unmodified term appears in a claim, the term has the broad meaning.

  4. 59

    On the support question, if I claim body in claim 1 and wherein the body of claim 1 is one piece in claim 2, claim 1 implicitly includes multi-piece bodies.  Multi-piece bodies are an infringement.

    Now suppose for the sake of argument that the specification neither describes nor enables a multi-piece body?   

    I think you see that the claim 1, via claim 2 broadening, is claiming subject matter neither described nor enabled.  The claim is invalid, IMHO.

    It seems that the courts do want to provide a narrower construction to preserve validity.  This is another way to say they will confine the claims to the disclosed invention.

    However, I see value in simply construing the claims the way they are written and then separately deciding the support issue.  

  5. 58

    OK. Then, good, we are all of one mind. Can we agree though, that the bigger the technical effect, the harder it will likely be, to dismiss the claimed subject matter as obvious?

  6. 57

    Still? No, I think not. What do you mean by:

    “MaxDrei’s and my point about the Y and Y’ each being patentable merely by being different”

    I never said that bare novelty was enough. Is that what you are saying here? It seems so. That can’t be right, can it?

  7. 56

    Hi Lawrence,

    Thanks for the excellent scrubbing of “Sarah’s” spam. Can you please do the same with “FADS, SIDS, WHATEVER”? Same with McCracken and Shilling’s trolling directly upthread.

    Thanks. I realize this is extra work for you but I suspect it will pay off over time.

  8. 55

    At least from the Moore/Rader dissent, which you approve, I think your answer is yes: Construe the claims as a whole, and if they are invalid, so be it.

    My answer is “yes”, Ned, because that’s the law according to Phillips. Claims are invalidated all the time under 101, 102, 103 and/or 112, after they have been construed and precisely because of the way they were construed. As it should be.

    Except for this comment, I’m not going to rehash the discussion with you because you appear to have a deeply held philosophical view about the purpose of claims that is inconsistent with the holding in Phillips. You’re entitled to your views, of course! 😉

    If the specification discloses one example that works, but the claim claims a genus, is the claim supported? The answer is or at least should be no.

    I believe the answer to that question depends on details that you have not provided with your hypothetical.

    The reasoning in Retroactive suggests that if I claim “Every object in the world,” then the term “every object” should be construed to mean “the object XX, as taught in the single Example of my specification”, even where I claim “the object is not YY” as a dependent claim, and even where it’s clear from the specification that I understand the term “object” to encompass numerous objects because when I want to discuss specific objects I qualify the term (e.g., object XX”, “object YY”).

  9. 54

    He was not arguing to eliminate obviousness, just that it does not need to be an advantage.

    Technical novelty is important, not technical advantage. My method could be comparatively rube-goldbergian, but it still should be still patentable if novel and non-obvious.

  10. 53

    Thank you Ned for apologizing and realizing that you were trying to make the wrong point. I appreciate you now seeing MaxDrei’s and my point about the Y and Y’ each being patentable merely by being different.

    MaxDrei, are we still on for our game of squash?

  11. 52

    Anon, “different solution to the same problem” implies that both inventions occurred at approx. the same time, and neither are prior art to the other.

    I am not talking about that. You are.

    Except that’s not what I am talking about at all. There is no implication on timing, or on prior art.

    The fact is that different solutions to the same problem not only can, but are patentable, each in their own right. Such breadth of solutions promote the progress – and always have under US law.

    Before asking me to see the difference, remove the log from your eye.

  12. 51

    Anon, another try at my point.

    Assume problem X and solutions Y and Y’, Y’ later. Both could represent patentable solutions to problem X, but if Y is prior art to Y’, Y’ must additionally be patentable over Y.

    This is my point.

  13. 50

    Anon, "different solution to the same problem" implies that both inventions occurred at approx. the same time, and neither are prior art to the other.
    I am not talking about that.  You are.
    I am talking about the first solution being prior art.  The second invention must be patentable over the first.  It simply cannot be a differenct solution to the same problem faced by the patented first invention.
    See the difference?

  14. 49

    I was referring a certain computer company who liked Blue computers.

