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

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.


What if Samsung Was a Band?

I’ve been reading a lot of articles the last few days all on the degree in which Apple’s success in a US court over Samsung is good or bad for the industry. In the midst of all of what I am reading I feel a significant point is being missed. There is already an industry that forces and rewards originality. The music industry.

If we were to put our thinking caps on and objectively look at the situation I would think that IP law, specifically around this case, is similar to copyright law.

If we started a band today and recorded a song using some degree of lyrics, beats, rhythm, etc., from the current number one hit on the radio we would be sued out of existence. We could of course cover the song or use parts of the copyrighted content but we would have to pay the original author.

The music industry forces original work and in fact rewards originality. This is not to say that artists can not be influenced by another band, artist, song writer, etc., but they must create their own original work.

This forcing of originality in the creative arts is what makes it exciting. Not everyone succeeds but if it was all the same it would be extremely boring. It is the emphasis on originality that makes the music industry diverse and exciting.

I’m sure there are flaws in this analogy, as there are in nearly every analogy, but the point remains that Copyright law exists to promote originality. We should look at IP and Patent law the same way.

Apple vs. Samsung: What Doesn’t Compute

I’m not a lawyer, but I am an analyst who unfortunately has participated in some of the largest corporate legal battles, has two immediate family members who are IP lawyers, and has had to decide on industrial design for consumer electronics. None of this qualifies me to give legal advice, but I am able to spot some very interesting things in technology lawsuits.  The Apple-Samsung lawsuit was no different, as it was full of opportunity and oddities, and I wanted to share just a few observations.

The first thing I want to be clear on is that it is apparent to me that based upon the evidence and common sense, I believe Samsung infringed on at least few of Apple’s patents.  Just looking at the Samsung phones before and after and hearing about the need to be like Apple was enough for anyone would to arrive at that conclusion that some phones were made to look like Apple’s.  What I am not saying here is that I agree with everything that the jury came back with either; I don’t.  I am not a lawyer and I did not see every shred of evidence that the jurors saw.

With that off my chest, let’s dive into some of these things that I found unique or odd about the trial.

I’ve Seen That “Aligned Grid” Before

Two of the patents under scrutiny dealt with the way iOS icons are set in a grid with a lower bar situated at the bottom for apps.  Specifically, these were patents USD604,305 and US 3,470,983.  It was funny, the first thing I thought of was my Windows desktop where I have icons aligned in a gird with my most used icons pinned to my taskbar.  I remember old versions of Windows where it would “Align to Grid”, too.  So really, what is so unique or special about this patent?  Is it the fact that I am using it on a PC and the patent is on a phone?  I find this one odd.

iPhone Icons Aligned to Grid With Dock
Windows Icons Aligned to Grid With Dock

I’ve Seen That “Pinch and Zoom” Before

I remember getting an early preview of Microsoft’s original Surface table, now called PixelSense.  It could recognize over 50 simultaneous touch points as it was designed for more than one person and entire hands.  One of Surface’s special features was to pinch and zoom in on photographs…. almost exactly like the iPhone.  Apple’s two finger pinch and zoom is covered under US 7,844,915. I am certain that Microsoft and Apple are dealing with this in one way or another behind closed doors, and I speculate that based upon Microsoft Research budget and amount of years they had been working on Surface, they have the upper hand.  Remember, Apple was not the juggernaut it is today with more cash and market cap than anyone, therefore putting Microsoft in a better position to patent pinch and zoom.

surface picture
Microsoft Surface (2007)

I’ve Seen Those Curves Before

One of the other key patents Apple was fighting in court was related to the rounded corners. Apple had two design patents related to the corners.  The two patents, USD504,889 and USD593,087 were both patents related to many physical elements combined, including rounded corners.  Those curves are specifically 90 degree curves related to the same curvature in Apple’s legacy icons which date back over 20 years.  I ask, does it make sense that someone can patent a curve?  It does to the USPO, but in other designs like cars, you see related curves all the time, yes?  I mean, really, do curves seem like something that is patentable?  On the top is the Compaq T1100 sold in 2003 and on the bottom is Apple’s patent filed in 2004.

Compaq TC1100 (2003)
apple 504889
Apple USD504,889 (2004)
apple 504
Apple USD504,889 (2004)


Would You Confuse an Apple and Samsung Phone?

