Sean O’Kane

Sean O’Kane

John Brunner

John Brunner


Over the past year IP news has been dominated by a series of ongoing disputes between Apple and other major players in the smartphone market, known as the "smartphone wars". Cases against Samsung have been heard in the United States, Germany and the Netherlands. HTC has also faced similar actions in the United States. More recently, the United Kingdom has been the scene of similar litigation. Apple, Inc v HTC was heard in the UK Patents Court and concerned four European (UK) patents held by Apple. Three of these patents were found to be invalid by the judge, who also held that HTC did not infringe the fourth patent.

HTC had initially applied for revocation of three of the patents. In response, Apple sued HTC for infringement of all four patents. HTC counter-claimed for revocation of the fourth patent. In addition to validity, "excluded subject matter" and the statutory provisions against patenting such subject matter were considered.

The first patent concerned a particular implementation of “multi-touch” gesture-based interfaces now commonly used on smartphones. The inventive concept behind this multi-touch patent was held to be in determining whether a particular view on a screen could be configured as a multi-touch view or a single-touch view. This was held by the judge to be obvious on the ground that a skilled person tasked with designing an operating system for a multi-touch device would arrive at the invention. The patent was also struck out for excluded subject matter. As determined by the judge, the patent's downfall lay in the fact that it was the only patent of the four with a claim not tethered to a real-world effect (eg, responding to a gesture or sending an SMS). HTC was also found not to infringe this first patent, a similar conclusion having been reached in a case brought by Apple against Samsung in the Netherlands. This similarity was noted by the judge as “pleasing”.

The second patent concerned the "slide to unlock" feature familiar to many users of Apple iOS products. Points of claim construction were seen to be consistent with a Samsung case heard in Germany. Three particular implementations of the slide to unlock functionally in HTC devices were alleged to infringe. However, only one of HTC's implementations was found to infringe. In considering validity, the judge heard evidence from an expert witness in the field of human computer interaction (HCI). In the end, the patent was found to be anticipated by an earlier publication, and obvious starting from both a HCI conference video and paper and an earlier available handset with slide to unlock functionality. Interestingly, the invention defined by the patent was deemed not to be excluded from patentability since it was said to offer a real-world effect in the form of an “improved switch”.

The third patent concerned the “bounceback” effect now seen in more recent versions of Apple's iOS when swiping an image to translate to a neighbouring image. This concept was found to be inventive over an earlier published Patent Cooperation Treaty (PCT) application which concerned navigating webpages on a small screen. In contrast to the PCT publication, this third patent concerned a zoomed-in image which was deemed to represent a complex evolution over the web page-based system disclosed in the PCT application, and as such was considered to be inventive. It was on this same point of construction that HTC was held not to infringe the first claim. In HTC's implementation, when a zoomed-in image was swiped the image stopped dead when the edge of the image was reached. There was no bounceback effect. Again, this second patent was deemed not to be excluded from patentability since its invention was considered to help with manipulation of a zoomed image involving gestures having different effects.

The final patent concerned a method of changing the language assigned to keys to offer multilingual SMS services. This particular patent had a priority date of 1994, but was found to be obvious in view of a standards document in relation to an Arabic SMS service. The patent also had independent claims directed to automatic language selection based on the user’s home SIM card. This too was found to be invalid. What was interesting about this finding was that it was based on the combination of the standards document in relation to an Arabic SMS service and an earlier handset which picked the phonebook entry language based on the SIM present, even though this latter phone was not considered part of the common general knowledge. The SMS messaging capability of this patent took it outside the computer sufficiently to avoid the statutory exclusions from patentability.

This case is notable for being one of the first UK cases in the transnational smartphone wars to receive judgment. Perhaps unsurprisingly, the judgment reaffirms the high standard of patentability required for patents in the United Kingdom. For inventions involving only minor developments in smartphone user interfaces, it could be said that the UK courts will not look favourably on patents for such inventions. Moreover, the different approaches by which an invention might be deemed to be excluded from patentability by the European Patent Office and the UK courts are apparent; in particular, the judgment reaffirms that the tethering of a computer-implemented method to a real-world effect is necessary to escape the exclusions from patentability.

For further information please contact:

John Brunner
Carpmaels & Ransford LLP
www.carpmaels.com
Email: email@carpmaels.com
Tel: +44 20 7242 8692