13-09-06 Motorola Petition For Rehearing (Apple ITC Appeal)

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NON-CONFIDENTIAL Appeal No. 2012-1338
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT APPLE INC., Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee, and MOTOROLA MOBILITY, INC., Intervenor. Appeal from the United States International Trade Commission in Investigation No. 337-TA-750 INTERVENOR MOTOROLA MOBILITY, INC.S PETITION FOR PANEL REHEARING AND REHEARING EN BANC Charles K. Verhoeven QUINN EMANUEL URQUHART & SULLIVAN LLP 50 California St., 22nd Floor San Francisco, CA 94111 (415) 875-6600 David A. Nelson QUINN EMANUEL URQUHART & SULLIVAN LLP 500 W. Madison St., Suite 2450 Chicago, IL 60661 (312) 705-7400 Edward J. DeFranco Alexander Rudis Matthew A. Traupman QUINN EMANUEL URQUHART & SULLIVAN LLP 51 Madison Ave., 22nd Floor New York, NY 10010 (212) 849-7000 Attorneys for Intervenor Motorola Mobility, Inc.
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CERTIFICATE OF INTEREST Counsel for Intervenor Motorola Mobility, Inc. certifies the following: 1. The full name of every party or amicus represented by me is:
Motorola Mobility LLC, formerly known as Motorola Mobility, Inc. On June 22, 2012, Intervenor Motorola Mobility, Inc. was converted into a Delaware limited liability company, changing its name to Motorola Mobility LLC. 2. None. 3. All parent corporations and any publicly held companies that The name of the real parties in interest represented by me is:
own 10 percent or more of the stock of the party or amicus curiae represented by me are: Motorola Mobility LLC is a wholly owned subsidiary of Google Inc., a publicly held company. 4. The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this Court are: See the Addendum to Motorolas Certificate of Interest on the following page.
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ADDENDUM TO MOTOROLAS CERTIFICATE OF INTEREST The names of all law firms and partners or associates that appeared for the party now represented by me in the agency or that are expected to appear in this court are: QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven David A. Nelson Edward J. DeFranco David Eiseman Alexander Rudis Brian Dunne Matthew A. Traupman Stephen Straub Anastasia Fernands Tigran Vardanian Graham Pechenik Cathleen Garrigan Greg Maskel Abhishek Bapna David Shaul Aaron Perez-Daple Robert Cleary, Jr. Geneva McDaniel STEPTOE & JOHNSON LLP Charles F. Schill Jamie B. Beaber
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Respectfully submitted,
Dated: September 6, 2013
By:
s/ David A. Nelson Charles K. Verhoeven QUINN EMANUEL URQUHART & SULLIVAN, LLP 50 California St., 22nd Floor San Francisco, CA 94111 Tel. (415) 875-6600 Fax (415) 875-6700 Edward J. DeFranco Alexander Rudis Matthew A. Traupman QUINN EMANUEL URQUHART & SULLIVAN, LLP 51 Madison Ave., 22nd Floor New York, NY 10010 Tel. (212) 849-7000 Fax (212) 849-7100 David A. Nelson QUINN EMANUEL URQUHART & SULLIVAN, LLP 500 W. Madison St., Suite 2450 Chicago, IL 60661 Tel. (312) 705-7400 Fax (312) 705-7401 Attorneys for Intervenor Motorola Mobility, Inc.
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TABLE OF CONTENTS Page TABLE OF AUTHORITIES ......................................................................... vi TABLE OF ABBREVIATIONS .................................................................. vii STATEMENT OF COUNSEL ....................................................................... 1 INTRODUCTION .......................................................................................... 1 BACKGROUND ............................................................................................ 3 ARGUMENT FOR REHEARING ................................................................. 5 I. THE PANEL OVERLOOKED THE NEED TO REMAND FOR ADDITIONAL FACT FINDING REGARDING WHETHER THE PERSKI 455 PATENT IS PRIOR ART TO CLAIM 10 ............................................................................................ 5 THE PANELS FINDINGS ON SECONDARY CONSIDERATIONS OVERLOOKED THE FACT THAT APPLES IPHONE HAS NOT BEEN FOUND TO PRACTICE CLAIM 10 OF THE 607 PATENT..................................................... 7 THE PANEL MISAPPLIED FEDERAL CIRCUIT CASE LAW ON THE NEXUS REQUIRED TO ESTABLISH SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS................................................................................... 9
II.
