On August 7, 2013, the Federal Circuit affirmed-in-part the lower court’s decision in Apple Inc. v. ITC (2012-1338) finding no Section 337 violation in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-750). The Federal Circuit ruled that Apple’s U.S. Patent No. 7,663,607, which related to a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once, was invalid for anticipation and obviousness, and that Motorola did not infringe U.S. Patent No. 7,812,828, which related to a method to determine if the displaced charge at the nodes corresponds to a finger touching the screen.
With respect to ‘607 patent, Apple argued that the cited prior art, namely Perski ‘455, did not qualify as prior art because the conception date for Apple’s ‘607 patent pre-dated the filing date of the non-provisional Perski application. Apple also argued that the priority application failed to provide written support for the relevant disclosures in Perski ‘455.
The Federal Circuit, however, agreed with the Commission and Motorola that the disclosure in the provisional application was sufficient to provide written description for Perski ‘455 and therefore, Perski ‘455 constituted prior art. As such, the ‘607 patent was affirmed as invalid for anticipation. However, the Court noted that simply referring to the other reference as teaching a similar method was insufficient to identify with “detailed particularity” as required to incorporate material by reference, and therefore, claim 10 survives the anticipation challenge.
As for the obviousness challenge for claim 10, Apple argued on appeal that the Commission “improperly employed a hindsight analysis” and failed to evaluate the secondary considerations of nonobviousness presented by Apple. The Court agreed, stating it was “troubled by the ITC’s obviousness analysis” and that the Commission “never even mentioned, much less weighed as part of the obviousness analysis, the secondary consideration evidence.” Since this is “not adequate,” the Court vacated and remanded the case for the Commission to reconsider Apple’s evidence of industry praise, copying, and commercial success.
For the second ‘828 patent, the Commission, in earlier proceedings, construed the claim language as “mathematically fitting an ellipse” to require the method to perform “a mathematical process” whereby “an ellipse is actually fitted to the data” and “various parameters can be calculated.” Based on this construction, the Commission found no infringement by Motorola because, while they measure data from the touchscreen, they do not actually fit an ellipse and calculate parameters. Apple argued on appeal that requiring calculation of the ellipse parameters after the ellipse has been fitted unnecessarily limits the claim. The Federal Circuit agreed with Apple, concluding that the plain language of the claim simply requires the software to “mathematically fit” the ellipse without implying a separate step of calculating the ellipse parameters. The Court explained how this interpretation is supported by the intrinsic record, particularly in light of the dependent claims. The Court then vacated the Commission’s finding of no infringement and remanded the case for additional consideration of infringement of the ‘828 patent.
