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Patent Reinstated for Apple’s Touch Screen

(CN) - Now-ubiquitous touch screens for Apple iPhones and iPads are worthy of patent protection, the Federal Circuit ruled, reversing the U.S. International Trade Commission.

Apple first sued Motorola Mobility - now owned by Google - in 2010 for a number of patent infringements related to its iPhone and iPad. Motorola countersued over claims that Apple infringed on its wireless technology, and the two companies have been locked in a multi-pronged worldwide war ever since.

Though an administrative law judge found that Apple violated Motorola's 3G wireless patents, the ITC recently reversed that decision. Despite the finding, Motorola continued to enforce a German ban on Apple products and drew the ire of the European Commission, which opened antitrust proceedings earlier this year.

Back in the U.S., Apple had been appealing an ITC decision that invalidated one of its touch-screen patents for obviousness and anticipation, and a finding that Motorola did not infringe a second related patent. The first, patent '607, covers the way the screen handles finger swipes and touches. Patent '828 meanwhile discloses how the touch screen is made transparent.

A three-judge panel of the Federal Circuit panel found Wednesday that the first seven claims of Apple's '607 patent had been anticipated by a prior patent. The court rejected Apple's argument that its speed improvements and the enabling of multiple touches at once make it sufficiently different than the prior patent.

"Apple fails to provide any reason why the faster or optimal approaches would be too slow or inaccurate to detect multiple touches or why the disclosure of Perski '455 fails to enable multiple touches," Judge Kimberly Moore wrote for the panel. "To the contrary, as Motorola points out, the scanning algorithm disclosed in the '607 patent is very similar to the 'faster approach' disclosed in Perski '455. The '607 patent discloses a sensing circuit that detects changes in capacitance at each node along n columns in the matrix by cycling through one row at a time for the m rows. Moreover, the claims of the '607 patent do not expressly contain a speed or accuracy limitation. Thus, we conclude that substantial evidence supports the ITC's finding that Perski '455 anticipates claims 1-7 of the '607 patent."

The panel nevertheless took the ITC to task for its finding that claim 10 of the '607 patent should be dismissed for obviousness. The ITC agreed with its administrative law judge that the Apple technology at issue stemmed from a previous innovation called SmartSkin without even examining Apple's evidence, according to the ruling.

"This is not adequate under our law," Moore wrote. "The ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all the evidence on both sides. The ITC analyzed only the disclosure of the prior art references and based solely on that evidence determined the claims would have been obvious."

The ITC's prejudicial failure to take into account industry accolades for the iPhone, sales figures and evidence of industrywide copying undermined its obviousness finding, according to the 37-page opinion.

"Apple presented evidence showing a nexus between the undisputed commercial success of the iPhone and the patented multitouch functionality, namely evidence that Apple's competitors copied its touchscreen and that those in the industry praised the iPhone's multitouch functionality," Moore wrote. "The ITC did not address any of this evidence."

She continued: "To be clear, we conclude that the ITC fact findings regarding the scope and content of the prior art (what the reference discloses) are supported by substantial evidence. We remand so the ITC can consider that evidence in conjunction with the evidence of secondary considerations and determine in the first instance whether claim 10 would have been obvious to one of skill in the art at the time of the invention." (Parentheses in opinion.)

The panel completely threw out the ITC's finding that Motorola did not infringe Apple's '828 patent. It agreed with Apple that the ITC improperly limited terms in the patent's specifications to find noninfringement.

In his partial dissent, Judge Jimmie Reyna said he would have gone further and reinstated the first seven claims of the '607 patent.

Reyna applauded Apple's innovation and said the majority made a mistake in invalidating the claims as secondary art.

"Based on the extensive record in this case, I believe Apple overcame significant complexities to produce a touchscreen with desirable optical properties that accurately detected multiple simultaneous touches," Reyna wrote. "Ultimately, it was Apple - not the prior art inventors - who identified the problem, disclosed the steps explaining how the problem was solved, and then created a marketplace for its contribution. By incorporating the invention in the patented products of the iPhone and iPad, Apple's efforts endowed users around the world with better access to information, more efficient communication, and unparalleled convenience to organize life on the mobile."

Apple scored a second victory Aug. 9 after the ITC ordered Samsung to stop importing devices that infringe two of the iPhone's patents. Patent '949 also concerns the device's touch screen, while patent '501 involves how the iPhone detects insertion of a microphone or headphones into the jack.

The commission found a ban on the importation of Samsung's infringing devices is "the appropriate remedy." It also issued cease-and-desist orders prohibiting the South Korean company from selling any infringing products already on store shelves.

This decision is "final, and the investigation is terminated," the ITC said.

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