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The Slide to Unlock Patent: A Jurisdictional Comparison

by Richard Beem, Stephan Freischem, Martin Hemmer and Jonathan Moss (AIPPI Information Technology and Internet Committee)

The interface of Apple’s iPhone is one of the most recognizable in modern technology. The simple action of sliding a bar across a screen with one’s finger was one of the key parts of Steve Jobs’ famous introduction of the iPhone when it was first launched back in 2007, with him commenting during his demonstration, “Just slide it across. Boom.” In legal circles, this iPhone feature has attracted considerable attention because the concept is embodied in a number of patents which have been the subject of litigation around the globe. This piece first considers the approach of the German courts, compares the approaches of the Netherlands, the United Kingdom and the United States.

The validity attacks on the various slide to unlock patents have come, generally, in two forms. First, there has been a standard attack alleging that the patent is not novel or is obvious in light of the prior art. Second, in some jurisdictions, there have also been arguments that the patent is invalid because it is a computer program or a way of presenting information, meaning that it is not patent eligible subject matter.

GERMANY

In August 2015, the highest German court in patent cases, the Federal Court of Justice, rendered its decision on Apple’s slide-to-unlock patent. The patent in question was EP 1 964 022 – Unlocking a device by performing gestures on an unlock image (the ‘022 patent). While the Court invalidated Apple’s patent, it clearly objected to the court of first instances’ finding that the claimed invention lacked technical character. The validity issue was instead reduced to a simple question of whether or not there was an inventive step.

European patent laws (see e.g. European Patent Convention (“EPC”), Article 52 or Article 1 of the German Patent Law) generally do not regard the following subject matter as inventions:

  1. discoveries, scientific theories and mathematical methods;
  2. aesthetic creations;
  3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
  4. presentations of information.

Such subject matter or activities shall be excluded from patentability only to the extent to which a claim relates to such subject matter or activities as such.

According to the case law of the Federal Court of Justice, a claim must contain commands that serve for the solution of a specific technical problem with technical means in order not to be considered as a program for computers as such1. Commands outside of the technical area do not fulfill this requirement ; they are only relevant if they influence the solution of a technical problem with technical means.

When assessing the inventive step of a method (including the use of a computer program or the presentation of information), only those commands that determine, or at least influence the solution of, a technical problem with technical means are considered. This test step corresponds to the test performed by the European Patent Office, whereby features not contributing to the technical character of an invention have no significance for determining whether or not there is an inventive step.

The preamble of claim 1 of the ‘022 patent comprised the following features:

  1. A computer-implemented method of controlling a portable electronic device comprising a touch-sensitive display, comprising:
  2. detecting contact with the touch-sensitive display while the device is in a user-interface lock state;
  3. transitioning the device to a user-interface unlock state if the detected contact corresponds to a predefined gesture;
  4. maintaining the device in the user-interface lock state if the detected contact does not correspond to the predefined gesture.

The Federal Court of Justice affirmed the Federal Patent Court’s holding that this combination of features was disclosed by the following text portions of a quick start guide for an early touchscreen mobile phone called the NEONODE N1:

KEYLOCK - UNLOCKING THE UNIT

The ON/OFF switch is located on the left side of the N1, below the screen.

  1. Press the power button once.
  2. The text “Right sweep to unlock appears on the screen. Sweep right to unlock your unit.

Claim 1 of Apple’s patent further comprised the following combination of features:

    5.1 moving an unlock image

    5.2 along a predefined displayed path on the touch sensitive display

    5.3 in accordance with the contact,

    5.4 wherein the unlock image is a graphical, interactive user-interface object

    5.5 with which a user interacts in order to unlock the device.

Both the Federal Court of Justice and the Federal Patent Court agreed that these further features were not disclosed in the quick start guide for the NEONODE N1.

The Federal Patent Court’s view was that these features did not determine, or at least influence, the solution of a technical problem with technical means. These features were therefore excluded from the assessment of the inventive step. Signaling the course of the unlock process by moving along the unlock image in accordance with the features 5.1 to 5.3 is exclusively directed to the user. The device itself and its technical function are not influenced. Rather, information is simply presented graphically. The user receives an optical feedback that the beginning of the unlock movement has been detected and its further execution will follow. Such a measure is not based on technical considerations or findings. Displaying a path (completely) and moving a graphical, interactive user-interface object along with the finger over the touch-sensitive display in accordance with features 5.2, 5.4 and 5.5 only considers a representation optimized with respect to the perception of the user, but does not achieve any technical effect.

