Patents: That Word Does Not Mean What You Think It Means

by Steve Wildstrom   |   December 20th, 2012

USPTO logo

Yesterday, the internet was abuzz with reports that the U.S. Patent and Trademark Office had “rejected” another Apple iPhone patent. Many commentators jumped to the conclusion that, since this patent figured heavily in Apple’s recent legal victory in a case claiming infringement by Samsung, Apple had been dealt a heavy legal blow. But, it turns out, not so fast. Patent law speaks its own language in which you have to forget about the plain English meaning of words.

What are we to make of a statement like this, in the USPTO finding?

No rejection of the claims, as presently written, are made in this Office action based on the  Hill and Ullmann references because the teachings of those references are essentially cumulative  to the teachings cited in the rejections below. However, in order for claims to be found patentable and/or confirmed in this ex parte reexamination proceeding, the claims must be patentable over every prior art patent and printed publication cited in the order granting the request.

I think I know what all those words mean, but the passage as a whole reads like something from a nightmare version of a reading comprehension test. I am not a patent expert, and I count on folks like the Verge’s Nilay Patel and Matt Macari, intellectual property lawyers by training, to illuminate the dark ways of patent law. And, as Macari pointed out with regard to a similar USPTO ruling on another Apple patent, the rejection of claims following a request from reexamination, also known as a “first Office action,” is the first step in a very long process.

In this case, the challenge was filed by Samsung and, as is the normal practice, its challenge was considered without any response from Apple (that’s what ex parte means.) Macari cites USPTO statistics that such request are granted over 90% of the time. Apple now gets to come in an defend its patent before the UYSPTO–Samsung isn’t actually a party to the case. In a bit under 70% of such cases, some of the claims of the original patent are invalidated in reexamination while the rest are upheld; the patent in question contains 21 claims. About 11% of the time, all claims are rejected, leaving the patent invalid.

Although the USPTO reconsideration order came to light because Samsung filed it as part of its attempt to change or overturn the recent judgment in favor  of Apple, the action is not light to have any impact on that case, at least not any time soon. Under U.S. law, a patent is presumed valid until the USPTO says otherwise. At least for now, the reexamination order should not change anything.

 

Steve Wildstrom

Steve Wildstrom is veteran technology reporter, writer, and analyst based in the Washington, D.C. area. He created and wrote BusinessWeek’s Technology & You column for 15 years. Since leaving BusinessWeek in the fall of 2009, he has written his own blog, Wildstrom on Tech and has contributed to corporate blogs, including those of Cisco and AMD and also consults for major technology companies.
  • FalKirk

    “(T)he passage as a whole reads like something from a nightmare version of a reading comprehension test.”

    Welcome to the world of lawyers. Our writing style is so obtuse that we think we make things more understandable by stating them in Latin. :-)

    • steve_wildstrom

      For a non-lawyer, I’ve read an awful lot of legal documents in my career. But this patent stuff is in a class by itself. Legal documents contain a lot of strange terms, like estoppal, but usually you can puzzle out even the terms of art. But in patent law, “reject” means “we want to think about it some more,” and goes downhill from there.

      • FalKirk

        The only two specialities allowed to lawyers are Patent law and Admiralty law. There’s a reason for that.

  • http://twitter.com/M_Gauche James King

    I’m definitely not a patent lawyer but I can’t recall there being anything like many of the touch interface elements Apple introduced with the iPhone existing anywhere near their current state, particularly pinch to zoom, beforehand. I remember when the iPhone was introduced, I told a friend that it looked like Apple jumped 10 years into the future and brought back a mobile phone. Maybe I’m wrong, but I’d be surprised if Apple’s patent is overturned.

    • imaginarynumber

      Jeff Hann had already shown the world pinch to zoom, actually he called it slide to zoom but it was pretty much the same thing, and predates the Apple patent http://www.ted.com/talks/jeff_han_demos_his_breakthrough_touchscreen.html

      Other features that Apple claim to have “invented” such as tap to zoom were available on touch screen phones pre-2007, eg the Opera browser on Windows Mobile.

      LG beat Apple to the market with capacitive screens.

      Jazz Mutant’s Lemur had multi-touch back in 2004.

      Apple were the first to bring all four of the above features together in a phone. Kudos to them for doing so but but they didn’t invent any of the features. Their true genius has been to convince people that they invented the smartphone.