III.
ARGUMENT IN SUPPORT OF REHEARING EN BANC ........................ 11 I. THE PANELS OPINION CONFLICTS WITH THIS COURTS PRECEDENT REQUIRING A FINDING THAT THE COMMERCIALLY SUCCESSFUL PRODUCT PRACTICES THE ASSERTED CLAIMS ........................................ 11
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II.
THE PANELS OPINION SIGNIFICANTLY LOWERS THE STANDARD FOR ESTABLISHING A NEXUS BETWEEN SALES OF A PRODUCT AND THE MERITS OF THE CLAIMED INVENTION ................................................................... 13
CONCLUSION ............................................................................................. 15 Material has been deleted from page 7 of the non-confidential version of Intervenor Motorola Mobility, Inc.s Petition For Panel Rehearing And Rehearing En Banc. This material is deemed confidential business information pursuant to 19 U.S.C. 1337(n) and 19 C.F.R. 210.5, and pursuant to the Protective Order entered November 30, 2010, and the Orders Amending the Protective Order entered January 14, 2011, and June 16, 2011. The material omitted from these pages contains confidential deposition and hearing testimony, confidential business information, confidential patent application information, and confidential licensing information.
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TABLE OF AUTHORITIES Page Cases Commil USA, LLC v. Cisco System, Inc., 2013 U.S. App. LEXIS 12943 (Fed. Cir. June 25, 2013).......................... 9 Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988) ............................................................... 10 DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) ................................................................. 8 Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).............................................................................. passim J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997) ................................................. 1, 8, 10, 12 In re Kao, 639 F.3d 1057 (Fed. Cir. 2011) ........................................................... 1, 10 Muniauction, Inc. v. Thompson Corp., 532 F.3d 1318 (Fed. Cir. 2008) ........................................................... 8, 14 Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006) ....................................................... 1, 8, 10 Ritchie v. Vast Res., Inc., 563 F.3d 1334 (Fed. Cir. 2009) ................................................................. 9 Tokai Corp. v. Eaton Enterprise, Inc., 632 F.3d 1358 (Fed. Cir. 2011) ............................................... 1, 10, 14, 15 Statutes 35 U.S.C. 102(e) ...................................................................................... 2, 5 35 U.S.C. 103 ............................................................................................... 1
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TABLE OF ABBREVIATIONS A_____ ALJ Blue Br. The cited page(s) of the Joint Appendix Administrative Law Judge Corrected Opening Brief and Addendum of Appellant Apple Inc. United States International Trade Commission Initial Determination (A35-253) U.S. Patent No. 7,372,455 (A16601-36)
Commission or ITC ID Perski 455
Perski 808 provisional Section 337 SmartSkin
U.S. Provisional Patent Application No. 60/446,808 (A16147-55) 19 U.S.C. 1337 SmartSkin: An Infrastructure for Freehand Manipulation on Interface, CHI 2002, April 22-25, 2002 (A13597-604) Reply Brief of Appellant Apple Inc. U.S. Patent No. 7,663,607 (A531-63)
Gray Br. 607 patent .
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STATEMENT OF COUNSEL Based on my professional judgment, I believe the panel decision is contrary to the following decision of the Supreme Court of the United States and precedents of this Court: Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966); J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006); Tokai Corp. v. Eaton Enter., Inc., 632 F.3d 1358 (Fed. Cir. 2011); In re Kao, 639 F.3d 1057 (Fed. Cir. 2011). Based on my professional judgment, I also believe this appeal requires an answer to one or more precedent-setting questions of exceptional importance: 1. Whether commercial success can be established without a
finding that the commercially successful product practices the claims being challenged under 35 U.S.C. 103. 2. Whether a patentee can establish commercial success as