The Federal Court of Justice rejected the Federal Patent Court’s opinion because it found that the Federal Patent Court did not sufficiently consider the relevance of commands in assessing inventive step. This was because in order to determine whether there was any influence on the solution of a technical problem, one must first ask whether, for an information related feature, the presented information is also an embodiment of a means for a technical solution that was not yet mentioned in the claim. If that is the case, this means of a technical solution has to be considered when assessing the patentability. To exclude the technical effect of the presentation of information from the assessment of the inventive step only because it is claimed in the form of a presentation of information is not justifiable.

With the instruction to move an unlock image “in accordance with the contact” along a predefined displayed path on the display (features 5.1 to 5.3), the patent teaches to optically display to the user the control movement for unlocking the functions of the device, which they execute by performing specific movements on the touch sensitive display, by a symbol shown on the display performing corresponding (not necessarily identical) movements.

Consequently, the patent claim teaches to optically display to the user that he has provided a command to the computer with this movement that can and will provoke unlocking if the user’s movement satisfies the (minimum) requirements to the predefined (finger) movement. In other words, the control command implemented by the finger movement shall not only effect the unlocking, but also a presentation that symbolizes the command and the progress of its execution. This is the technical solution of a technical problem to make the unlock process optically recognizable for the user and thus increase the operational reliability.

On the other hand, the instruction to execute the displaying as the movement of an unlock image along a predefined path on the phone’s display concerns only the content design of the graphically displayed information. The movement of the unlock image imitates the control movement of the user and thus makes the initiation and the progress (or the interruption) of the resulting unlocking particularly clear. However, this only considers the human imagination. Consequently, the Federal Court of Justice agreed that the features 5.4 and 5.5 do not have any content beyond that found in features 5.1 to 5.3.

The Federal Court of Justice concluded that the lack of a technical contribution in the surplus features 5.1 to 5.5 was not a sufficient reason for a finding of lack of inventive step.

The Court then assessed the inventive step in a manner similar to the problem and solution approach known from European Patent Office proceedings.

It relied on a prior art document entitled “Touchscreen Toggle Design” ( known as ‘Plaisant’ in other jurisdictions) which analyzed varieties of virtual switches suitable for touch sensitive displays for switching devices on and off. In particular, the following description of a slider toggle was taken into consideration:

    Slider toggle: In this toggle a sliding/dragging movement is required to change the position of the yellow pointer from one side of the toggle to the other. A simple three step animation shows the movement of the pointer along the slide. If the device is ON the pointer is on the ON side. Users can then grab the pointer and slide it to the other side. If the finger is released before reaching the other side the pointer springs back to its previous position2.

The Federal Court of Justice presented detailed and convincing (yet conventional) arguments for why the Plaisant document rendered the novel features of the claim obvious.

It is noteworthy that the Federal Court of Justice rejected the simple approach for judging the inventive step based on the lack of technical character and acknowledged the technical contribution of the novel features, in contrast to of the Federal Patent Court’s decision. There have been similar reversals of first instance decisions in the recent past.

The decision by the Federal Court of Justice highlights the importance of thoroughly explaining the technical contribution of an invention when drafting a patent application for a computer implemented invention or an invention that includes the display of information. Apple succeeded in convincing the Federal Court of Justice of the technical contribution of the novel features of the claimed invention. On the other hand, this decision also highlights that the standard patentability requirements must be fulfilled by a computer implemented invention once its technical contribution is accepted.

UNITED KINGDOM

The ‘022 patent was also litigated in the UK. The court of first instance held that the patent was invalid (to varying degrees) over three pieces of prior art, namely Neonode N1, Plaisant and Hyppönen. Of these three pieces of prior art, it was only Neonode N1 which led to the finding that all the claims were invalid, as the other two pieces of prior art only defeated some of the claims (though all led to a finding of invalidity for claim 1).

For this reason, on appeal Apple sought only to challenge the finding of invalidity over the Neonode, as this would leave some of the claims as valid. The Court of Appeal rejected Apple’s appeal, though it is important to note that the UK’s approach to a finding of obviousness differs from the German approach of excluding the non-technical subject matter from the analysis. Accordingly, there was no discussion of the original decision on whether the ‘022 patent was in fact patentable subject matter.

As to that issue, the court of first instance held that the ‘022 patent was capable of being a patented invention. The UK law on what constitutes patent eligible subject matter is found in Section 1(2) of the Patents Act 1977 which, like the German law, is based on Article 52 of the EPC (though the UK wording differs slightly, it is the same for the purposes of computer programs).

