Thursday, April 4, 2013

Apple's slide-to-unlock patent invalidated in Germany (decision is appealable)

Samsung and Google's Motorola Mobility have just scored a win over a famous Apple user interface patent. The Bundespatentgericht, Germany's Federal Patent Court, ruled that all claims of EP1964022 on "unlocking a device by performing gestures on an unlock image" are invalid as granted, and additionally held that none of the 14 amendments proposed by Apple could salvage the patent.

Today's decision followed a full-day hearing before a panel of five judges (including three judges with an engineering background), which Judge Vivian Sredl presided over. It can and will be appealed by Apple to the Bundesgerichtshof (Federal Court of Justice). At the end of the hearing, counsel for Apple moved to present a couple of amended claims only with a view to the appeal. Apple, Samsung and Google already knew in December that the Federal Patent Court was inclined to invalidate this patent.

This patent isn't even remotely as strategic as it is famous. Every user of a smartphone with a touch screen needs to perform this gesture frequently, but the patent does not cover all slide-to-unlock mechanisms but only some, and Apple's rivals have all developed workarounds.

The court held that the only respect in which the claimed invention is new over the prior art -- the fact that a swiping gesture for the purpose of unlocking a device -- fails to meet the technicity requirement under European patent law. Software "as such" is not patentable in Europe unless it solves a technical problem with technical means. In this case, the mere fact that a sliding gesture has a visual representation was not deemed to constitute a technical innovation. The patent discloses elements that are undoubtedly technical, but the inventive step here (the delta between the claimed invention and the prior art) was not deemed technical -- only "software as such".

Under U.S. patent law pretty much "everything under the Sun made by Man" is patent-eligible (provided that it is new and inventive), and there is no such thing as a technicity requirement. Also, the most important prior art reference, a Swedish mobile phone named Neonode N1m that was launched approximately a year before the iPhone, may not be eligible as prior art under U.S. law.

In August 2011 a Dutch judge denied Apple a preliminary injunction over this patent because he deemed it obvious against the background of the Neonode N1m. In July 2012 HTC won a declaratory judgment by the England and Wales High Court relating to four Apple patents including this one, which was deemed obvious over the Neonode N1m.

Under Germany's bifurcation regime, infringement and validity cases are The Federal Patent Court rules only on the validity of patents, while infringement cases are brought in district courts. The district courts (Landgerichte, regional courts) stay infringement cases if they identify an infringement but believe that a parallel proceeding before the Federal Patent Court (provided that a defendant in an infringement case brought one, which is a given between such large players as in these disputes) is highly probable to result in the invalidation of the asserted patent claims.

In February 2012 the Munich I Regional Court granted Apple a (permanent but appealable) injunction against two of Motorola Mobility's slide-to-unlock implementations. The Google subsidiary appealed the decision to the Munich Higher Regional Court, which held an appellate hearing in December and will announce a decision in three weeks, which will either be a finding of no infringement or (in light of today's decision) a stay. The appeals court purposely scheduled its decision so that it would have the benefit of knowing the Federal Patent Court's decision on validity. In March 2012 the Mannheim Regional Court tossed an Apple lawsuit against Samsung over this patent, finding no infringement under its relatively narrow claim construction. In a second Mannheim case Apple asserted a slide-to-unlock utility model (a utility model is a German intellectual property right comparable to a second-class patent that does not undergo examination and therefore does not enjoy a presumption of validity) against Samsung. The Mannheim court stayed that case pending a revocation action. Considering today's ruling on the slide-to-unlock patent, it's hard to see how the much broader utility model could be deemed valid.

Dozens of smartphone-related patents are currently being challenged in the Federal Patent Court. Today's case was the first one in the current wave of smartphone patent disputes to be tried and adjudged. Next week the same court will rule on one of Samsung's standard-essential wireless patents. Many more nullity hearings relating to smartphone patents will take place this year and next unless the major disputes are settled before.

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