    If they’re getting patent claims to cover their own products, they’re missing the point in a big way.

  15. 46

    Shall we recognize that the facts are the original facts and note that the goal posts have not moved (only the perspective of recognizing that more one tenet of law may apply to the given situation)?

    This is hardly a “hypo” – this is an actual given case. Try a little research and understanding before shooting off your mouth, and you won’t have to dance so much afterwards.

  16. 45

    Rich wrote the statute

    Well then he obviously had a much better view of what the law meant, didn’t he?

  17. 44

    But the design-around should not be trivial. There has to be real invention.

    Sounds a bit fishy and a bit too much like the old “flash of genius” style of thinking. Who exactly decides what is or what is not “trivial”? What does “‘real’ invention” mean? An alternative is just as “real” as the first invention, no?

    I am looking at this from beyond the instant claims – from a policy perspective.

  18. 41

    Not really.  I was referring a certain computer company who liked Blue computers.  I would put it past them to require all their computer claims to have the color blue in them just in case they needed to argue some limitation not found in the prior art.

  19. 40

    If the specification discloses one example that works, but the claim claims a genus, is the claim supported?

    Are original claims still a part of the specification?

    Did the Aried case move “possession” out of the original claims such that no (original) claim can be self-enabling?

  20. 39

    Sorry Ned but good for Judge Rich, I say. An environment in which tribunals and courts announce that it is obvious because I say it is obvious is appalling. We should stick to the statute. If your claimed subject matter is i) within the useful arts ii) embracing nothing that is old iii) enabled over the width of the claim and iv) embraces nothing that is technologically obvious, then you should get your patent.

    German law pre EPC had a requirement for “technical progress”. That got stamped out by the EPC, in 1973.

  21. 38

    Oops. Sorry about that. Yes, indeed, sounds like a funny little animal. What a laugh. Thanks for the correction, Crank.

  22. 37

    Ned, of course you are right that, if visual feedback as ratification is indeed well-known, then that notoriety could provide more than enough of a hint or suggestion in the state of the art, that Europe needs to establish that the claimed subject matter was obvious.

    I was less concerned to pass judgement (Obvious Y/N) than to reveal the logical path that leads to the judgement. so, I’m a bit hurt that you dub me “cynical”.

    Incidentally, I’m intrigued by your reference to “blue” Are you recalling the patentable and patented “blue squash ball” example that featured here some years ago?

  23. 35

    Anon, designing around has long been recognized as a benefit of the patent system. But the design-around should not be trivial. There has to be real invention.

    In the present case, if Neonode had taken out a patent on the swipe/unlock, Apple should not be granted a patent on the same invention by including well known features such as moving an image in response to motion, that is, unless the moving of a image provided some unexpected advantage.

    I am not so cynical as MaxDrei this issue.

  24. 34

    Malcolm, if “body” must be construed to mean one or more pieces and the specification does not disclose one or more pieces, is the claim without support?

    If the specification discloses one example that works, but the claim claims a genus, is the claim supported?

    The answer is or at least should be no.

    If the parent claim claims “body,” and the dependent claim 2 claims one piece, implying the parent is multi-piece, claim 2 might be valid, but perhaps not claim 1. Must we construe claim 1 in a manner to render it invalid?

    At least from the Moore/Rader dissent, which you approve, I think your answer is yes: Construe the claims as a whole, and if they are invalid, so be it.

  25. 33


    One point to keep in mind – the identifiable advantage may be merely providing a mere alternative, as MaxDrei correctly notes.

    Breadth of any alternatives has always been recognized as a form of promoting the useful arts in the US.

  26. 32

    It has been noted that the “empty wagon” crowd post 60% of messages directly and that an additinal 30% are in response to that “craziness.”

    But this is as desired, as this is the Shilling Grounds.

  27. 30

    Giants among us?
    They say Government is to big? Not in this area. I think the DOJ needs to hire those young Students that can’t get work. I think they need to strengthen the system just as the USPTO strengthens its force. You can’t have a strong System without the check and the balance.

