Apple vs. Palm: the in-depth analysis
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Apple and Palm kicked a lot of dirt at each other last week -- acting Apple CEO Tim Cook flatly told analysts that
when asked specifically about competition like the Palm Pre, and Palm responded with a similarly-explicit
At issue, of course, is that the Pre employs a multitouch screen and gestures almost exactly like those made famous on the iPhone -- and if you'll recall, Steve Jobs
To top it all off, the past few days have seen a number of media outlets proclaim that Apple's been awarded a "multitouch patent" without so much as a shred of analysis, instead hyping up a supposed future conflict. That's just not how we play it, so we enlisted , a patent attorney in the Chicago office of , to help us clear up some of the confusion and misinformation that's out there -- read on for more.
Just a couple notes before we begin: first, we're not going to get into whether or not Apple or Palm should have been granted particular patents or if the patent system is working as it should -- that's a philosophical argument way outside the scope of any potential lawsuit that might arise. Suffice it to say that although we're aware the patent system has flaws, there's no debating that people and companies should be compensated for their work, and we're not going to begrudge Apple or Palm for trying to do everything they can within rules of the current system to protect and profit from the hundreds of millions of dollars each has spent on R&D. You can bet the public policy implications of the patent system don't keep Ed Colligan or Steve J we're going to assume both sides will be using every trick and decades-old patent it can find to win a potential lawsuit. Second, while we can sit here and play with an iPhone to figure out what exactly Apple's trying to patent, we really don't have much to go on with the Pre apart from some brief hands-on time with units running alpha-level code at CES, so we can't really make definitive calls one way or another. A lot can change between now and whenever the Pre is launched, so while we're going to do our best to identify the elements of the Pre and the iPhone that could potentially infringe Apple or Palm patents, treat the Pre stuff with an extra dose of salt.So now that we've got the caveats out of the way, let's get started breaking down the areas where Apple and Palm can really do some courtroom damage, shall we?Apple, multitouch and "the multitouch patent"If you're to believe the conventional wisdom, Apple has a death grip on multitouch patents, which is why we haven't seen it (officially) implemented or fully exploited on other capacitive touchscreen phones like the G1 and Storm, even though they might be . Like all conventional wisdom, this meme is partially rooted in reality, and partially exaggerated for the sake of the story: while multitouch itself is nothing new -- Palm PR is actually sending out this
showing roots of multitouch appearing as early as 1984 -- Steve wasn't kidding around when he said that Apple had patents on its particular implementation. The company purchased a
in 2005, and several patents on the tech came along with founders Wayne Westerman and John Elias -- and Apple's been busy since, applying for several more multitouch patents in the three years since the acquisition.Here's the thing, though -- patent #7,479,949, entitled "" that you might have seen touted around the web as Apple's "key multitouch patent"? It's really not, at least anymore. Patents become narrower in scope as they go through the approval process, and although we teasingly referred to it as
when it was initially filed, it now only covers touch devices that have a very specific interface feature: sensing whether or not you want to just scroll up and down in one dimension or pan around in two dimensions based on the angle you initially move your finger relative to the screen. It's way easier to explain this in a video:
There's a little more to it, but that's really the key element covered in the broadest claims of the patent. If a device doesn't have this feature, it doesn't infringe this patent. So in order for Apple to win a case against Palm based on this patent, it would have to show that the Pre has the same scrolling behavior. Which it very well might, as we saw at CES:
