By David French
This post goes right to the very heart of a patent and what a patent can and cannot do in the marketplace. And it has a twist, if you are prepared to bear with the analysis to the end.
In my prior post on the subject, I referred to an important hearing held on Dec. 6 this year before Trial Judge Lucy H. Koh. During the hearing, Samsung tried to limit the scope of the consequences of the $1-billion jury decision that arose out of the trial held in August. Among the numerous matters discussed, Apple asked that the jury’s award be increased by an extra one third of a billion dollars as “punitive damages.” The judge can also reduce the amount of the damages awarded if the jury has been unreasonable. Other issues were discussed, but the judge reserved her decision.
In particular, Apple applied for an injunction which it hopes will force Samsung to cease selling electronic devices that infringe the claims of its patents. If approved by the judge, the injunction may be suspended by the trial judge pending an appeal by Samsung and/or Apple to the Court of Appeal for the Federal Circuit – CAFC. Or the injunction may be suspended by the Court of Appeal itself.
Meanwhile, the attorneys at Samsung headquarters, or wherever else they seek legal advice, have been scrambling for some time (perhaps even back before the trial of this case) trying to determine whether Samsung can continue to sell products by building products which will avoid infringing Apple’s patents. If they can, then perhaps we can say in retrospect that they were foolish or neglectful in originally adopting a feature which has been held to infringe. But now, clearly, Samsung has a major incentive to find a way of avoiding infringing the Apple patents.
As this exercise goes to the heart and soul of the patent system, we can use it to understand Samsung’s dilemma by appreciating the art that went into drafting the claim of a sample of an Apple patent, and thereby gain a better understanding of the role of “claims” in the world of patents.
Purpose of a patent claim
The purpose of a claim is to define the exclusive rights of the patent owner. Put alternately, a patent claim tells others what they are not permitted to make and sell. All patents end with at least one claim and generally have quite a number of claims. A preamble is presumed to sit above all of these claims, reading: “I claim,” or sometimes just: “Claims.” The first preamble is more appropriate because each of the numbered claims is supposed to constitute the balance of a sentence beginning with the words “I claim.” The patent claims are the shooting end of a patent.
A claim is, essentially, a check-off list for infringement. It lists a number of features or limitations which must be present in an accused infringer’s product for that product to infringe. The art of patent claim drafting is to produce a list which, while being valid, nevertheless provides no opportunity for a competitor to produce a similar product that will compete with the patent owner’s product in the marketplace. Ideally, a claim should cover a have-to-have-it feature that must be present in a competing product in order to successfully compete. Knockout that essential feature and you may be able to knockout the competitor’s product from the marketplace, if the feature is sufficiently essential.
Exemplary Apple patent
We will now use Claim 2 of Apple’s US patent 7,864,163 as an example. This patent addresses tapping on a rectangular area forming part of the display on a touch-sensitive screen and thereby enlarging that part of the display and moving it closer to the center of the screen. Particulars of the patent are as follows:
Title: Portable electronic device, method, and graphical user interface for displaying structured electronic documents
Filing date: Sept. 4, 2007
Date of patent grant: Jan. 4, 2011
Inventor: Bas Ording of San Francisco, California and 7 others
Owner: Apple Inc. of Cupertino, California
Claims: 61, of which 1, 2, 50, 51, 52, 53, 59, 60 and 61 are “independent”
Claim 2, which is typical of all of the independent claims in this patent which could be considered to infringe, reads as follows:
What is claimed is:
2. A computer-implemented method, comprising:
- at a portable electronic device with a touch screen display;
- displaying at least a portion of a structured electronic document on the touch-screen display, wherein the structured electronic document comprises a plurality of boxes of content;
- detecting a first gesture at a location on the displayed portion of the structured electronic document; determining a first box in the plurality of boxes at the location of the first gesture;
- enlarging and translating the structured electronic document so that the first box is substantially centered on the touch screen display;
- while the first box is enlarged, a second gesture is detected on a second box other than the first box;
- and in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display.
[End of claim 2]
Persons reading this patent as a whole may think that it addresses the simple act of touching a box on the screen and having that box enlarged so that it occupies the center of the screen. Indeed, here is a sample paragraph from the patent disclosure under the title “Summary” of the invention:
In one aspect of the invention, a computer-implemented method, for use in conjunction with a portable electronic device with a touch screen display, comprises: displaying at least a portion of a structured electronic document on the touch screen display, wherein the structured electronic document comprises a plurality of boxes of content; detecting a first gesture at a location on the displayed portion of the structured electronic document; determining a first box in the plurality of boxes at the location of the first gesture; and enlarging and substantially centering the first box on the touch screen display.