  28. 29

    NeoNODE, Max, not Neotode. Neotode sounds like a mispronounced worm. Or a new type of amphibian.

  29. 28

    But visual feedback is a known requirement for effective gestures.

    Varying the detail of the same solution in obvious ways cannot be patentable.

    Sent from iPhone

  30. 27

    One can increase the granularity of the change until the point of non obviousness is reached.  However, unless the change provides some identifiable advantage, it should not be patentable.

    Example, specifying the new computer might be blue might not be obvious, but if the blue computer is technical the same as the grey computer of the prior art, the blue computer should not be patentable.

    Sent from iPhone

  31. 26

    Ned if you take the Apple claim and read it as a list of features, how many of them can you find in Neotode. The ones not in Neotode are those that give the claim novelty over Neotode. At the EPO they follow the words “characterized by”.

    To find out if this difference from Neotode is “a difference that makes a difference” we need to enquire what technical effects (if any) it delivers, that Neotode does not deliver.

    Even if there is no performance enhancement, the claimed subject matter will at least still offer an alternative to the Neotode way.

    Even a mere alternative is patentable at the EPO, if the state of the art offers no hint or suggestion to adopt the characterizing feature when one is seeking a mere alternative to the Neotode way.

    Apple’s patent lawyers will have no difficulty explaining how the effect delivered by their claimed invention is a “technical” effect and a performance enhancement over Neotode, even while the EPC has “the presentation of information” as non-eligible. Moving the icon with the finger yields a trace across the screen, that proves to the finger-wielder that the wielded finger really has interacted with the machine ie that the wielder is pressing hard enough. That tactile feedback is a technical improvement on Neotode, isn’t it?

    The interesting thing is how Nokia can oppose the Euro-patent, bearing in mind that they must have a huge portfolio of Euro-patents on their own such inventions.

  32. 25

    Kudos to Rader and Moore for dissenting with respect to the denial of the panel rehearing.

    There were at least two non-101 CAFC cases begging to be overturned. This was one of them. The other is Genetics Institute v. Novartis.

  33. 24

    Dennis or Lawrence-
    I haven’t been following the blog that frequently, but have you guys already featured this paper: “The Giants Among Us” by Robin Feldman and Thomas Ewing? It’s about Intellectual Ventures and other large trolls (er cough I mean “intellectual property warehouses”) and I think it deserves its own post. It’s an interesting read.

    link to

  34. 23

    Who cares if there is a technical advantage? New, novel, and non-obvious. Doesn’t say better, more efficient, and providing a technical advantage.

    Better question is why our law student author feels compelled to randomly grab smartphone patents every week as if he’s Malcolm. We all know the USPTO is a first filter for those technologies. A bunch of 26 year old Examiners who have just been promoted to GS-12 have a lot of cases to get out the door. Some are well examined, some are not. Get over it.

  35. 22

    Max, I find it interesting that the posters there focused instantly on the “triviality” issue, and the disrespect people of technology have of the USPTO.

    The problem is not however with the USPTO. It is with 35 USC 103 as envisioned by Rich. He, among others in the bar, was heavily critical of Cuno Engineering and the flash of genius language that case contained. But he was generally hostile to any requirement of patentability beyond obviousness. He wanted to divert attention away from a more subjective assessment of any requirement that the degree of advance in the art be non trivial. If it was different and non obvious, it was patentable even if it did not represent any technical advance or solve any known problem in the art.

    Such as the moving of an image in the present case.

  36. 21

    Just comparing the prior art Neonode to the claims, it appears Neo did not move an image as required by the claims.

    Moreover, the very same gestures per se are old and for the same purpose.

    Moving a image — in combination with the same prior art gesture that was used by the prior art to unlock a touch screen display is the point of novelty.

    I wonder what technical advantage that has over the prior art gesture?

    Moving an image.


    Does anyone have any idea?

  37. 16

    Malcolm, without solving a known technological problem, the claims seem without technical significance. While the method may be unknown and may be unobvious, they are nonetheless trivial. Such inventions reduce patents to mere copyrights in that bare novelty is all that is required to obtain a patent.