evidence of non-obviousness when the features the patentee alleges are responsible for creating the commercial success are found in the prior art. s/ David A. Nelson Attorney for Intervenor INTRODUCTION The panel correctly affirmed the ITCs finding that seven of the eight asserted claims of the 607 patent are invalid; however, by invalidating some, but not all, of the asserted claims, the panel overlooked facts and
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misapplied the law as they uniquely apply to claim 10, the only remaining asserted claim. First, the panel mistakenly failed to remand for additional fact finding on the issue of whether the Perski 455 patent is prior art to claim 10. With respect to claim 10, the panel found that the Perski 455 patent is not entitled to the filing date of its provisional application; however, the Perski 455 patent itself was filed before Apples 607 patent. Thus, even without the benefit of its provisional, Perski is prior art under 35 U.S.C. 102(e) unless Apple can establish an earlier priority date. Because there has been no fact finding on this issue, a remand is required. Second, the panel overlooked the fact that there has been no finding that Apples iPhone practices claim 10. The panel found that Apple had conclusively established commercial success with respect to claim 10 based on its iPhone sales; however, the only claim that Apple was found to practice is claim 1, a claim that the panel found anticipated by the Perski 455 patent. The panels holding that Apple had established commercial success without an underlying finding that the iPhone practices claim 10 is inconsistent with this Courts precedent. Finally, the panel misapplied this Courts precedent regarding the required nexus between the iPhones commercial success and the merits of the claimed invention. This Courts case law requires a patentee to
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demonstrate that the products commercial success is based upon claimed features that are not present in the prior art. Yet, the panel undertook no analysis to determine if the features of Apples multitouch sensor that are responsible for the iPhones commercial success were present in prior art touchscreens such as the one described in the Perski 455 patent. BACKGROUND 1. The only patent relevant to this petition, the 607 patent, relates
to a transparent touchscreen that can detect more than one finger touch at the same time, a multitouch screen. A532-61. Apple asserted claims 1-7 and 10, of which claims 1 and 10 are independent. Although they both relate to a multitouch screen, claims 1 and 10 recite a different sensor structure. A561(21:35-55); A561(22:23-55). For example, claim 10 requires three glass members with transparent electrodes (typically made of ITO) deposited over two of the members. A561(21:35-55). Claim 1 allows for the two transparent electrodes to be deposited over both sides of a single substrate. A561(22:23-55). The ALJ found that each of the asserted claims of the 607 patent were invalid on two separate grounds. 2. The first basis for the ALJs invalidity finding was that the
Perski 455 patent anticipated each of the asserted claims of the 607 patent. A181-86. One of the issues before the ALJ and on appeal was whether the
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Perski 455 patent is prior art to the 607 patent. The Perski 455 patent was filed on January 15, 2004 and claims priority to a provisional application the Perski 808 provisional filed on February 10, 2003. Apples 607 patent was filed on May 6, 2004. Apple alleged that it reduced the subject matter of the 607 patent to practice in December 2003. The ALJ found that the Perski 455 patent is entitled to the filing date of its provisional, and because the provisional was filed before Apples earliest alleged invention date, the ALJ found that Perski is prior art. The ALJ expressly declined to make any fact findings regarding Apples alleged invention date and subsequent diligence in reduction to practice. A182. 3. The ALJs second basis for his invalidity determination was
that the SmartSkin article renders each of the asserted claims of the 607 patent obvious. Of the four Graham factors, only the fourth factor, secondary considerations, is relevant to this petition. Regarding Apples alleged commercial success, the ALJ found that Apples iPhone practices claim 1 of the claimed invention of the 607 patent no findings were made with respect to the remaining asserted claims. A238. The ALJ then rejected Apples arguments that there was a nexus between the iPhones commercial success and the 607 patent, finding that the iPhones commercial success was due to factors unrelated to the merits of the 607 patent. A217.