      Technology based advances such as NFC aside, there is very little that I can do on a current smartphone that I could not do pre-the iphone.

      Personally I would be very suprised if this patent, and many others are not overturned.

      • http://twitter.com/M_Gauche James King

        Great info, thanks.

        “Apple were the first to bring all four of the above features together in a phone.” – imaginarynumber

        I guess this is the real point. Much like what it did with Xerox Parc’s technology, Apple was able to weave many interesting technologies into a truly compelling solution. Current patents laws don’t allow a company to have a monopoly based on combining technology in unique ways. But, let’s not kid ourselves … nothing like the iPhone existed until Apple created it. It’s semantics to state that Apple didn’t INVENT it.

        • imaginarynumber

          “let’s not kid ourselves … nothing like the iPhone existed until Apple created it.”

          Hi James,

          I am not exactly sure what you mean by that.

          When the first iphone came out I already had a 5″ touchscreen smartphone. I could navigate it with my finger. i had the option of downloading different (tabbed) browsers. I could play flash video. It had an 8GB HDD plus SD expansion. It had various media players. Stereo speakers. Wifi, 3G, Bluetooth, GPS, TV out, Front and rear facing cameras for video calling (with a LED flash). Handwriting recognition, numerous on screen keyboards (plus a magnetic detachable full querty keyboard). 640 x 480 screen resolution. I could tap on phone numbers in emails or websites and initiate calls etc. I could copy and paste. i could telnet.

          Shortly after, Apple invented the iPhone. A phone that had a lower screen resolution. No 3G, no GPS. No camera flash. No front facing camera (and hence no video calling). No Copy and Paste No support for flash. No SD support. Inferior audio. A slower processor. Very limited software.

          In short the iphone was inferior in almost all respects. Poorer hardware and extremely limited software capabilities.

          Apple’s genius however was to convince the public that they wanted to be able to browse the internet or check emails. Prior to that point, people in my local pub though i was an oddity for wanting such features, until the iphone became popular.

          Apple made the smartphone “sexy” through clever marketing and appealing design. They were (and remain) prolific in patenting (sometimes existing) technologies but invented far less than most people imagine.

          IMO their longest lasting legacies will the popularisation of multitouch capacitive screens and the ongoing fanboi wars.

          Personally, i owe a bigger debt to Jobs for stealing and developing the GUI from Xerox than his contribution to the mobile phone arena. But then, I don’t have an iphone (or android), i have a Windows Phone that in many respects is less capable than my previous Windows Mobile phones.

          • http://twitter.com/M_Gauche James King

            Considering I’ve never heard of any phone with such capabilities when the IPhone was introduced, I’m interested in knowing what the make and model is of the device you referenced.

            I’m aware that the iPhone at the time was not as capable as even Windows Mobile phones at the time. But the integration of features and design at that time was unprecedented. It wasn’t WHAT the iPhone could do but HOW it did it that was fresh and unique. Japanese smartphones were light-years ahead of other phones in features and capabilities at the time the iPhone was introduced. But I can’t remember any phone that was designed as well and or had the same level of integration. What was unique about the iPhone is that it wasn’t so much a phone as a computing platform with phone capabilities. I think it’s a semantical argument to compare the iPhone’s features to those of its contemporaries when it was the UX that was the main differentiator. In that respect, the iPhone was peerless. Based on my recollection, nothing else came close from that perspective. This may be an arguable point but I think it is apparent that most smartphones today have a UX strongly influenced by the original iPhone. Apple showed that design and UX mattered, so much so that it could change the way mobile phones were perceived and used. That was a huge and significant difference.

          • imaginarynumber

            Hi james

            The Windows Mobile phone that I had at the time was the HTC Athena.

            At the time it was their flagship device. Unlike the first iPhone, the Athena was largely constructed from aluminium. The screen cover doubled up as a full querty keyboard, attaching magnetically. In common with the later ipad cover it had sensors which turned off the screen when replaced, and like a recent Apple ipad cover patent, it had a clear section at the bottom of the cover that showed notifications.

            There were a few occasions when I left the keyboard at home and just used the onscreen keyboard. It did have a stylus but I only ever used it to reboot the phone.

            Out of the box (ie. non tweaked) WinMo 5 was prone to random freezes. The ability to use my finger to navigate was purely down to the large screen size, and the accordingly larger icons. Around the time of the iphone release I was able to integrate HTC’s TouchFlo.

