Thursday, May 9, 2013

UK appeals court affirms one claim of Apple's touch event patent -- but does Android infringe?

This is my second post on a UK ruling in three days. The previous one was about FRAND rate-setting. Now a May 3 ruling on an appeal by Apple against a declaration of invalidity (with respect to the UK) of several claims from two of its European multitouch patents has also been published. The patents at issue are EP2098948 on a "touch event model" (a multitouch-related application programming interface (API) patent) and the slide-to-unlock patent, EP1964022.

For the procedural background, this appeal to the England and Wales Court of Appeal technically relates to parts of an Apple v. HTC decision by the England and Wales High Court, but due to the Apple-HTC settlement, Apple was no longer pursuing its infringement contentions: it focused exclusively on validity (since this would also affect assertions against other Android device makers). Under the same deal, HTC lost its interest in this issue. HTC would even benefit (though it wouldn't say so in public) from Apple's successful assertion of these patents against other Android device makers (i.e., HTC's most direct competitors). In order to ensure that the process isn't too lopsided, the Comptroller of Patents (the UK equivalent of the Director of the U.S. Patent Office) was invited "to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register". The court thanks the Comptroller -- and acknowledges Apple's cooperation with him as well.

The outcome is that the two relevant claims of the slide-to-unlock patent (claims 5 and 17) were declared invalid once again, as was claim 1 of the touch event patent, but claim 2 of the touch event patent has been "resurrected". The whole purpose of the UK case was to influence decisions in other European jurisdictions. That's why HTC brought it. Apple then counterclaimed, but it all started because HTC was looking for favorable persuasive authority. So let's look at the implications for other European cases.

Touch event model

If Apple could enforce the touch event API patent against Google's Android mobile operating system, then it would have significant leverage because a workaround would likely require a large number of Android applications to be rewritten in order to run on a modified version of the operating system.

This was the only patent declared invalid by Justice Floyd for being a software patent. But the appeals court thinks that European law in that area is not clear, and to the appeals court it appeared technical enough not to be invalid for just being a software patent. Claim 1 was, however, still invalidated for obviousness. Claim 2, which is slightly narrower, is valid in the UK appeals court's view.

Apple has not been able to prove this patent infringed by Android in any European jurisdiction so far, though it may still be appealing those decisions. In my opinion Apple's infringement theories are somewhat aggressive but not unreasonable: they actually make a lot of sense from a functional point of view, but a more literal interpretation of the claims makes Android's touch event flags fall outside the scope of the patent. Negative infringement rulings came down in the UK (as I explained above, not at issue in this appeal due to the Apple-HTC settlement), Germany (with respect to Samsung and Motorola), and the Netherlands (Samsung).

As an Android device maker I would definitely prefer to have a license deal in place with Apple because if an appeals court in a major market like Germany takes a more functional perspective (which would make sense from a programmer's vantage point), then this patent will cause quite some problems. After a string of negative findings by lower courts such a reversal of fortune may not appear very likely, but even if the risk was only 5%, that's a significant risk if the impact would be devastating.

The primary battle over the validity of this patent is being fought at the EPO, where Samsung, Motorola and HTC opposed the grant. EPO patents can be challenged in opposition proceedings if a party opposes within nine months of grant. HTC has obviously dropped out of this fight, but Samsung and Motorola will keep it up.

Slide to unlock

The slide-to-unlock patent was recently declared invalid (retroactively from the moment of its grant) by Germany's Bundespatentgericht (Federal Patent Court). Apple is presumably already appealing this decision to the Bundesgerichtshof (Federal Court of Justice). The fact that it has lost both rounds in the UK (with the Neonode N1m phone being the key prior art reference just like in Germany) doesn't bode well for the German appeal, but the UK decision isn't binding precedent for the BGH.

In August 2011, a Dutch judge was first to doubt the validity of the slide-to-unlock patent. A preliminary injunction was granted over a different patent, but denied over this one.

This patent has also been difficult for Apple to prevail on with respect to infringement. It scored a partial win against Motorola Mobility in Munich and lost against Samsung in Mannheim. It was on the losing track against HTC in Munich before the settlement.

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