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ARGUMENT FOR REHEARING I. THE PANEL OVERLOOKED THE NEED TO REMAND FOR ADDITIONAL FACT FINDING REGARDING WHETHER THE PERSKI 455 PATENT IS PRIOR ART TO CLAIM 10 Motorola does not seek rehearing regarding the panels determination that the Perski 455 patent is not entitled to the filing date of its provisional with respect to claim 10. Motorola does, however, seek rehearing regarding the procedural disposition that is necessitated by the panels decision. The correct procedural disposition is for the panel to remand the issue of whether the Perski 455 patent is prior art with respect to claim 10. As Apple itself admits, the determination of whether Perski 455 is prior art depends on two propositions of timing. Gray Br. 17. First is the priority date of the subject matter of claim 10, and second is the effective filing date of the Perski 455 patent. Id. The Perski 455 patent was filed on January 15, 2004 approximately five months before the 607 patent was filed. Unless Apple can establish an earlier priority date, the Perski 455 patent is prior art under 35 U.S.C. 102(e) even in light of the panels determination that Perski 455 does not relate back to the filing date of the provisional application. Apple alleges that it reduced the claimed subject matter to practice in December 2003 before the Perski 455 patent was filed but after the Perski 808 provisional was filed. Because the ALJ found
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that the Perski 455 patent was entitled to the filing date of the Perski 808 provisional, and, because this predated Apples earliest alleged conception date, the ALJ made no factual findings with respect to the date of conception or diligence in reduction to practice. A181-82. The panel affirmed the ALJs finding that claims 1-7 are entitled to the filing date of the provisional but reversed the ALJs finding with respect to claim 10. Op. at 9. Given the panels determination that Perski 455 is not entitled to the filing date of the Perski 808 provisional for claim 10, a remand for additional fact finding regarding Apples alleged priority date for claim 10 is required. Unless Apple can establish a priority date before January 15, 2004 for claim 10, the Perski 455 patent is still prior art even without the benefit of the provisional filing date. Indeed, Apple itself admits that a remand is necessary: If the ALJs ruling on the second proposition [that Perski 455 is entitled to the filing date of its provisional] was erroneous, this Court must remand to make the requisite finding on the first [whether Apple can establish its alleged priority date]. Gray Br. 17. The panel did not explicitly remand this issue and instead simply held that the ITCs finding of anticipation lacks substantial evidence. Op. at 9. Motorola respectfully requests that the panel clarify its decision so that it explicitly remands the issue of whether the Perski 455 patent is prior art to claim 10.
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Confidential Material Omitted II. THE PANELS FINDINGS ON SECONDARY CONSIDERATIONS OVERLOOKED THE FACT THAT APPLES IPHONE HAS NOT BEEN FOUND TO PRACTICE CLAIM 10 OF THE 607 PATENT In light of the panels finding that Perski 455 anticipates claims 1-7, the only claim relevant to the obviousness analysis is claim 10. With respect to secondary considerations of non-obviousness, the panel reversed the ALJs finding that Apple failed to establish a sufficient nexus between sales of the iPhone and the subject matter of the 607 patent. Op. at 17. The panels decision regarding secondary considerations rests upon a faulty factual premise: That the iPhone has been shown to practice claim 10. The ALJ determined that the iPhone practices claim 1 but expressly declined to making any findings with respect to the other asserted claims of the 607 patent. A238. There are significant structural differences between claims 1 and 10. Unlike claim 1, claim 10 requires that the conductive layers (typically ITO) be deposited on two separate glass members. A561(122:39-46). In contrast, the iPhone uses [[ ]] A19344. Because there has been no finding that the iPhone practices claim 10, the panels determination that Apple has established secondary considerations for claim 10 of the 607 patent based on iPhone sales conflicts with both Supreme Court and Federal Circuit precedent. Indeed,
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the entire rationale for evaluating secondary considerations is premised upon the notion that the product that demonstrates secondary considerations actually practices the patent. See Graham, 383 U.S. at 17-18 ([S]econdary considerations . . . might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.). Consistent with this premise, this Courts precedent consistently holds that commercial success requires a showing that a product practices the patent. For example in J.T. Eaton, this Court explained that commercial success is usually shown by significant sales in a relevant market, and that the successful product is the invention disclosed and claimed in the patent. . . . 106 F.3d at 1571; see also Muniauction, Inc. v. Thompson Corp., 532 F.3d 1318, 1327-28 (Fed. Cir. 2008); Ormco, 463 F.3d at 131112. Indeed without first establishing that the iPhone practices claim 10, any evidence relating to the commercial success of the iPhone, copying of the iPhone or industry praise for the iPhone cannot be relevant to the validity of claim 10 because it does not relate to the claimed subject matter. Apple may argue that evidence showing that the iPhone practices claim 1 is sufficient to establish commercial success for other claims of the 607 patent. This argument is erroneous for two reasons. First, invalidity is determined on a claim-by-claim basis. See, e.g., DyStar Textilfarben GmbH
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& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1372 (Fed. Cir. 2006). Establishing secondary considerations for one claim is not sufficient to establish secondary considerations for all other asserted claims. Second, claim 1 has been found invalid. It therefore cannot be practiced. Cf. Commil USA, LLC v. Cisco Sys., Inc., 2013 U.S. App. LEXIS 12943, at *14 (Fed. Cir. June 25, 2013). Based on the current record, there has been no finding that Apple practices any valid claim of the 607 patent. The proper disposition is to remand the issue of whether secondary considerations have been established so that the ITC can determine in the first instance if the iPhone practices claim 10. If the iPhone does not practice claim 10, there can be no secondary considerations for that claim. III. THE PANEL MISAPPLIED FEDERAL CIRCUIT CASE LAW ON THE NEXUS REQUIRED TO ESTABLISH SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS The panels commercial success analysis also conflicts with this Courts case law on secondary considerations. Although commercial success is an established secondary consideration, this Court has recognized that [t]he commercial success of a product can have many causes unrelated to patentable inventiveness. Ritchie v. Vast Res., Inc., 563 F.3d 1334, 1336 (Fed. Cir. 2009). That concern is especially true where, as in this case, the claimed invention is only one component of a multi-component product.