Under the Summary portion of the disclosure there are four further paragraphs that reiterate that the invention is about enlarging the image of a first box so that it occupies the center of the screen. There is no discussion in the Summary portion of this patent about moving on to subsequently enlarge in a second box that may still be partially displayed on the screen.
Reference to a second box first appears in the “Description of Embodiments” portion of the patent document. But before that occurs, the following paragraph is presented:
In some embodiments, a second gesture (e.g., gesture 3929, FIG. 5C) is detected on the enlarged first box (6034). In response to detecting the second gesture, the displayed portion of the structured electronic document is reduced in size (6036). In some embodiments, the first box returns to its size prior to being enlarged (6038).
This reference has been quoted simply to explain the meaning of a “second gesture” which appears in the following paragraphs from the Description of Embodiments that refer to a “second box:”
In some embodiments, while the first box is enlarged, a third gesture (e.g., gesture 3927 or gesture 3935, FIG. 5C) is detected on a second box other than the first box (6040). In response to detecting the third gesture, the second box is substantially centered on the touch screen display (6042). In some embodiments, the third gesture and the first gesture are the same type of gesture. In some embodiments, the third gesture is a finger gesture. In some embodiments, the third gesture is a stylus gesture.
In some embodiments, the third gesture is a tap gesture. In some embodiments, the third gesture is a double tap with a single finger, a double tap with two fingers, a single tap with a single finger, or a single tap with two fingers.
At this point, we are 85 percent through the text of the patent document, which will be a relief to some of the readers who find this discussion tedious. However an important point can be made by returning now to Claim 2. It should be noted that this claim, and all the other independent claims up to and including Claim 52, include the following necessary limitation for something to infringe:
While the first box is enlarged, a second gesture is detected on a second box other than the first box; and in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display. Cf Claim 2, above.
In other words, these claims all apply only in the case where the cell phone or computer is configured to allow a user to directly replace a first enlarged box with a second enlarged box simply by touching an available smaller image of the soon-to-be second large box while the first enlarged box is still present on the screen.
(Independent claims 53, 59, 60 and 61 address a different invention wherein multiple layered display windows responded to a gesture, e.g. a finger touch, by “moving the displayed window partially or fully off the touch screen display, and moving a first partially hidden window into full view on the touch screen display.” Any use by Samsung of this feature has not been the subject of this litigation.)
What is the consequence of this additional limitation referencing access to a second box?
As part of the hearing on Dec. 6, Samsung argued that no injunction should issue under the claims of this patent, claims that it had previously been found to infringe, because Samsung has modified the software inside its cell phones so that they do not fall within the language of Claim 2 and its other equivalents.
Samsung announced that it has developed workarounds for these claims. It said that its products no longer infringe Claim 2 because its phones now operate on the following basis:
Tapping on a box does enlarge a box and move it to the center of the screen. But in order to replace that first box with a second box that can still be seen with the first box still centered, the Samsung devices require that the first enlarged box be first closed. Then a second box can be enlarged to replace it.
With this procedure now part of their products, Samson submits that it cannot be said that their revised phones meet this stipulation in Claim 2:
While the first box is enlarged, a second gesture is detected on a second box other than the first box; and in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display.
In effect, Samsung is arguing that Claim 2 is only infringed if the user can subsequently tap on another item on the screen to move it to the center of the screen while the first item is still centrally displayed. It would appear that, in all fairness, Samsung’s new design is outside of the scope of Claim 2.
Apple may contest this, but expert opinion suggests they will not succeed.
Lesson to be learned
What is the lesson to be learned from this analysis? The first is that the “shooting end” of a patent resides in the patent claims. We should not assume that a patent addresses what is discussed in earlier parts of the disclosure. The second is that Claim 2, and the other claims of a similar nature, could be avoided by adopting an alternate procedure not covered by the language of the claim. The Samsung workaround achieves almost the same result with very little user inconvenience.
Accordingly, some may say that the Apple patent has a large loophole. In fact, this would be a fair assessment. How could this have arisen?
It may be that the examination process forced the patent agent or attorney representing Apple to include the limitation of directly replacing a first enlarged box with a second enlarged box, rather than allowing claims directed to simply having a box enlarged and centered by making a touching gesture on a touch-sensitive screen. But if the prior art would have permitted claims addressed to the alternate procedure adopted by Samsung, then the inventors and patent agents/attorneys at Apple must be kicking themselves now for not having anticipated how a competitor could escape their clutches.
That is a valuable lesson.
David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property.
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By Francis Moran