One very prominent scene inside the courtroom was when Apple icon designer Susan Kare testified even she confused the Galaxy for the iPhone.  I’ll give Mrs. Kare the benefit of the doubt, as maybe she was just looking at the icons, but I doubt anyone else on earth would confuse the two phones.  Every Galaxy S has a “SAMSUNG” and “AT&T” logo on the front of the phone and you certainly wouldn’t make the mistake of buying the wrong phone as the carton is clearly labeled Samsung.  So if consumers wouldn’t confuse the two and wouldn’t mistakenly buy the wrong phone, how damaging is the similarity, really?  Have you ever heard even a rumor of someone mistakenly buying a Samsung phone and thought it was an iPhone?  If you have, please let me know in the comments below.


s2 packaging    samsung s2


iphone 3gs packaging iphone 3gs


So What?

So I have brought up some possible inconsistencies or “horse sense” that may go against what the jury said and potentially even against patent law, so what?  I think if we cannot look at ourselves in the mirror, be honest with each other on what violates a patent or if there even is a patent to violate, the U.S. patent system itself will lose credibility and is doomed.  If reasonable intelligent people can’t even make sense of it, then what does that say about the problems we will face in a few years as companies become even more litigious as they file patent after patent just so they don’t get burned down the road?  I hope more good than harm comes out of this patent spat.  The big picture is really about continued innovation.  We should all pay heed to what Ben said so well yesterday“The key to the future will be to seek out new opportunities with fresh thinking and innovative ideas. To those that think innovation is dead I pose this question: Have all the problems of the present and the future been solved? Until the answer is yes, there will always be room for innovation.” Let’s not let the patent system stifle that innovation and let’s use some common sense as we approach it.

Of Apple, Samsung, and Obviousness (Updated)

Calimni's patentent drawing
Calimani’s patent drawings (Galla Coffee)

In 1929, an Italian named Attillo Calimani received a patent for a French press coffee maker. The French press is an extremely simple design: a glass beaker, a metal mesh filter attached to a push rod, and a gasket to form a seal between the filter and the glass. Calimani’s coffeepot looks remarkably like the Bodum press I use every morning. Its design follows its function so elegantly that it doesn’t seem like something that needed inventing. Yet it wasn’t until coffee had been around for hundreds of years that the imagination and manufacturing technology combined to make the French press a practical device.

This, in fact, is a characteristic of the very best in design and invention. Once you see it, it seems inevitable, as though it should always have existed. But that simplicity often takes a a tremendous amount of effort to achieve.

And that is what is wrong with the arguments of Samsung and its supporters that Apple’s iPhone patents were invalid because the key design features were obvious. U.S. patent law imposes a threefold test for patentability: An invention must be novel, useful, and non-obvious. The much-maligned U.S. Patent & Trademark Office found that Apple met that test for various features of the iPhone and the jury, the the extent it could consider the validity of the patents, agreed.

Now it’s true that there is nothing completely new under the sun. According to the history of the French press on the Galla Coffee web site, two French inventors came up with the French press idea nearly a century before Calimani. But their design lacked the gasket around the filter, leaving a lot of coffee grounds behind when the plunger was pushed, In other words, they had the right idea but it it didn’t quite work. Success requires that you both have an idea and find a way to make it practical.

It’s useful to reflect on just what Apple invented with the iPhone that did not exist in 2007. Apple did not invent the multitouch capacitive display, but was the first to use it in a phone. (Microsoft, by contrast released a version of its  Windows Mobile software in late 2009 with no support for multitouch displays.) Apple designers realized that a multitouch screen made both an on-screen keyboard and the elimination of virtually all physical buttons practical. (Large-screen Symbian phones existed before the iPhone, but they lacked multitouch and designers felt compelled to add physical keyboards or at least dialpads.) Despite the handicap of slow network connections–the original iPhone did not offer 3G wireless–Apple realized there was real value in web browsing on a phone and even originally thought that the web was a viable alternative to native apps.

It’s interesting that the most successful competitor to the iPhone is the one that has stuck most closely to the Apple formula, Android. Research in Motion, which thrived for a long time partly because of another obvious, non-obvious invention–a practical miniature keyboard–lost its way by ignoring the Apple assault until too late. Palm offered a real alternative with webOS, but lacked the financial resources to give it a fair chance (I’m not going to go into the Hewlett-Packard fiasco again.) And Microsoft has had a very tough time gaining traction for its distinctive approach, but it’s way to early too count them out.

There are legitimate fears that the decision in Apple v. Samsung will stifle innovation, but I am optimistic that the result will be the opposite: Forced to compete rather than copy, Apple’s competitors will find their way to true competition.

