03/19/14

Apple Inc. v. ITC: The Importance of Secondary Considerations in Obviousness Analyses


Category: 103 
 
 
 
 
 By: Eric Paul Smith, Contributor  
 
TitleApple Inc. v. ITC, No. 2012-1338 (Fed. Cir. Aug. 7, 2013).
IssueThe Federal Circuit is reviewing (1-2) whether the ITC properly determined that U.S. Patent No. 7,663,607 (the “‘607 Patent”) was obvious in view of the prior art and whether the ITC properly determined that the ‘607 Patent was anticipated by U.S. Patent No. 7,372,455 (“Perski ‘455”), and (3) whether the ITC properly determined that Motorola did not infringe U.S. Patent No. 7,812,828 (the “‘828 Patent”).
Holding
(1-2) “[S]ubstantial evidence supports the ITC’s finding that Perski ‘455 anticipates claims 1-7 of the ‘607 patent. The ITC’s decision that Perski ‘455 anticipates claim 10, however, lacks substantial evidence.” Apple at *10. “[T]he ITC fact findings regarding the scope and content of the prior art . . . are supported by substantial evidence[, but] remand so the ITC can consider that evidence in conjunction with the evidence of secondary considerations [...].” Id. at *17-18.
(3) “[T]he ITC erroneously construed the ‘mathematically fitting an ellipse’ limitation [...].” Id. at *19. “[The Federal Circuit] vacate[s] [...] and remand[s] the case to the ITC to consider in the first instance whether the accused products infringe under the correction construction [...].” Id. at *20.
 
Procedural History“Apple appeals from the final decision of the [ITC].” Apple at *2.
 
 
 
Legal Reasoning (Moore, Linn)
Background
‘607 Patent: Claim 11. A touch panel comprising a transparent capacitive sensing medium configured to detect multiple touches or near touches that occur at a same time and at distinct locations in a plane of the touch panel and to produce distinct signals representative of a location of the touches on the plane of the touch panel for each of the multiple touches, wherein the transparent capacitive sensing medium comprises:

a first layer having a plurality of transparent first conductive lines that are electrically isolated from one another; and

a second layer spatially separated from the first layer and having a plurality of transparent second conductive lines that are electrically isolated from one another, the second conductive lines being positioned transverse to the first conductive lines, the intersection of transverse lines being positioned at different locations in the plane of the touch panel, each of the second conductive lines being operatively coupled to capacitive monitoring circuitry;

wherein the capacitive monitoring circuitry is configured to detect changes in charge coupling between the first conductive lines and the second conductive lines.
‘607 Patent:
Claim 10

10. A display arrangement comprising:

a display having a screen for displaying a graphical user interface; and

a transparent touch panel allowing the screen to be viewed therethrough and capable of recognizing multiple touch events that occur at different locations on the touch panel at a same time and to output this information to a host device to form a pixilated image;

wherein the touch panel includes a multipoint sensing arrangement configured to simultaneously detect and monitor the touch events and a change in capacitive coupling associated with those touch events at distinct points across the touch panel; and

wherein the touch panel comprises:

a first glass member disposed over the screen of the display;

a first transparent conductive layer disposed over the first glass member, the first transparent conductive layer comprising a plurality of spaced apart parallel lines having the same pitch and linewidths;

a second glass member disposed over the first transparent conductive layer;

a second transparent conductive layer disposed over the second glass member, the second transparent conductive layer comprising a plurality of spaced apart parallel lines having the same pitch and linewidths, the parallel lines of the second transparent conductive layer being substantially perpendicular to the parallel lines of the first transparent conductive layer;
a third glass member disposed over the second transparent conductive layer; and

one or more sensor integrated circuits operatively coupled to the lines.
‘828 Patent:
Claim 1
1. A method of processing input from a touch-sensitive surface, the method comprising:

receiving at least one proximity image representing a scan of a plurality of electrodes of the touch-sensitive surface;

segmenting each proximity image into one or more pixel groups that indicate significant proximity, each pixel group representing proximity of a distinguishable hand part or other touch object on or near the touch-sensitive surface; and