    The EPO and the US Supreme Court would happily dispose of claim that have no technological significance. Unfortunately, we have the problem of Judge Rich again, who wrote the ’52 with the specific purpose of reading out of patentability any non triviality requirement.

  38. 13

    1. A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising:

    detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image;

    continuously moving the unlock image on the touch-sensitive
    display in accordance with movement of the contact while
    continuous contact with the touch screen 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 unlocking the hand-held electronic device if the moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch-sensitive display.

    Seven inventors listed for this p.o.s.!

    Can anyone explain why this method isn’t obvious in view of prior art touch screens in combination with the trillion other methods of altering the functionality of a computer with a graphical user interface?

  39. 12

    From the IPKat blog, I gather that the first Apple patent (more specifically the EPO patent family member) was asserted in Holland against Samsung. S cited the Neotode and the Dutch court found the asserted claims obvious.

    So presumably A reported the art to the USPTO, and the USPTO issued the continuation with full knowledge of the Neotode prior art.

    So presumably the continuation is entitled to its Presumption of Validity (c+c and all).

  40. 10

    And why is this discussion off thread.

    Seriously? That’s easy: your comment of “clear and convincing.”

    As to your admonition of “shouting ‘do your job’ ” and “enforcing,” well, the point of my post is to curb your wayward tendencies of bandaging elbows and have you instead spend your considerable insight on the actual problem. Try rereading my post all the way through and thinking about what I said instead of the gut-reaction “someone’s picking on me.” I am sure you can figure out why someone is picking on you.

    Or does your Shilling not allow you to see the obvious?

    (that’s rhetorical, by the way)

  41. 9



    You’ll want to change that if you want the term to be meaningfully searchable.

  42. 8

    So, TSSC, was the examination here “inadequate” in any way? I don’t see why.

    And if it was, and if you were Commissioner, how would you “enforce” adequacy? Perhaps by shouting “do your job” ever louder at your examiners?

    It is easy enough now for contributers here to shout “NOT NOVEL: see NEONODE M1M” , but would have been more or less impossible for any PTO Examiner, back then, to arraign the Applicant with the facts of a product launch that occurred just before the date of the claim. That would be so, regardless how high you set the searching budget, and regardless how generous you had been with hours allotted to each application you had allowed your Examiners.

    And why is this discussion off thread. What else did Higgins want?

  43. 7

    Well MaxDrei, if you insist on introducing your pet canards, there is no doubt that we will have another multi-hundred thread stomping of those canards.

    “clear and convincing”

    The answer to the problem of inadequate examination is not to lower the standard of the end product, but rather, to enforce the standard of the examination.

    You are aiming at the wrong thing.

    Of course, you already knew that, but your Shilling leads you down a path that does not actually address the real issue. And without addresing the real issue, all you are doing is putting a band-aid on.

    Funny thing about this situation is that you are putting a band-aid on the left elbow while the patient is bleeding from the gut.

  44. 5

    What is suggested here as prior art is not a Patent Office publication. How is the poor PTO Examiner supposed to search for such art? How does a Presumption of Validity at the “clear and convincing” standard sit with arts in which the closest art is a product rather than a patent publication?

  45. 4

    The Neonode N1m was available by April 2005 and was a slight variation on the previously available N1, adding a megapixel camera (link to So, the Neonode itself is prior art before December 25, 2005.

  46. 2

    Crank, how do you know what Lawrence “meant”? For acts of manufacturing, in the field of smartphones, the patent might be a problem. If that is what he “meant”, then manufactures is right and manufacturers not.

    Remember the ludicrous VS thread? (Or perhaps you prefer no to). I wonder, could this new (and just as silly) argument possibly produce 400+ postings? I do hope not. But let’s see. With the readership here, anything’s possible.

  47. 1

    “Almost every touchscreen smartphone manufactured, uses slide to unlock technology. It seems like the Apple patent, could potentially be a problem for smartphone manufactures.”

    Please learn, how, to use commas, correctly.

    Also, plaese poorf raed – you meant to type “manufacturers”, not “manufactures”.

    (My team lost yesterday, I’m really cranky.)

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