(Skip to the bookmark if it doesn't load automatically)
That looks awfully similar, if you ask us, but without having spent the same amount of time playing with the Pre as we did toying with an iPhone to figure out what this patent was getting at, we can't say for sure it's the same thing. Let's just say it'd be for the best if the Pre was always panning in two dimensions, rather than switching to a purely vertical scrolling mode -- Apple's patent really wouldn't be applicable in that case. Easy, right?That's not the case for another iPhone interface patent, which is less to do with "multitouch" and more to do with touchscreen interface behavior (a common theme with Apple's iPhone patents, actually): #7,469,381, entitled "" This one covers a pretty famous iPhone behavior -- scrolling to the end of a document, revealing the edge, and then "springing back." Again, way easier to demonstrate on video:
Yep, the Pre does it exactly the same way:
(Skip to the bookmark if it doesn't load automatically)
It's not going to be easy for Palm to claim that the Pre isn't infringing this one -- there's just no denying the note-perfect reproduction of the iPhone behavior. We'll see if Palm releases the Pre with this interface intact, since Apple has at least the beginnings of a claim against this one.So where's the "multitouch patent" everyone keeps going on about? Well, we certainly couldn't find the sort of broad patent that would qualify, and we didn't find much of anything that would keep anyone from using multitouch gestures like pinch-to-zoom -- in fact, Apple has a better patent position with regard to pinching gestures to cut, copy and paste than it does on pinching to zoom. We're not kidding: it picked up #7,339,580 "" last year, which straight-up covers "generating a cut command in response to a pinching motion between a thumb and a fingertip detected on a multi-touch-sensitive surface." You won't find anything like that for pinch-to-zoom, and at this point there are so many
(including Microsoft
and ) out there
that we don't know if Apple could convince Uncle Sam to dole out a patent on the idea. Go ahead and skip the Flintstones, there's your irony for the day.Of course, just because Apple's current multitouch patents aren't as broad and sweeping as commonly assumed doesn't mean it can't put the hurt on Palm with what it does have -- and from what we've seen, the Pre's in some dangerous territory. (Plus, Apple still has plenty of pending patent applications out there it can try and tweak to target the Pre, but we'll get to that later.) We'll be able to find out way more when the Pre is actually launched -- trying to determine exact behaviors from short videos and hazy recollections is a road to ruin.We do have an iPhone here, however -- and looking at some of Palm's patents, we can pretty much say that Apple's got some 'splainin to do.Palm's patent portfolioIn all the rush to portray Apple as the big bad wolf, people seem to have forgotten that Palm is a comeback story -- it's been in the game since 1992, and it's got a pretty hefty patent portfolio of its own. Take #7,268,775, entitled "" for example -- it covers automatically adjusting display brightness using an ambient light sensor while leaving a user-selected brightness setting alone. Yep, that's exactly how the iPhone does it:
Or how about #7,007,239, ""? Claim 10 is an almost exact description of the iPhone's phone app -- buttons for dialing, call history, contacts, and speed dial that stay on-screen as you toggle between them:
(510 is speed dial, 520 is the dialer, 530 is contacts, and 540 is call history)
Not only that, but it covers pulling up contacts by just typing in initials, which is totally in the iPhone:
Or how about #7,296,107, ""? It covers leaving the display at full brightness instead of auto-dimming while connected to a power source during sync -- go ahead and try it, iPhone owners, that's what it does. And let's not forget 2001's greatest hit, patent #7,231,208, "": it describes in detail a conference call management system that's exactly like the iPhone's -- you put one call on hold while you make another, and then you can independently manage each call from a single screen. Look familiar?