mathematically fitting an ellipse to at least one of the pixel groups.
Anticipation of the ‘607 Patent by Perski ‘455
Adequate Support of the ‘607 Patent by Its Provisional“[S]ubstantial evidence supports the ITC’s determination that the disclosure in [U.S. Provisional Patent Application No. 60/446,808 (“]Perski ‘808[“)] provides adequate written support for Perski ‘455.” Apple at *7. “Nothing in the record supports the dissent’s view that the scanning algorithms in Perski ‘808 could not detect multiple touches simultaneously. Indeed, the ‘faster approach’ described in Perski ‘808 is virtually identical to the scanning algorithm disclosed in the ‘607 patent.” Id. at *8 n.1.
Anticipation of Claims 1-7 of the ‘607 Patent by Perski ‘455“[S]ubstantial evidence supports the ITC’s finding that Perski ‘455 anticipates [claims 1-7].” Id. at 89. “[T]he reference also discloses a ‘faster approach’ that requires between two steps and n+m steps.” Id. at *10. “Apple fails to provide any reason why the faster or optimal approaches would be too slow or inaccurate to detect multiple touches or why the disclosure of Perski ‘455 fails to enable multiple touches [...]. [T]he scanning algorithm disclosed in the ‘607 patent is very similar to the ‘faster approach’ disclosed in Perski ‘455[, and, m]oreover, the claims of the ‘607 patent do not expressly contain a speed or accuracy limitation.” Id.
No Anticipation of Claim 10 of the ‘607 Patent by Perski ‘455Because “Perski ‘808 fails to incorporate by reference [U.S. Provisional Patent Application No. 60/406,662 (“]Morag[“)], id. at 8, and because “Perski ‘808 does not even refer to the particular functionality that detects the presence of a stylus,” id. at *9, “Perski ‘808’s reference to Morag falls short of identifying with detailed particularity the material that discloses the ‘pixelated image’ limitation in claim 10,” id. “The ITC’s decision that Perski ‘455 anticipates claim 10 [...] lacks substantial evidence.” Id. at *10.
Anticipation and Obviousness of the ‘607 Patent in view of SmartSkin
No Anticipation of Claim 10 of the ‘607 Patent by SmartSkin“[S]ubstantial evidence supports the ITC’s finding of no anticipation.” Apple at *11. “There is no disclosure that the authors had achieved a transparent touch screen and the record does not indicate that it would have been routine to do so.” Id. at *12.
Failure of the ITC to Properly Consider Objective Evidence of Secondary Considerations“We have repeatedly held that evidence relating to all four Graham factors—including objective evidence of secondary considerations—must be considered before determining [obviousness].” Id. at *14. “The ITC concluded that the ‘607 patent claims at issue would have been obvious in view of Smart[S]kin in combination with Rekimoto[, but] never even mentioned, much less weighed as part of the obviousness analysis, the secondary consideration evidence [...].” Id. at *15. While “the ITC’s fact findings regarding what the reference disclose are supported by substantial evidence,” id. at *15, “[t]he ITC erred [...] to the extent that it did not analyze the secondary consideration evidence. This error was not harmless,” id. at *16. “Apple presented compelling secondary considerations evidence that may have rebutted even a strong showing under the first three Graham factors [...].” Id. at *16.
Noninfringement of the ’828 Patent
Failure to Properly Construe the Claim Limitation “Mathematically Fitting an Ellipse”“[T]he ITC erroneously construed the ‘mathematically fitting an ellipse’ limitation. . . . That process refers to calculating the mathematical parameters that define an ellipse. . . . [Dependent claims 2 and 3] do not imply . . . a separate step of calculating the ellipse parameters.” Apple at *19. “The correct construction only requires the method to calculate the parameters that define an ellipse.” Id.
Conclusion
"For the foregoing reasons, we affirm-in-part, reverse-in-part, and vacate-in-part the ITC’s decision and remand for further proceedings." Apple at *20.
 
 
 
 
Reyna, Circuit Judge, concurring-in-part and dissenting-in-part. Apple, Reyna Op., at *1.
Invalidity of the Priority Claim of Perski ‘455“[T]he majority misapplies our requirement that the earlier disclosure comply with § 112 ¶ 1. Given the critical differences between the provisional and non-provisional disclosures, I would reverse the ITC’s finding that Perski ‘455 is entitled to the Perski ‘808 priority date [...].” Apple, Reyna Op., at *2. “The majority finds that the provisional patent application in Perski ‘808 provides adequate support for Perski ‘455, but fails to assess whether the provisional application describes how to makes and use multiple finger detection ‘in clear, concise, and exact terms.’” Id. at *4-5 (citations omitted). “During the 11 months between the time the provisional and non-provisional applications were filed, the inventors continued to refine the invention, as reflected in the extensive revisions made in filings with the PTO."  Id. at *5. “Perski ‘455 should not have been awarded the earlier provisional application date because Perski ‘808 does not indicate that the inventors knew how to detect multiple touches in February 2003.” Id. at *8.
Nonobviousness of the Asserted Claims of the ‘607 Patent“[R]ather than adopting the ITC’s determination that the SmartSkin prior art reference would have motivated one of ordinary skill in the art to combine mutual capacitance technology with transparent screens, I would hold as a matter of law that the asserted claims are not obvious.” Id. at *2. “There is no basis to conclude that SmartSkin would teach a skilled artisan the foresight to realize Apple’s desired solution when the SmartSkin authors conceded that they did not know how to accomplish a multitouch screen with transparent electrodes.” Id. at *11.
Purpose and Function of Secondary Considerations“I write separately to discuss my views as to the purpose and function of objective indicia of nonobviousness as indicators of innovation in the relevant field.” Id. at *2. “A major problem I detect in conclusions reached under § 103 is that objective evidence of nonobviousness is too often treated as ‘secondary considerations.’ In my view, objective evidence of nonobviousness is objective indicia of innovation.” Id. at 14. “I encourage courts handling patent infringement matters to treat evidence corresponding to the factors identified in Graham as strong, if not the best, evidence of innovation—i.e., the manner in which the industry and the marketplace responded to the disclosures in a patent.” Id. at 14-15.
Remaining Issues“I join the remainder of the majority opinion, including treatment of arguments relating to non-infringement of [the ‘828 Patent], construction of the claim term ‘mathematically fitting an ellipse,’ and the reasoning concluding that neither SmartSkin nor Perski ‘808 anticipate claim 10 of the ‘607 Patent.” Id. at *2.
 
 
 
 
 
 
 
 
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