Thursday, September 26, 2013

Video of Steve Jobs's iPhone presentation kills Apple's photo gallery touch patent in Germany

Steve Jobs is a named inventor of more than 300 Apple patents, and when he presented the original iPhone in January 2007, he said, "boy have we patented it!"

But Apple forgot about an important difference between U.S. patent law at the time and the patent laws of the rest of the world, especially Europe. In the United States in the pre-America Invents Act days, innovators had a twelve-month grace period to file for inventions after making an invention, and during those twelve months nothing that anyone would show publicly or publish would be eligible as prior art. In Europe, however, there never was such a grace period for patent applications, and even an inventor's own public demos could always be held against his own patents if they took place before the filing of an application. Even now, with the AIA in force, U.S. patent law has an exception in place for pre-filing disclosure by the inventor (35 U.S.C. 102(b)(1)(A)). Europe has always been stricter.

As a result of this difference between jurisdictions, the Munich-based Bundespatentgericht (Federal Patent Court of Germany) today sided with Samsung and Google's Motorola Mobility in declaring an Apple iPhone patent, EP2059868 on a "portable electronic device for photo management", invalid within the borders of Germany because a video of the original January 2007 iPhone presentation already showed the famous bounce-back effect in the photo gallery, which is what this patent is all about. The court also rejected various amended claims proposed by Apple, which were an attempt to distinguish the patent from what was shown in the video, because it found them to be, at best, obvious over the Steve Jobs video, which Google's lawyers from the Quinn Emanuel firm submitted to the court in April 2013. In other words, even an amended version of the patent would be trivial, but not over what others created before -- only over Apple's own public demo.

This is a member of the rubber-banding patent family. The rubber-banding patent itself was affirmed by the United States Patent and Trademark Office in June and is subject to an opposition proceeding before the European Patent Office, where Samsung and Google are challenging it and may very well defeat at least some if its claims based on the Steve Jobs video. The photo gallery patent is narrower than the general rubber-banding patent. It claims mostly the same priority dates, and the relevant priority date for the purposes of the German nullity case is in late June 2007 -- five months after the original iPhone demo. Earlier today I applauded Google for promoting, as part of a broadbased industry coalition, balance and rationality in connection with the rules of procedure of Europe's future Unified Patent Court, and I congratulate its lawyers on having presented the outcome-determinative prior art reference to the Federal Patent Court of Germany in the photo gallery case. For jurisdiction-specific reasons I'll explain further below, today's victory over the photo gallery patent is not only appealable but, more importantly, paves the way for successful assertions by Apple of a rubber-banding utility model against Samsung (that case was stayed in Mannheim but could be resumed soon), Motorola Mobility, and other Android device makers.

The Steve Jobs video was shown in open court but only on a laptop close to the bench. The critical part must be what you can see around 33:40 in the following YouTube video:

Apple had won a Dutch preliminary injunction over this patent against Samsung in August 2011 (affirmed in November 2012) and a Munich injunction against Motorola Mobility in March 2012 (a couple of months before the closing of its acquisition by Google), and a case against Samsung was stayed by the Mannheim Regional Court pending this nullity proceeding. The Mannheim court predicted the right outcome for the wrong reasons: as it deemed highly probable, the Federal Patent Court indeed declared the patent invalid, but not based on the prior art evaluated at the time of the infringement ruling.

When the Presiding Judge of the Second Nullity Senate, Judge Vivian Sredl, opened the hearing in the morning, the court's inclination, outlined in detail by another member of her panel, was to invalidate this photo gallery bounce-back patent due to anticipation by at least one prior art reference, "Lira" (PCT Publication No. WO 03/081458 on "controlling content display", by AOL/Luigi Lira, published on October 2, 2003), and probably also a second one, "LaunchTile" (a study sponsored by Microsoft in the middle of the last decade; video, article). The parties had been aware of the court's thinking for several months. The court's inclination upped the ante for Apple. If a patent is deemed to have been non-novel at the time of filing, the patentee has to overcome not only this assessment of anticipation but also prove an inventive step. I considered the Federal Patent Court's preliminary opinion exceedingly strict. While in favor of high patent quality, I thought that this stretched the concept of anticipation: at most, there was a question of (non-)obviousness in my view.

Apple, represented by two Bardehle Pagenberg patent attorneys (Johannes Lang, who had prosecuted the application, and Dr. Christof Karl, who is also an attorney-at-law litigating infringement cases) who were joined by Freshfields Bruckhaus Deringer IP litigator Dr. Markus Gampp, accepted -- and mastered -- this challenge. After several hours, the court agreed with Apple that the photo gallery patent -- except for its claim 1 -- was novel and inventive over "Lira" and "LaunchTile". While Judge Sredl did not refer to those prior art references when she announced the ruling in the late afternoon, I believe the court's written decision will be favorable to Apple in this regard. The patent will still be deemed invalid as granted and as amended because of the Steve Jobs video, a holding that Apple can appeal (as a matter of right) to the Bundesgerichtshof (Federal Court of Justice). But in the greater scheme of the smartphone patent disputes, Apple's achievements with respect to "Lira" and "LaunchTile" are very relevant, even though less than outcome-determinative today.

In addition to the rubber-banding and photo gallery European patents, Apple also obtained a super-comprehensive utility model, Gebrauchsmuster DE 21 2008 000 0001, which it registered with the German Patent and Trademark Office. German utility models are sort of second-class patents: they are valid for only ten years, and they are not examined. Apple asserted it against Samsung, which instigated a revocation proceeding before the German patent office. The Mannheim court stayed the case. Since utility models don't undergo any examination, they don't enjoy any presumption of validity until they survive a challenge (in all of the smartphone patent cases I have watched, only one patent granted by the European Patent Office has been found valid by the Federal Patent Court of Germany on a preliminary basis -- a Microsoft patent on multilingual computer programs -- and only one other patent survived in an amended form -- a Microsoft patent on an event management architecture; but at least there is some examination, even if it results in a majority of patents that are invalid as granted).

There are other differences between utility models and patents, and one of them limits the eligibility of prior art. Samsung and Google (and potentially other companies worried about Apple's utility model) can't hold the Steve Jobs video against it because German utility models enjoy a Neuheitsschonfrist (novelty grace period) of six months for prior public disclosure by the patentee. Also, prior art is limited by territory, though the worldwide availability of a YouTube video might overcome that hurdle.

The German patent office has not yet ruled on Samsung's challenge to this utility model. Apple can still inject into the proceedings one or more amended claims that cover what the photo gallery patent claims. The iPhone presentation video won't count because it just about falls within the novelty grace period. Samsung will have to rely on other prior art, and its best-case prior art references are Lira and LaunchTile, of which Apple convinced the Federal Patent Court today that those don't render the photo gallery patent invalid. The Federal Patent Court reviews any determinations by the German patent office. The German patent office will most likely treat the Federal Patent Court's opinion on the photo gallery patent as binding case law for the purposes of the utility model revocation proceedings; if not, Apple can always ask the Federal Patent Court to review the decision, and a panel presumably consisting of partly the same people would probably affirm the previous decision in the new context. If Apple salvages at least a photo gallery bounce-back claim at the end of those proceedings, it can ask the Mannheim court to resume the utility model infringement action against Samsung. It can also sue Google's Motorola Mobility and others, at the appropriate time, over the utility model, which will be in force until mid-2017.

That said, today's ruling shows that "boy have we patented it" was overly optimistic -- as was Steve Jobs's claim in the same presentation that the iPhone was five years ahead of the competition. As Apple found out, it took Samsung only six months to copy it -- and Samsung didn't even make the first iPhone-clone Android phones.

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