If you're going to say that the Pre crosses the boundaries of Apple's spring-back edge scrolling patent, you're really not in a position to say that the iPhone doesn't similarly ape Palm's call-management patent -- or the brightness patent, or the contacts patent, or the dim-during-sync patent, or... you get the idea. Apple might be the more infamous IP juggernaut, but Palm has literally hundreds of patents of its own, and we managed to dig up four that seem to directly implicate the iPhone in just a few hours of searching. Imagine what Palm's lawyers could do, armed with their actual knowledge of what Palm owns and the motivation of some serious hourly fees.The consequences of playing with fireIf you're asking yourself why Apple or Palm would develop a product that so obviously infringes on published patents, it's because somewhere along the line, each company made the decision that it could realistically convince a court that those patents were invalid -- most likely because they're "obvious," which is a word loaded with legal meaning in the patent realm. For our purposes, we can just say that "obvious" means that you can't patent a combination of different existing things, you have to do something new -- and while we're not going to judge Apple or Palm's patents on that standard, we will say that there's plenty of meat for the attorneys on both sides to chew on. All you really need to know is that by suing Palm, Apple's putting its iPhone patents at risk, and that's an awful big ante. Same for Palm if it sues Apple and loses -- it stands the risk of losing its patents, and we'd bet it's making a tidy sum licensing at least some of them out to other companies.Speaking of tidy sums, we haven't even begun to talk about the money involved here, and it's a lot -- enough to seriously tip the scales. Let's say Palm were to win: not only might Apple lose its patents, the court would at the very least award Palm royalties for the patents the iPhone infringes, and at , even a few percentage points adds up fast -- we're talking hundreds of millions of dollars. If Apple wins? Well, Palm hasn't sold any Pres yet, so its exposure to royalty payments is much lower -- and potentially losing some older patents it may or may not even be using doesn't seem like a terrible punishment. Then again, if Palm loses, it probably won't be able to ship the Pre on time or as promised, and that could well be the end of Palm.What both sides could do is tweak their pending patent applications to more accurately describe their competitors' products and then try to sue based on those -- it's actually considered good practice for tech companies to always have patents pending, so they can try and cut their competitors off. For example, Apple has a second patent identical to the "iPhone patent" filed with the patent office that it can certainly slightly revise to try and loop in the Pre's scrolling behavior. Not only that, but Apple also has tons of pending patent applications on multitouch that haven't really gone anywhere since they've been filed, like
that purports to flatly cover all capacitive multitouch surfaces. Will it ever get granted? Who knows -- but it's certainly another card Apple can try to keep in its back pocket.Wrap-upSo let's take a step back here and think about the bigger picture. You've got two large companies, each loaded up with tons of patents and pending patents, only some of which we've touched on here, and plenty of reasons to fight this one out: not only is Apple historically protective of its IP, it's got the massively popular iPhone to defend, while Palm's more or less staking its survival on the success of the Pre. It's going to be a bloodbath, right? Well, maybe, maybe not -- while we're not going to say that the attorneys on each side aren't mentally picking out colors for their new BMWs, it's important to realize that both sides stand to lose an awful lot in a potential lawsuit as well. Plus, to these lawyers' ears, Tim Cook's statements the other day sounded more like an attorney-coached nonanswer than some angry shot across Palm's bow -- it felt like Cook knew the question was coming and delivered his prepared response a tick early, not like he suddenly remembered Apple's multimillion-dollar patent portfolio and got fired up.Still, we doubt this will all settle quietly in the night. More likely it's going to come down to whoever decides to blink first -- and unless Palm decides to go out in a blaze of glory, files a declaratory judgment action and tries to preemptively invalidate Apple's patents, we'd say the first shot's going to come from Cupertino. After that, it's anyone's guess as to what might happen -- this isn't anywhere close to a full-blown patent analysis, and we're sure the attorneys and law students out there will be able to find angles and tactics we've missed. That said, we'll go on record: all we want is for both Apple and Palm to come to the table, hammer out a cross-licensing agreement like other companies in the wireless industry do all the time, and get back to work on innovative, exciting technologies and devices. The lawyers get paid that way too, you know.Disclaimer: Although Matt and Nilay are lawyers, they're not your lawyers, and this isn't formal legal advice or analysis. To the extent this article might contain any statements regarding infringement of a particular patent by a particular device or what those patents cover, those statements are attributable to Nilay, not Matt, who still makes a living by giving actual legal advice to actual clients.
Featured StoriesFrom Wikipedia, the free encyclopedia
or , the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. The claims are of the utmost importance both during
For instance, a claim could read:
"An apparatus for catching mice, said apparatus comprising a base, a spring member coupled to the base, and ..."
"A chemical composition for cleaning windows, said composition substantially consisting of 10–15% ammonia, ..."
"Method for computing future life expectancies, said method comprising gathering data including X, Y, Z, analyzing the data, comparing the analyzed data results..."
