Monday, December 9, 2013

How Apple Games the Patent System

Do read James Bessen’s article on the simple change could fix the patent system—which will never happen:

Consider, for example, Apple’s patent on the slide-to-unlock feature used to activate the iPhone (patent No. 8,046,721). This patent was found to be infringed in the lawsuit in which Apple won a nearly billion-dollar judgment against Samsung. But in 2005, when Apple first wanted to patent this feature, it had a problem. There were already dozens of patents covering this kind of activation function. This was not, after all, a major scientific breakthrough; all sorts of older technologies had dealt with different ways of activating a device. Moreover, years before Apple had even started iPhone development, a Swedish company, Neonode, had already been marketing a cellphone that you activated by sliding your finger across a touch screen. The way the Neonode cellphone implemented the feature differed slightly from the iPhone because it didn’t use a graphical icon that moved with your finger. But patents are supposed to be granted only for inventions that are not obvious to an engineer in the field, and engineers are taught that adding a graphical icon is a standard method of user interface design.

So it’s not surprising that Apple’s patent application was initially rejected. Apple’s lawyers tweaked the language. The examiner rejected it again. Apple tried another minor change in 2009, leading the examiner to issue a “final rejection.” Apple then filed a continuation. Three more times, Apple’s lawyers tweaked the claim language, argued the case to the patent examiner, and were rejected. Finally, in 2011, after Apple’s attorneys submitted slightly new language, the examiner relented and granted patent No. 8,046,721.

What was the great inventive step that convinced the patent examiner to finally issue a patent, the inventive step that is apparently worth hundreds of millions of dollars from Samsung? Apple added the word “continuous” to the patent claims: To unlock the cellphone under Apple’s patent, the user’s finger had to maintain continuous contact as it moved across the touch screen. It appears that Apple had worn the patent examiner down. Of course, the prior patents implicitly involved continuous motion without explicitly using that language. And people using Neonode’s phone had kept their fingers continuously in contact with the touch screen. But this language tweak gave the examiner a fig leaf to cover his weak justification for granting the patent. This was still a patent that should not have been issued. But the grant had consequences: Four months after the patent was issued, Apple sued Samsung.