            TouchFlo http://www.youtube.com/watch?gl=GB&hl=en-GB&v=YQ8TQ9Rr_7E was first introduced in HTC’s Touch phone http://www.gsmarena.com/htc_touch-1999.php. It was an attempt to make resistive screens finger friendly, even on smaller screens. TouchFlo was superseded by TouchFlo 3D and latterly by HTC Sense which was eventually ported from WinMo to the HTC android handsets.

            Please do checkout the youtube link and remember that the HTC Touch was released before the iPhone. Also note that it had a large button on the front and rounded corners.

            UX is awfully subjective. I really did like WinMo but it was buggy. iOS beat it hands down in that respect. Personally I thought that the iOS home icon grid borrowed heavily from symbian.

            I am not convinced that Apple’s UX has influenced all others in and of itself. IMO they popularised capacitive screens. Capacitive screens require larger and fewer on screen “targets” whereas resistive is more precise and thus can have more clickable areas but on smaller screens this requires a smaller input device than a finger, ie a stylus.

            With regard to phone design, I have always considered firms such as HTC and Nokia to be far braver than Apple, in so far as they have been willing to release some pretty “esoteric” designs. Perhaps the practice of releasing expensive, no costs spared, low selling handsets is an exercise in bandstanding or showing off but I for one am glad that they are willing to take the risks.

            I agree that Apple changed the way that mobile phones were perceived and used but this is as a result of marketing rather than invention. Almost every new iphone owner that i have met has gushed about how they can now browse the internet and check their emails. Big deal, I had Nokia 7650 in 2002 that would let me check my emails and had a 3rd party HTML browser app (which had the really unsexy name- Doris).

            Apple has however shown the likes of MicroSoft that you can monetise previously unexploited areas, eg 30% per app and that you can provide fewer native apps and convince owners to pay for them. This has both pros and cons. It increases total cost of ownership but has provided an incentive for app developers and thus has possibly made each of the major OSes more functional. This is quite an important point. Earlier phones tried to provide as many features as possible whereas since the iphone and perhaps more importantly 3G, the onus has shifted to “app stores”, so much so that the total count of apps has become a bragging right, regardless of quality or duplication.

            I have no problem with people owning or preferring any given OS but I do find the re-writing of smartphone history to be rather disturbing and results in millions of inch columns (and law suits) of accusations of copying this or that feature/function.

          • http://twitter.com/M_Gauche James King

            LOL, I remember the Athena now. If I’m not mistaken it cost about $800 and you couldn’t get it in the States without ordering it online. Same with HTC’s Touch … I think it had a model called the Touch Diamond. TouchFlo was a skin HTC attempted to put on WinMo. It was pretty innovative but reportedly was very buggy.

            If I had to choose a “super-phone” from that era to compare to the iPhone it would be the Nokia Communicator series. I remember wanting one of those very badly but, once again, getting it in the States was pretty difficult. Most of the phones that would have been considered comparable (or superior) to the iPhone just weren’t easy to get in the U.S. and most American consumers never saw or heard of them. The iPhone was their first exposure to a real smartphone. The fact that it was made by an iconic American company definitely helped.

            I’ll agree that HTC and Nokia made some pretty awesome phones. I could carry the Nokia 880 right now without shame. Apple didn’t and doesn’t have a monopoly on innovation.

            I just think it can’t be underestimated how important Apple’s approach to the smartphone as a total platform was.

            “I am not convinced that Apple’s UX has influenced all others in and of itself.” – imaginarynumber

            I think this is where we diverge the most. I had pretty much kept up with the most current smartphone tech of that time and I was still blown away by the iPhone when it was released. I remember an exchange I had with an HP CTO about how I thought the iPhone was going to explode and he made many of the same points you are making now. I believe that is was the complete integration of technology, form and function that made and makes the iPhone so appealing. I’ve used every major platform and the iPhone always feels far more polished IMO. I’m not fond of the fact that apps in iOS to not interoperate more pervasively and the platform seems limited by design. But iOS always seems cleaner, more intuitive and more powerful than the rest. There is real science behind its design, functionality and integration, it isn’t just about looking pretty.

            It could easily be argued that the iPhone is derivative in nature. But I think it is a fundamentally disingenuous argument that the iPhone wasn’t unique. Sometimes, it isn’t about who does it first but rather who does it right. More than any other smartphone maker of that era, Apple got it right. I think the results speak for themselves.