In most jurisdictions, a patent is a right to exclude others from making, using, importing, selling or offering for sale the subject matter defined by the claims when the claim is for a thing (apparatus, composition of matter, system, etc.). If a claim is for a method, the right to exclude would be to exclude any single party from carrying out all the steps of the claim. In order to exclude someone from using a patented invention, the patent owner, or patentee, needs to demonstrate in a court proceeding that what the other person is using falls within the scope of a therefore, it is more valuable to obtain claims that include the minimal set of limitations that differentiate an invention over what came before (i.e., the so-called ). But the fewer the limitations in a claim, the more likely it is that the claim will cover, or "read on," what came before and be rejected during examination or found to be invalid at a later time for lack of
or obviousness.
Patents have not always contained claims. In many
countries, patents did not contain claims before the 1970s. It was then often difficult to decide whether a product infringed a patent, since the sole basis to know the extent of protection was the description, in view of the prior art. Claims have been necessary parts of U.S. patent applications since the enactment of the Patent Act of 1836.
However, even among patent legal systems in which the claims are used as the reference to decide the scope of protection conferred by a patent, the way the claims are used may vary substantially. Traditionally, two types of claiming system exist:
the "central claiming system", according to which the claims identify the "centre" of the patented . The exact scope of the protection depends on the actual nature of the ’s contribution to the art in the concerned .
the "peripheral claiming system", according to which the claims identify the exact periphery, or boundary, of the conferred protection. In this system, the burden of drafting good claims is much higher on the patent applicant (or on his ). The applicant receives the protection he or she requested and almost nothing more, provided that the invention is
and . This theoretically makes it easier for third parties to examine whether
may exist or not.
No patent system today is a purely either central or peripheral, but the system used in
and most of the other countries of
is considered more central than the system currently used in the , the , and especially , which are more peripheral.[] In recent years, Japan's system has become more peripheral, while the system used in the United States has become less peripheral.[ – ]
In most modern patent laws, patent applications must have at least one claim, which are critical defining elements of the patent and the primary subject of examination. In some patent laws however, a
may be obtained for an application which does not contain any claim.
Main article:
(EPC), a claim must define the matter for which the protection is sought in terms of technical features. These technical features can be either structural (e.g. a , a ) or functional (e.g.
Regarding the structure of a claim, under the European Patent Convention, what is called the "preamble" is different from the meaning the "preamble" has under U.S. patent law. In an independent claim in Europe, the preamble is everything which precedes the expression "characterized in that" or "characterized by" in a claim written according to the so-called "two-part form", and therefore everything which is regarded as known in combination within one prior art document, namely the closest prior art document. For this reason, in Europe, the preamble of a claim is sometimes also called "pre-characterizing portion".
A claim may include the following parts:
A preamble that recites the class of the invention, and optionally its primary properties, purpose, or field: "An apparatus..." "A therapeutic method for treating cancer..." "A composition having an affinity for protein X..." This preamble may also reference another claim and refine it, e.g., "The method of claim 1..." (See "dependent claim" below.).
that characterizes the elements that follow. The phrases "comprising", "containing" and "including" are most often used and (under some patent laws, specifically US) preferable, as it means "having at least the following elements..." and are therefore open (inclusive) and do not exclude additional limitations. The phrases "consisting of" and "consisting essentially of" are (under some patent laws, specifically US) more limiting, as they mean "having all and only" or "virtually only" and are therefore closed (exclusive). In the US, the phrase "consisting of" excludes additional limitations, while the phrase "consisting essentially of" excludes additional limitations that would "materially affect the basic and novel characteristic(s) of the claimed invention".
A set of "limitations" that together describe the invention: "an X, a Y, and a Z connected to the X and the Y." The elements should be described as though they interact or cooperate to achieve the desired result. The distinction between elements and limitations is explained in the article .
Optionally, a purpose clause that further describes the overall operation of the invention, or the goal that the invention achieves ("wherein the Z simultaneously controls the X and Y," or "wherein the Z accomplishes purpose W by controlling X and Y," etc.)[]
The claims often use precise language. Certain words commonly used in claims have specific legal meanings determined by one or more court decisions. These meanings may be different from common usage. For instance, the word "comprises", when used in the claims of a United States patent, means "consists at least of". By contrast, the word "consists" means "consists only of", which will lead to a very different scope of protection.
