The ability to extract and understand claim limitations is critical, and will play a key role in the trial and subsequent judgment that will determine the winner and loser – and who pays who and how much.
Contributed By Richard Moses
Apple accused Samsung of patent infringement first in 2011. Since then, they have pursued a “thermonuclear war” as declared by Steve Jobs, with no apparent end in sight. Eventually, I think common sense will return to both parties at some point and a cross license agreement will be signed.
Déjà vu all over again with “iTrial-2”
The dispute this time includes several of the latest smartphones, tablets, computers, and media players. For its second trial, it appears Apple may have re-energized its “Apple Computer” prowess since the technologies may have less to do with “phones” and more to do with the “smarts” in smartphones – notably the user interface (UI).
Round one ends badly – for Samsung
In the Summary Judgment dated January 21, 2014, Judge Koh delivered two blows to Samsung. The company’s Android devices were found to infringe on Apple’s word recommendations patent (claim 18 of Apple’s ‘172 patent) and the company’s multimedia synchronization (‘757 patent) was invalid. A deeper look into the technology covered by the asserted claims and their intersections with the law provides an interesting perspective that may shed light on the final outcome of this case.
The name of the game is the claim
In patent law, the claims are arguably the most important part of the patent. Claim “limitation” and claim “element” are often used interchangeably. This trial centers on claims of infringement and validity, or more accurately, Literal Infringement and Anticipation. Why is that important?
You must extract claim limitations
Literal infringement requires that the accused product contains each limitation of the asserted claim. Similarly, an accused infringer may show that a patent claim is invalid as anticipated under 35 U.S.C. § 102 by proving with “clear and convincing evidence” that a prior art reference (or multiple references in some cases) discloses each and every element. Certainly, the patent claims demand special consideration. However, extracting and understanding the claim limitations (elements) is critical, and undoubtedly will play a key role in the trial going forward and subsequent judgment. Taking a closer look at the key claim limitations, starting with Apple, shows why the stakes are incredibly high.
Apple patents – protecting a more engaging user experience
Apple, as Plaintiff and Counter defendant, has accused Samsung of infringing US patents:
Patents are often referred to by their last three digits, for example the ‘172 patent refers to US patent No. 8,074,172. For the most part, these patents deal with user interface and ease-of-use features. These are defining attributes of the Apple brand and its competitive advantage.
Here in a nutshell is the Apple case. The question is this: can Apple show that the key accused (Samsung) product contains each limitation of the asserted claim, as well as ward off Samsung’s attacks that a prior art reference discloses each and every element of the asserted claim?
The ‘172 Patent (“Auto Correct”)
The ‘172 patent entitled “Method, System, and Graphical User Interface for Providing Word Recommendations,” was filed on January 5, 2007, and issued on December 6, 2011. The ‘172 patent, also known as “auto correct,” describes a method and system for providing word recommendations to users’ text inputting on a portable device and allowing the user to select the recommended words. For example, if a user misspells a word, a suggestion area displays both the current (misspelled) character string and the suggested replacement words (“suggested replacement character string”). The arguments centered on the claimed use of the term “keyboard.”
A keyboard is a keyboard – whether physical or virtual
Samsung contended that the claim requires a “physical keyboard” which smartphones and tablets indisputably lack. Judge Koh did not agree for several reasons:
- The “keyboard” claim element is consistent with the patent’s specification where the disclosed embodiments include a virtual or soft keyboard.
- Furthermore, other claims of the ‘172 patent reference both virtual and physical keyboards, and according to case law, “a claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”
Oddly, the “keyboard” issue was not raised by either party in the claim constriction briefs. Ultimately, Judge Koh ruled “that the ‘172 Accused Products infringe claim 18 of the ‘172 patent.”
The ‘721 Patent (“Slide-to-unlock”)
The ‘721 patent entitled “Unlocking a device by performing gestures on an unlock image,” was filed on June 2, 2009, and issued on October 25, 2011. Called the “slide-to-unlock” patent, the ‘721 is probably the most publicized and easiest to understand patent. The patent was filed as a continuation of US patent 7,657,849, with a December 2005 priority date. The claims are straightforward in describing the procedure of unlocking a handheld device with a touch sensitive display. Claim 7 and dependent claim 8 include a touch sensitive display and a “detecting a contact” continuously moving the unlock image to unlock the device. The patent disclosure also specifies the “detected contact” as corresponding to “a predefined gesture.”
Samsung’s “expert” witness says “no”
Samsung argues that the patent claims are invalid by way of its expert witness, computer science professor Saul Greenberg from the University of Calgary. Professor Greenberg cited companies Neonode Inc. and Microsoft Corp. that developed the ‘slide-to-unlock” feature before the ‘721 patent. Microsoft researcher Catherine Plaisant described a “Touchscreen Toggle Design” in a 1992 publication for the Proceedings of the SIGCHI Conference on Human Factors in Computing Systems (Plaisant & Wallace). In its defense, Apple highlighted that the USPTO was notified of the “Plaisant disclosure” (along with 73 patent citations and 28 other non-patent citations) and determined that the ‘721 was valid. The jury will need to decide whether or not there is sufficient “clear and convincing evidence” that the prior art reference discloses each and every element that is asserted by the ‘721 claim. Will that be sufficient? Stay tuned!