The UK approach to patent eligible subject matter outlined by the Court of Appeal’s Aerotel3 decision, which provides a four step approach to deciding cases where the exclusions from patentability were engaged:

(1) properly construe the claim;

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter; and

(4) check whether the actual or alleged contribution is actually technical in nature.

Apple’s UK case was run on the basis that the contribution in the ‘022 patent was merely visual information about where the contact point is on the path at any given moment, i.e. a swipe gesture across the screen will unlock the prior art device. The contribution was therefore the mere presentation of information about how that gesture is progressing. Starting from Neonode, the argument was that the ‘022 patent and the Neonode both work in the same way. All that differs between them was that the 022 patent includes a mechanism to provide visual information to the user. Thus, the contribution is either a computer program as such or the presentation of information as such.

The judge at first instance disagreed with this argument, holding that “I think there was a contribution here which went beyond a computer program as such or the mere presentation of information. There is a sense in which the invention provides a technical effect outside the computer, namely an improved switch. Moreover this is a real world effect which is not limited to the presentation of information.

However, it is important to note that the UK discussion on whether the ‘022 patent was patent eligible subject matter arises after the finding that the patent was invalid for obviousness. Whilst it is not suggested that this impacted upon the decision, it does explain why the reasoning in the UK decision is not as developed as the German one on this issue.

THE NETHERLANDS

In August 2011, the summary proceedings judge of the District Court of The Hague found that the ‘022 patent was obvious. The court held that the only element differing from the Neonode N1 was the use of an “unlock image” to create a more user-friendly procedure for unlocking touch screens. The court considered the use of such an unlock image to be obvious, and further added that although having a graphical element slide across the arrow would not be completely trivial, this use of a graphical element (with feed-back interaction) followed from the Plaisant prior art and even from virtual equalizer slides (the Guitar Rig prior art).

The court held that whilst the Plaisant article and the Guitar Rig prior art related to a slide to unlock for an external apparatus, and not to unlock the apparatus itself, this was not a reason for a person skilled in the art to ignore this prior art.

Although Apple appealed this ruling (which also related to design rights and other patents), it withdrew its claims based on the ‘022 patent in the proceedings before the Court of Appeal.

USA

The position of Apple’s U.S. Patent 8,046,721 (the ‘721 slide-to-unlock patent) is completely different from that of the corresponding patent in Europe. In the U.S., Apple was ultimately successful in sustaining validity and tagging Samsung for infringement and damages for the ‘721 patent, specifically claim 8 (which requires not just slide-to-unlock but also “visual cues”).

  • U.S. District Court (Judge and Jury) Ruled for Apple

In the U.S., the burden is on the accused infringer to prove that a patent is obvious based on “clear and convincing” evidence that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (pre-AIA).

The issue of obviousness is a question of law, to be decided by the court, and it rests on findings of fact, which generally are the province of a jury. The ultimate question can be submitted to the jury, and unless there are specific interrogatories on subsidiary questions of fact, the jury’s verdict is presumed to resolve underlying factual issues in favor of the verdict winner.

In Apple v. Samsung, the question of alleged obviousness of the ‘721 patent was decided in the first instance by a jury of eight persons after a month-long trial involving several patents. Several witnesses, including experts, presented live testimony. At the conclusion of the trial, the jury deliberated for three days before returning its verdict, which, among other things, sustained the validity of claim 8 of the ‘721 patent.

Samsung challenged the jury’s verdict of nonobviousness by filing a motion for the court, i.e., the judge, to enter judgment as a matter of law (JMOL). The Honorable Lucy Koh, District Judge, declined to set aside the jury’s verdict of nonobviousness of claim 8, and judgment was entered against Samsung for infringement of claim 8 of the ‘721 patent.

  • Federal Circuit Panel Ruled for Samsung

In the initial phase of the subsequent appeal, the Federal Circuit, acting through a typical panel of three judges, reversed the district court, holding claim 8 of the ‘721to be invalid.4 The wording of the ‘721 patent is similar to the ‘022 patent, but it is important to note that certain extra features of the ‘721 patent (such as the need for continuous visual feedback) arguably make claim 8 of the ‘721 patent narrower in scope (and therefore harder to invalidate and easier to design around) than the broader claims of the ‘022 patent. The prior art references at issue in the U.S. decision were Neonode and Plaisant.

A U.S. patent is invalid for obviousness “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (pre-America Invents Act).