Furthermore, in U.S. patent practice at least, inventors may "act as their own " in a patent application. That means that an inventor may give a common word or phrase a meaning that is very specific and different from the normal definition of said word or phrase. Thus a claim must be interpreted in light of the definitions provided in the specification of a patent. The specification of a patent is a written description of how to make and use the invention (see also: ). In U.S. law, a claim is interpreted in a . The
has constructed .
Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.
The examples and perspective in this article may not represent a
of the subject. Please
and discuss the issue on the . (December 2010)
There are two basic types of claims:
the independent claims, which stand on their own, and
the dependent claims, which depend on a single claim or on several claims and generally express particular embodiments as fall-back positions.
The expressions "in one embodiment", "in a preferred embodiment", "in a particular embodiment", "in an advantageous embodiment" or the like often appear in the description of patent applications and are used to introduce a particular implementation or method of carrying out the invention. These various embodiments may or may not each be claimed with specificity. They might serve as multiple examples of a more general "genus" that is claimed. In some cases the examiner might declare that what the applicant presented as variations of one invention are actually separate inventions that need to be examined individually.
An independent ("stand alone") claim does not refer to an earlier claim, whereas a dependent claim does refer to an earlier claim, assumes all of the limitations of that claim and then adds restrictions (e.g. "The handle of claim 2 where it is hinged.") Each dependent claim is, by law, more narrow than the independent claim upon which it depends. Although this results in coverage more narrow than provided by the independent claim upon which the second claim depends, it is additional coverage, and there are many advantages to the patent applicant in submitting and obtaining a full suite of dependent claims:
Clarification of the independent claim language: Independent claims are typically written with very broad terms, to avoid permitting competitors to circumvent the claim by altering some aspect of the basic design. But when a broad wording is used, it may raise a question as to the scope of the term itself. For example, does a "base" include a "set of legs"? A dependent claim, including the phrase, "wherein said base comprises a set of legs," if allowed by the , clarifies that the word base in the independent claim does not necessarily include legs. This is by the logic of claim differentiation. In the U.S, at least, each claim in an issued patent is presumed to cover different territory than any other claim. If in claim 2 the base must include legs, then the wording of claim 1 must not be taken as requiring the base to include legs. In practice, dependent claims are often used to home in on the inventor's preferred embodiment of the invention (e.g., the actual product design that the inventor intends to use.) The independent claim broadly des dependent claim #1 describes the invention in a narrower aspect that more specifically describes the
dependent claim #2 etc.
Possible invalidity of base claim: It is impossible to know, when beginning the application process and even at the time of patent issuance, if a patent claim is valid. This is because any publication dated before the application's
and published anywhere in any language can invalidate the claim (excluding publications by the inventor published during the grace period in certain countries such as U.S., Canada and Japan). Furthermore, even applications that were not yet published at the time of filling, but have a priority date prior to the priority date of the application, can also invalidate the claim. As it is impossible to gain an absolute and complete knowledge of every publication on earth, not to mention unpublished patent applications, there is always some degree of uncertainty. If the independent claim is determined to be invalid, however, a dependent claim may nevertheless survive, and may still be broad enough to bar competitors from valuable commercial territory.
Claim differentiation: In United States patent law, under the , each claim is presumed to cover a different aspect of the invention than in each other claim. This doctrine may be relied upon to help maintain broad claim scope in the case where a claim standing alone might be construed as having either a broad or a narrow interpretation. If a dependent claim is added that depends from this "parent" claim but is specifically drawn to the narrower interpretation, then the parent claim must necessarily be different - i.e., it must be the broader interpretation.[] As construed in the courts, the doctrine of claim differentiation dictates that it "is improper for courts to read into an independent claim a limitation explicitly set forth in another claim."Environmental Designs Ltd. v. Union Oil Co. of California, 713 F.2d 693, 699 (Fed. Cir. 1984). This means that if an independent claim recites a chair with a plurality of legs, and a dependent claim depending from the independent recites a chair with 4 legs, the independent claim is not limited to what is recited in the dependent claim. The dependent claim protects chairs with 4 legs, and the independent claim protects chairs with 4 legs as well as chairs having 2, 3, 5 or more legs.