          • jfutral

            “I think the results speak for themselves.”

            Pretty much.

            Joe

          • jfutral

            “I agree that Apple changed the way that mobile phones were perceived and used but this is as a result of marketing rather than invention. Almost every new iphone owner that i have met has gushed about how they can now browse the internet and check their emails. Big deal, I had Nokia 7650 in 2002 that would let me check my emails and had a 3rd party HTML browser app (which had the really unsexy name- Doris).”

            This is one of those areas I think you overstate the conditions pre-iPhone and an area where Apple innovated. Email and browsing for even the most tech savvy was hit and miss, for all sorts of reasons (some device, some OS, some carrier), on those devices, never mind for the larger consumer market. Apple went a long way to making a large portion of those features actually usable and usably reliable on a daily basis.

            I am still on a campaign to knock this marketing myth. Marketing doesn’t really work if the product doesn’t deliver. And most certainly not 5 generations and years later. You might fool people once. After that you will never get them back. No experienced marketer will ever say marketing makes a product great. But a great product makes marketing easy.

            To say all Apple did was repackage the smartphone and not really innovate is like saying Miles Davis didn’t really do anything innovative in Jazz. Heck all the notes he played already existed, as did jazz and the trumpet. What was so innovative?

            What was so innovative was he came around at a time everyone was trying to out ‘Charlie Parker’ Charlie Parker. Miles showed It was no longer important how many notes you played. What was important was how you played them. Play fewer notes and make the notes you play count.

            Now, my only concern is that was under Jobs. I think Cook may feel the same. We’ll see. I am pretty sure Ive is of like mind, but he isn’t CEO.

            Joe

          • steve_wildstrom

            I used pretty much every class of WinMo device going back to the original PocketPC, and there wasn’t one that could hold a candle even to the original iPhone. I remember my incredulity with Microsoft introduced Windows Mobile 6.5 in 2009 without support for capacitive displays and was not surprised with Win Mo began its slide toward irrelevancy soon thereafter.

            The Apple succeeds only through marketing meme is getting pretty tired. Apple makes brilliant products and markets them very well, but the later would be worthless without the former. Not many consumer product companies can claim much in the way of fundamental inventions. That has been the province of companies such as IBM, Intel, the old Motorola, the late Fairchild Semi, the old AT&T etc. Apple’s brilliance has been its ability to combine these technologies into well integrated, easy to use consumer products. That is ni small accomplishment.

          • AdamChew

            Jobs didn’t steal as you so proudly claimed as Apple paid for whatever was /were used with shares in Apple Inc.or Apple Computer as it was known then.

            You are doing a disservice to Apple.

            Btw if Apple didn’t invent the iPhone with touch interface do you reckon the smartphone will be what it is today and much had been stolen by google to use in their android smartphone.

          • imaginarynumber

            Hi Adam

            My understanding is that Apple paid Xerox for the privilege of being allowed to visit Parc. They did not pay to be able to take and use any technology that they found whilst there.

            Had Apple indeed paid Xerox for the GUI, why did Xerox later try to sue Apple (for stealing the GUI from them) at the point when Apple were trying to sue Microsoft (for stealing the GUI from Apple)?

            Had Apple not invented the IPhone with touch I suspect that it would still have been extremely popular. I don’t think that I have denied that iOS has shaped the modern smartphone. I just question the degree to which the iphone was ground breaking or revolutionary.

            The extent to which Google stole from Apple is extremely contentious. Those of us that believe that the iPhone in it’s current guise is a well rounded and designed amalgam of phones that came before it do not consider android to be a clone of iOS. Sure some of the features were borrowed from iOS but then some were borrowed by iOS fom Android, and in turn most features on both platforms were borrowed from earlier platforms.

  • Rich

    “The passage as a whole reads like something from a nightmare version of a reading comprehension test.”

    Steve, I can tell you what the passage means. It means, I had one but the wheels came off.

  • jez

    The quoted section makes much more sense when the first sentence of the paragraph (5) is left in the quote!

    There are 7 documents used against the patent, five of them are relevant and cited in section 4 against each claim 1-21. The examiner is saying that these five documents show that what Apple claims to have invented was already in existence.

    The quoted paragraph simply states that the other two documents build on top of the five relevant pieces of literature and so are ignored. I’m afraid you have actually quoted the least interesting and unimportant paragraph from the entire document!