Wednesday, August 07, 2013

Apple v. ITC

The opening of Apple v. ITC:

Apple appeals from the final decision of the International
Trade Commission (ITC) that the asserted claims of
U.S. Patent No. 7,663,607 (’607 patent) are invalid and
that Motorola does not infringe the asserted claims of
U.S. Patent No. 7,812,828 (’828 patent). Apple challenges
the ITC’s claim construction and its determinations of
obviousness, anticipation, and noninfringement. For the
following reasons, we affirm-in-part, reverse-in-part, and
vacate-in-part the ITC’s decision and remand for further

This patent case involves smartphone touchscreens.

The concluding text:

We have considered the parties’ remaining arguments
and find that they are without merit. For the foregoing
reasons, we affirm-in-part, reverse-in-part, and vacate-in-part
the ITC’s decision and remand for further proceedings.

**Within the case, there was a priority issue:

The ALJ found that Perski ’455 anticipates the asserted
claims of the ’607 patent. He found that Perski
’455 was § 102(e) prior art despite Apple’s allegation of
conception prior to the filing date of the application that
issued as Perski ’455. The ALJ found that the provisional
application to which Perski ’455 claims priority, U.S.
Provisional Patent Application No. 60/446,808 (Perski
’808), provides written description support for the disclosure
in Perski ’455. After resolving the priority issue
against Apple, the ALJ determined that Perski ’455
anticipates the ’607 patent claims. The ALJ found that
Perski ’455 discloses a touchscreen that can detect multiple
touches at the same time. The ITC declined to review
these findings. (...)

As an initial matter, we agree with the ITC and
Motorola that substantial evidence supports the ITC’s
determination that the disclosure in Perski ’808 provides
adequate written support for Perski ’455. Perski ’808
provides the same multitouch scanning algorithms as
Perski ’455. Both disclose a sensor matrix that senses a
touch by scanning the nodes of the matrix. Both disclose
a “simple and direct approach” in which the circuitry
scans each node of the matrix, which requires at least
n*m steps for a sensor matrix that contains n columns
and m rows. Each reference also discloses the same
“faster approach.” (...)

We agree with Apple, however, that Perski ’808 fails
to incorporate by reference Morag.2 For a prior art reference
to anticipate a claim, the reference must disclose
each claim limitation in a single document. Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
(Fed. Cir. 2000). The prior art document, however, may
incorporate subject matter by reference to another docu-
ment such that the incorporated material becomes part of
the host document for the purposes of anticipation. Id.
“To incorporate material by reference, the host document
must identify with detailed particularity what specific
material it incorporates and clearly indicate where that
material is found in the various documents.”
Id. at 1282–
83. Whether and to what extent a host document incorporates
material by reference is a question of law, subject to
de novo review. Id. at 1283.

Here, Perski ’808 only makes a passing reference to
Morag as a “method similar” for detecting the presence of
a stylus. J.A. 16149. It does not affirmatively incorporate
any information. (...)

Because Perski ’808 does not incorporate by
reference the anticipatory subject matter from Morag, the
ITC’s finding that Perski ’455 anticipates claim 10 of the
’607 patent lacks substantial evidence.

Having resolved that Perski ’455 is prior art for
claims 1–7 of the ’607 patent, we conclude that substantial
evidence supports the ITC’s finding that Perski ’455
anticipates those claims.

As to obviousness:

Apple argues that the ITC erred in concluding that
SmartSkin in combination with Rekimoto rendered obvious
claim 10 of the ’607 patent. Apple contends that its
design and development story shows that a transparent
multitouch screen would not have been obvious to those of
skill in the art—Apple’s highly-skilled engineers had to
extensively research and modify the copper mesh
SmartSkin design. It asserts that objective evidence
reinforces that the ’607 patent is not obvious. Specifically,
Apple points to evidence that the industry praised the
iPhone’s touchscreen; that nearly every major cellphone
manufacturer, including Motorola, copied the iPhone’s
touchscreen; and that the iPhone was a commercial


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