The ‘647 Patent (“Quick Links”)
The ‘647 patent, entitled “System and method for performing an action on a structure in computer-generated data,” was filed on February 1, 1996, and issued on August 31, 1999. Also known as the “quick links” patent, the invention is directed to a “computer-based system” (and method) that automatically detects “structures” such as phone numbers, calendar events, contacts, etc., and recommends ways to use the data. For example, a Microsoft Word document may include a phone number or email address. The feature based on the '647 patent will recognize these “structures” and allow the user to perform optional actions (linked to the structures) such as making a phone call or sending a text message. The described functionality is achieved primarily by way of:
- “an analyzer server”
- detecting structures in the data and for linking actions to the detected structures
- “user interface” enabling the selection of a detected structure
- “an action processor” for performing actions linked to the structures
Detecting and performing actions on data structures is arguably innovative given its early 1996 filing date. The debate has centered on the “action processor” limitation. Here, the Court is applying the construction to mean “a server routine separate from a client that receives data having structures from the client.” This is based on a term construed by Judge Richard A. Posner in a previous case; Apple, Inc. vs. Motorola, Inc., No. 1:11-cv-08540, N.D. Ill. March 19, 2012. In the summary judgment leading up to the trial, Apple attempted to argue a new/different claim construction, subsequently rejected “as untimely and improperly raised.” The Court also adopted Judge Posner’s construction of an “analyzer server” to be “a server routine separate from a client that receives data having structures from a client.”
Apple argued that the set of shared library routines in the Android operating systems (Froyo, Gingerbread, Ice Cream Sandwich, and Jelly Bean) function as the “analyzer server” and that the shared libraries are separate from the client, e.g., a web browser. Samsung defended their position. Its expert witness, University of North Carolina professor Kevin Jeffay, opined by way of a thorough analysis of the source code routines that the shared libraries identified do not meet the “analyzer server” limitation, since they are not “separate from” the browser application, therefore, Samsung’s devices do not infringe.
Samsung also drew testimony from ex-Borland engineer Lars Frid-Nielsen. In 1984, Borland released Sidekick, a popular personal information manager program for DOS-based personal computers. Therein, Frid-Nielsen described a Sidekick feature that automatically detected phone numbers and offered to dial them. Certainly the technology has evolved significantly since the DOS era, and as Frid-Nielsen poignantly highlights in his cross-examination, “back then, there were no websites.” Still, the non-existence of web sites may be non sequitur. As with ‘721, clear and convincing evidence whether Sidekick used each and every element of the ‘647 claim, including “an action processor” and “analyzer server,” rests with the jury to decide. The downside for Apple is that regardless of the court outcome, the ‘647 patent expires February 2016, so the clock is ticking on this particular patent.
The ’414 Patent (“Background Synch”)
The ’414 patent, entitled “Asynchronous Data Synchronization Amongst Devices,” was filed on January 7, 2007, and issued on July 20, 2010. The ‘414 is directed at a system and method for synchronizing data between two or more “data processing systems,” for example, a desktop computer system and a mobile device. The ‘414 claim discloses concurrent execution of “synchronization and non-synchronization.” As an example, a system based on the ‘414 allows a user to use his/her calendar while synchronizing “structured data” from other databases such as contact information.
Claim 11 includes a “user application” such as a calendar application, software that is executing concurrently in different “threads” (or processes) and a “user-level non-synchronization processing thread” such as setting a calendar entry. Asserted claim 20, which depends on claim 11, requires structured data of “a first data class” and “other synchronization software components” configured to synchronize “data of other corresponding data classes.” Said differently, claim 20 requires at least three synchronization components. Samsung has argued that the accused products have at most two and not three components.
“Configured to synchronize” was also a contentious issue during summary judgment. Apple argued “plain and ordinary meaning” to include synchronization software that “directs other parts of the software.” The Judge disagreed on allowing the interpretation of the claim meaning so broadly, hence rejecting Apple’s motion for infringement of the ‘414 patent.
Another hotly debated issue – the role of Google
Samsung has argued that Apple should pursue Google for developing the Android software used in the accused products and not Samsung. Therein, Apple’s expert witnesses Todd Mowry, a computer science professor at Carnegie Mellon University, and Alex Snoeren, a computer science professor at the University of California at San Diego, rebutted Samsung’s suggestions. They confirmed that several of the accused products were not using Google’s stock Android operating system, rather modifying the code for its products.
The ’959 Patent (“Universal Search”)
The ’959 patent, entitled “Universal Interface for Retrieval of Information in a Computer System,” was filed on January 5, 2000, and issued on January 25, 2005. The ‘959 patent discloses a unified search interface that can access information from several locations, such as a local hard drive, a network server, and the Internet. And it uses different search algorithms to list the most relevant candidate results. The results are presented to the user applying heuristic algorithms to identify which results are most relevant, for example, a document, application, or Internet web page.
Samsung contends that the asserted claims 24 and 25 are invalid. Samsung’s expert witness Martin Rinard, a computer science professor from the Massachusetts Institute of Technology, testified that a similar invention, the Wide Area Information System (WAIS), was created by Thinking Machines in the 1980s and “was a universal search system available throughout the 1990s.”
Claims must meet the “definitiveness” requirement
Another noteworthy aspect of claim 24 centers on the requirement called “definiteness,” where the law states that claims must “particularly point out and distinctly claim the subject matter which the inventor . . . regards as the invention.”A claim that fails to meet the “definiteness” requirement is deemed invalid.
The contentious definiteness claim limitation in claim 24 is the term “heuristic.” Since the term had already been construed in Apple’s preliminary injunction motion (concerning a related patent with a similar specification), the Court construed the term “heuristic algorithm” as “a search algorithm that employs some ‘rule of thumb’ and does not consist solely of constraint satisfaction parameters.” The Court also contended that - albeit a “formidable” task and one “which reasonable persons will disagree,” if the meaning is discernible then the claim is sufficiently clear to avoid invalidity.
We will soon find out...
In part two of this blog, we take a deep dive into Samsung’s case as the Defendant and Counter claimant.