And as for the claim that Apple really didn’t come up with anything strikingly original in the iPhone design, that anyone could have done it, I’ll paraphrase what Aaron Sorkin’s “Mark Zuckerberg” famously said in The Social Network: If you guys were the inventors of the iPhone, you would have invented the iPhone.

UPDATED: At TechCrunch, Leonid Kravets, an actual patent lawyer, weighs in on the issue of obviousness and the Apple-Samsung verdict. The conclusions are similar, but I bet he had less fun writing it.

Why Google Hates Patents

In a rather testy blog yesterday, Google’s Chief Legal Council David Drummond lamented the fact that Android is under attack from competitors who are using a patent war to thwart Androids growth.

Mr. Drummond calls these patents that attack Android “bogus” and suggests that Apple, Microsoft, Oracle and others are ganging up to keep Android from being competitive and impacting its growth.

He especially calls out Apple and Microsoft’s purchase of Nortel’s patents and suggests that while normally Apple and Microsoft are at “each others throats” he believes that something sinister is going on. But Mr. Drummond does not know Apple and Microsoft’s history. In 1997, Apple and Microsoft entered a major cross licensing deal that spans a great deal of technologies, especially user interface issues. And over the years, behind the scenes, they’ve expanded their cross licensing deals with an eye on making sure that they kept up with the changing technologies that were behind their original deal. Although the Nortel patents were a high profile case, many of these patents actually were very much in line with their quest to keep their original cross licensing deals up-to-date.

Ironically, Microsoft actually asked Google to bid with them and they refused.

I also found it interesting that Mr. Drummond was pleased that federal regulators are “ looking into” whether Microsoft and Apple acquired the Nortel patents for anti-competitive means.” Given what I stated above, Apple and Microsoft will just show them the history of their cross licensing deals and this point will be mute. By the way, if I were Google I would keep as far away from prodding federal regulators on any issue given the fact that they are also under major federal anti-trust scrutiny

Also if Google is so opposed to patents, then why did they shell out $100 million for patents from IBM? This seems contradictory to their view that patents are bogus. An interesting aside here is that none of these patents from IBM will help them ward off Apple. These IBM patents are mostly related to semiconductors and servers and Apple already has license to most of these from their original IBM/PPC partnership created during the mid 1990’s.

Now, I understand that Drummond’s is just doing his job. In fact, Google’s management has a fiduciary responsibility to defend Android just as Steve Jobs and team have a similar responsibility for defending their patents. However, I believe there is really more of an ideological issue in play and represents Google’s more Open Source approach to life that feels that all technology should be free for use by all. Versus Apple’s strong view that their IP is the result of serious investment and hard work and needs to be protected through the legal patent process to, as Steve Jobs has said, “keep people from stealing” their creative innovations.

I like what Daring Fireball’s John Gruber asks in his post on the subject:

“How is Google’s argument here different than simply demanding that Apple, Microsoft, Oracle, et al should simply sit back and let Google do whatever it wants with Android, regardless of the patents they hold?”

The other thing in play is that Google has always touted the fact that Android is free. But it is clear that if Oracle wins their suit against Google and Android’s use of Java , Oracle plans to charge each Android vendor $15.00 per license. And Microsoft has already gotten HTC to pony up at least $5.00 per HTC device that uses Android to cover Microsoft’s patents used in Android. In Apple’s case, if they win, they won’t even consider licensing that piece of the technology to anyone. So that part of Android that would be in violation of any of Apple’s patents would mean that Google and their licensee’s would have to find a work around and that could be costly to Google and every Android licensee.

And this takes a big bite out of Google’s argument that Android is free and would make any future licensee’s think hard about using Android if there are potentially sliding costs involved to cover any other patent claims that could pop up over time. No wonder they are bashing patents. They fear their impact on what has to be one of their big cash cows where Android is given out freely and they get the add revenues tied to it.

We have suggested to our clients that license Android from Google to begin factoring in at least $20.00 for a possible upcoming Android license fee in any future products. And we have warned them that if Oracle wins, they could try and collect that $15.00 for any Android device already shipped. This is obviously still a legal issue and we don’t know for sure how it will play out. But it would be foolish for any Android licensee not to be prepared for what they have to view as a worst case scenario if the legal battle goes in favor of Oracle and others challenging Androids use of their patents.

And don’t think that Apple, Oracle or Microsoft will back down on this issue. They know the stakes are high and will keep pressure on Google through the legal channels until it is resolved one way or another. It will be great theater watching these tech giants go after each other in the coming months.