Friday, March 15, 2013

Google quotes Steve Jobs biography in attempt to salvage patent and win iPhone import ban

Through its wholly-owned Motorola Mobility subsidiary whose patent litigations it micromanages, Google is still trying to win a U.S. import ban against the iPhone from the United States International Trade Commission (USITC, or just ITC). An Administrative Law Judge (ALJ) twice sided with Apple on this particular patent.

Simply put, U.S. Patent No. 6,246,862 on a "sensor controlled user interface for portable communication device" covers the concept of the phone ignoring any touches (of physical keys or, in this case, the touchscreen; the patent broadly refers to a "touch sensitive input device") if the phone is held "in close proximity" to the head, just to prevent accidental actions such as the inadvertent termination (or initiation) of a phone call. I always had doubts about the validity of the patent because it's a high-level idea (as opposed to, for example, a patent on a particular proximity sensor) but I looked at this as a patent that could give Google some leverage against Apple if successfully enforced.

Judge Pender's initial determination, made in April 2012, found Apple to infringe a 3G patent but not several other patents-in-suit, including the '862 patent, which he deemed invalid for indefiniteness. Four months later the Commission, the six-member decision-making body at the top of the U.S. trade agency, reversed the indefiniteness finding and remanded the investigation (with respect to only this remaining patent-in-suit) to the ALJ. In mid-December 2012 Judge Pender made his remand initial determination (i.e., his second preliminary ruling in this case) and found the patent invalid once again, this time on the grounds of anticipation (lack of novelty) by another Motorola patent. Last month the Commission ordered a review of the remand initial determination (please check out that post for details on the issues under review and the specific risks and opportunities they present to the parties). Google's challenge is now to prove that the patent is valid and that it's infringed even under a narrower claim construction. In other words, it has to thread the needle. Apple will be fine if the patent is either still deemed invalid (on whatever basis) or if it's upheld only on the basis of a claim construction so narrow that Apple no longer infringes (or even if it infringed in the past under that construction, it will be fine if the narrower construction can be engineered around). Since the ALJ deemed the patent non-novel (as per its priority date), Apple could still get it invalidated by proving that it's at least obvious under a narrower claim construction. Anticipation means the invention as a whole (all of its limitations, i.e., elements in that particular combination) was already known on the priority date. Obviousness means that it wasn't known in its entirety but there was no inventive step involved that would justify the grant of a new patent.

Today a public redacted version of Google's opening brief in response to the Commission's review questions became available on the ITC's electronic document system. The question of (non)obviousness is, as expected, a key issue. Besides primary considerations Google also points to secondary considerations, i.e., indications that the invention really solved a problem others had failed to solve. One secondary nonobviousness consideration is acclaim. In a 2002 decision the Federal Circuit said that "[a]ppreciation by contemporaries skilled in the field of the invention is a useful indicator of whether the invention would have been obvious to such persons at the time it was made".

In this context, Walter Isaacson's Steve Jobs biography comes into play. That biography has been quoted a lot in patent litigation, but usually only the "thermonuclear war" part. Here's the related passage from Google's brief:

"Here, the technology of the '862 patent was recognized as a 'breakthrough' by none other than Apple's former CEO (Mr. Steve Jobs). On cross examination, Apple's expert, Mr. Lanning, could not deny that Mr. Jobs himself characterized the incorporation of a proximity sensor into the iPhone as a 'breakthrough' to his biographer, Walter Isaacson: '[a]nother breakthrough was the sensor that figured out when you put the phone to your ear, so that your lobes didn't accidentally activate some function.' [...] The sensor described by Mr. Jobs is the very technology that the ALJ found to infringe. [...] And there can be no doubt that this passage refers to the technology of the '862 patent: it describes a sensor that prevents the inadvertent actuation of the phone when it is put to the user's ear. The recognition that the invention of the '862 patent was a 'breakthrough' weighs heavily against a finding of obviousness, particularly since it came from Apple itself."

Assuming the quote is correct, Steve Jobs was impressed by the sensor that figured out when you put the phone to your ear. But Motorola's '862 patent is not a patent on a way to detect such proximity. The sensor that Google's (Motorola's) patent references is an "an infrared (IR) proximity detector" and "has an IR transmitting element [...] and an IR receiving element [for example, a photodiode] that are mounted side by side in the housing behind a lens". Motorola didn't invent such basic infrared technology.

Steve Jobs was certainly knowledgeable about phones sold in the market, but he wasn't aware of all patent applications, granted patents and other publications relating to proximity detectors. Chances are that he had not read even one of the prior art references relevant to this case.

The ITC's final ruling was scheduled for April 22, 2013.

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