Under the , when a claim in one particular category (see below), e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is not considered to be a dependent claim but an independent claim. Under U.S. law, this is still counted as a dependent claim, regardless of the class change.[]
The rules of claim drafting also permit "multiple dependent claims" that reference more than one other claim, e.g.: "3. Method of claim 1 or 2, further comprising..." The rules for this are quite specific: specific claims must be referenced ("the method of any of these other claims" is incorrect); the claims must be referenced in the alternative ("the method of claims 1 and 2" is incorrect); etc. While still acceptable, this claim style is seldom used in the U.S. because it is counted for filing fee purposes according to the number of claims that it references. Thus, if the claim depends from three former claims, it is counted for fee purposes as three dependent claims. In light of the "excess claim" fees currently imposed by the , this tactic can quickly become expensive. Multiple dependent claims are, however, very commonly used in other jurisdictions, including Canada[] and Europe.
Claims can also be classified in categories, i.e. in terms of what they claim. A claim can refer to
a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...). The claim is then called respectively "product claim" or "apparatus claim"; or
an activity, i.e. a process (or method) or a use. The claim is then called respectively "process claim" (or ) or "use claim".
Main article:
In addition to the above basic claim types, there are also many special types of claim which are used in different circumstances. Sometimes a particular claim form is required by law if a patent is to be granted for a particular invention, such as for a second medical use of a known substance where the "" claim might be required. Another reason to use a particular claim might be to catch a particular class of infringer.
, in relation to product-by-process claims
See Decision of Supreme Court of Japan (Saikou Saibansho), February 24, 1998 Case No. Heisei 6 (o) 10831No. Heisei 6 (o) 1083, first recognizing the .
See Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (Fed. Cir. 1997) (restricting the scope of the doctrine of equivalents.)
See for instance
, section  : "Technical features."
(previously
) and, for instance, EPO board of appeal , Headnote 1.
See for instance "The pre-characterising portion of the claim is based on..." in , item 2.1.
Jeffrey G. Sheldon, How To Write a Patent Application sec. 6.3.5.3 (1992); see American Choc. Mach. Co. v. Helmstetter, 142 Fed. 978, 980 (2d Cir. 1905) ("The distinction between a combination and an aggregation lies in the presence or absence of mutuality of action. To constitute a combination it is essential that there should be some joint operation performed by its elements, producing a result due to their joint and co-operating action, while in an aggregation there is a mere adding together of separate contributions, each operating independently of the other. Defendant's machine comprises merely an aggregation of two devices. There is no mechanical or functional mutuality of operation. It is not a combination because there is no co-operation between the coating and jarring mechanisms, because the two devices do not unitedly perform their functions, and because they are not necessarily combined in one machine, and do not act together to secure the final result.") (citations omitted).
UK House of Lords,
(paragraph 32)
"embodiment = a specific, disclosed example of how an inventive concept, that is more generally stated elsewhere in the disclosure, can be put into practice." in WIPO, , page 33.
, section  : "Independent and dependent claims": "(...) a dependent claim may refer back to one or more independent claims, to one or more dependent claims, or to both independent and dependent claims."
The construction of product-by-process claims, 11th , Copenhagen, Official Journal of the EPO 2003, Special Edition, No. 2, p. 20-75 ()
European Patent Convention
defining the extent of protection
defining the role of claims
(previously
) expressing the legal requirements regarding the form and content of the claims
US patent law (Title 35 of the US Code)
patentable subject matter
specification and claims
Studies on patent claims
This paper addresses issues in measuring the voluminosity of patent applications (number of claims and pages) and highlights patterns in its evolution.
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