In that first phase of the appeal, the Federal Circuit held that the prior art supported a strong prima facie case of obviousness. However, under U.S. case law, so-called secondary considerations of non-obviousness, such as commercial success, long felt but unsolved needs, and the failure of others, must be considered when present. Therefore, in support of the ‘721 patent, Apple presented evidence of copying, commercial success, industry praise, and long-felt but unresolved need — all of which Apple argued were secondary considerations of non-obviousness. In the U.S., these secondary considerations are probative of non-obviousness only if a patentee can demonstrate a nexus between the patented features and the particular evidence of secondary considerations.

Whilst secondary considerations such as these can be relied on in the UK or Germany to support a finding of validity, they are very rarely of much importance in anything but the most exceptional case, and certainly do not have the effect they can have in the U.S. (though this may be due in part to having jury trials at first instance in the U.S., unlike Europe for patent matters).

In that first phase of the appeal, the Federal Circuit held that, collectively, Apple’s evidence of secondary considerations was too weak to overcome the evidence of obviousness provided by the prior art documents and therefore claim 8 of the ‘721 patent was invalid.

That normally would have been the end of the story. It is not unusual for the loser at the Federal Circuit to file a petition for rehearing en banc, but such petitions are almost always denied. Here, however, Apple filed such a petition, and it was granted.

  • En Banc Federal Circuit Holds in Favor of Apple

On reconsideration en banc, the Federal Circuit5 paid closer attention to the challenger’s burden of proving obviousness by clear and convincing evidence, the division of responsibility as between the jury’s province of finding facts and the trial court’s authority to decide questions of law, and the standard of review on appeal, which requires greater deference to the jury on findings supported by substantial evidence. The Court of Appeals also observed that “secondary considerations,” or “objective indicia” of nonobviousness, must be considered in the balance in all cases where relevant.

The en banc Federal Circuit noted that the jury’s verdict on obviousness was simply a “black box” determination of nonobviousness: the jury was not asked to determine separately any subsidiary questions of fact. Thus, the Federal Circuit presumed that subsidiary questions of fact were decided by the jury in favor of the patent.

The en banc court described Neonode as a mobile device with a touch-sensitive screen, with a user guide that explains that unlocking is done by pressing the power button, whereupon text appears instructing the user to “right sweep to unlock,” and that sweeping right then unlocks the unit. The court further described the technical problem as the tendency for phones to be activated accidentally by “pocket dialing.” The court went on to describe Plaisant as a wall-mounted toggle controller, and it noted that there was expert testimony to the effect that someone trying to eliminate pocket dialing would not look to a wall-mounted toggle controller for a solution.

The most important and determinative question of fact, held the Federal Circuit (which question is presumed to have been decided by the jury in favor of the patent after considering conflicting testimony) is whether a person of ordinary skill in the art would have been motivated to combine the Neonode mobile phone touch screen with the Plaisant wall-mounted sliding toggle controller. The court found there was no such motivation.

The en banc court also held that there was substantial evidence of industry praise, copying, commercial success, and long-felt need, all of which are “secondary considerations” or “objective indicia” of nonobviousness.

In sum, because substantial evidence supports the implicit fact findings by the jury regarding prior art and objective indicia, the en banc Federal Circuit held that Samsung had failed to prove obviousness by clear and convincing evidence.

  • Supreme Court Declines to Hear Appeal

Samsung appealed (by petition for writ of certiorari) the en banc decision to the U.S. Supreme Court, arguing, among other things, that it was unfair for the Federal Circuit to decide the case en banc without soliciting additional briefs or hearing additional oral argument. The Supreme Court denied the appeal on 6 November 2017.

Result: The Apple slide-to-unlock patent remains valid in the U.S.

1. [Or a presentation of information or a rule for playing games or a business method, as the case may be.]

2. [CATHERINE PLAISANT & DANIEL WALLACE, Touchscreen Toggle Design, PROCEEDINGS OF THE SIGCHI CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS668 (Penny Bauersfeld et al. eds. 1992).]

3. [Aerotel Ltd. v Wavecrest Group Enterprises Ltd., [2009] EWCA (Civ) 408 (20 May 2009).]

4.[Apple, Inc. v. Samsung Electronics Co. Ltd., 816 F.3d 788 (Fed. Cir. Feb. 26, 2016), vacated, 839 F.3d 1034 (Fed. Cir. Oct. 7, 2016) (en banc).]

5. [Apple v. Samsung, 839 F.3d 1034 (Fed. Cir. Oct. 7, 2016) (en banc).]