Tuesday, October 1, 2013

Apple fights for broadest "data tapping" patent claims, appeals USPTO decision to Federal Circuit

Earlier today I gave an overview of how the U.S. government shutdown affects the ongoing smartphone patent disputes. There are some effects on certain cases, but also progress in other areas. For example, Apple filed an appeal today with the United States Court of Appeals for the Federal Circuit against a USPTO decision concerning U.S. Patent No. 5,946,647, a patent that I often refer to as the "data tapping" patent. To be precise, the patent claims don't say anything about "tapping" per se -- it would also cover "clicking" on telephone numbers in an email, for example, or the use of a Galaxy Note stylus. But "tapping" on such data is what users of smartphones and tablet computers typically do.

This is not an iPhone patent: it was filed in the mid-1990s in connection with Macintosh software. But it's pretty useful now in smartphone patent litigation. Apple has, in fact, asserted it against all four major rivals with whom it has been or (in two cases) continues to be embroiled in litigation: Nokia, HTC, Motorola, and Samsung (in chronological order of the filing of the related complaints).

After Nokia sued Apple in 2009, Apple countersued over various patents including this one. Shortly thereafter, an ex parte reexamination was requested against this patent in October 2010, most likely by Nokia though HTC (or Google) could also have had a hand in it. Nokia and Apple settled in June 2011 (Apple describes this settlement as merely a provisional standstill agreement) before any ruling on the "data tapping" patent. In December 2011, the ITC granted Apple a U.S. import ban over this patent against HTC; that dispute was settled less than a year later but the license Apple extended to HTC comes with an anti-cloning provision. Motorola Mobility sued Apple in October 2010, and after some procedural twists and turns Apple wanted to take this patent to trial against the then-Google subsidiary in June 2012. Judge Posner dismissed the case, but it looks like Apple win finally get its Chicago trial on remand. And this patent is still on Apple's shortlist for the March 2014 trial against Samsung (in the second California litigation between those parties).

It's true of most patents that claim 1 is the broadest claim, but it's not required by the law and there are exceptions such as the data tapping patent. Independent claims 13, 14 and 15 of the data tapping patent, and some of their dependent claims, are actually broader because they lack certain claim limitations such as an analyzer server and a user interface. The analyzer server has been at the center of certain non-infringement contentions by defendants. The aforementioned ex parte reexamination that I believe resulted from an initiative taken by Nokia, HTC or Google resulted in the USPTO's rejection of claims 13 and 15-31. In June, the Patent Trial and Appeals Board (formerly called Board of Patent Appeals and Interferences) affirmed this rejection against an appeal by Apple. Today Apple has appealed the USPTO ruling to the Federal Circuit.

While it would give Apple additional leverage over rivals to salvage one or more of the broadest claims, the claims that have survived are already useful to Apple in any event. The import ban against HTC was based on claims 1 and 8. In the "Posner appeal", Apple focused on claim 1. The shortlist in the second California case against Samsung includes claims 1, 4, 6, 8, and 9. Apple's pending assertions of this patent don't depend in any way on the outcome of the Federal Circuit appeal -- but if a broader claim than claim 1 survived, all future infringement claims over this patent would be slam dunks, and the patent would be even harder to work around (except for removing the protected functionality altogether).

It's now October 2013 and an October 2010 reexamination request still hasn't been adjudged. It's now going to take about a year before the Federal Circuit rules on this case. In case it remands it to the USPTO, things will take even longer. This is an example of how long reexamination takes if a patent holder is prepared to exhaust all appeals.

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