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See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Thus, this Courts case law requires that the patentee establish a nexus between the alleged commercial success and the merits of the claimed invention. Id. In order to establish the required nexus between a products commercial success and the merits of the claimed invention, this Courts precedent consistently requires that a patentee demonstrate that the products success is not the result of features found in the prior art. See Kao, 639 F.3d at 1068 (Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.) (emphasis in original); Tokai, 632 F.3d at 1369 (If commercial success is due to an element in the prior art, no nexus exists.); Ormco Corp., 463 F.3d at 1312 ([I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.); J.T. Eaton, 106 F.3d at 1571 ([T]he asserted commercial success must be due to the merits of the claimed invention beyond what was readily available in the prior art.). The panel found that commercial success had been conclusively established, finding that Apples evidence of industry copying of the multitouch screen and industry praise of this feature are strong evidence of
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nexus. Op. at 17. By focusing simply upon the iPhones multitouch screen, the panel overlooked the analysis required by this Courts case law. As the panel itself recognized, a multitouch screen already existed in the prior art the Perski 455 patent discloses a multitouch screen having all of the features recited by claims 1-7, including a transparent sensor that can simultaneously detect multiple touches. Op. at 8-9. The panel conducted no analysis to determine whether the features of the multitouch screen that allegedly drive sales of the iPhone (and that were the subject of alleged copying and industry praise) were already present in the prior art. This analysis is required under the case law cited above. ARGUMENT IN SUPPORT OF REHEARING EN BANC If the panel declines to reconsider its decision, the Court should rehear the case en banc to clarify the law regarding the proof needed to establish secondary considerations of nonobviousness. I. THE PANELS OPINION CONFLICTS WITH THIS COURTS PRECEDENT REQUIRING A FINDING THAT THE COMMERCIALLY SUCCESSFUL PRODUCT PRACTICES THE ASSERTED CLAIMS The panels decision that Apple had established commercial success conflicts with both the letter and spirit of this Courts jurisprudence on secondary considerations. Commercial success, like all other secondary considerations, is considered in the obviousness analysis to give light to the
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circumstances surrounding the origin of the subject matter sought to be patented. Graham, 383 U.S. at 17-18. In Graham, the Supreme Court explained that secondary considerations serve two important functions. First, secondary considerations focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation. Id. at 36. Second, they guard against the use of impressible hindsight when making an obviousness determination. Id. A crucial assumption underpinning the Supreme Courts rationale for including secondary considerations in the test for obviousness is that the product used to establish commercial successful (or industry praise or copying by competitors) practices the claim whose validity is being challenged. Consistent with this reasoning, Federal Circuit case law requires that a patentee demonstrate that its product practices the asserted claims. See, e.g., J.T. Eaton, 106 F.3d at 1571. The panels opinion conflicts with this precedent and is inconsistent with the rationale for considering commercial success set forth in Graham. The ALJ determined that Apples iPhone practices a single claim of the 607 patent, claim 1. The panel affirmed the ALJs finding that claim 1 is anticipated by the Perski 455 patent. Thus, based on the current record,
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Apple has not shown that it practices any valid claim of the 607 patent, and in particular, there has been no finding that Apple practices claim 10 the only claim relevant to the obviousness analysis. Nevertheless, the panel reversed the ALJ and found that Apple had conclusively established commercial success. Op. at 17. By ordering the ITC to consider on remand Apples commercial success when assessing the obviousness of claim 10 even though there has been no showing that Apple practices this claim, the panels opinion is inconsistent with this Courts precedent. Indeed, the panels findings here are completely divorced from the Supreme Courts original rationale for considering commercial success. If the iPhone does not practice claim 10, its commercial success does nothing to shed light on the circumstances surrounding the origin of the subject matter sought to be patented. Graham, 383 U.S. at 17-18. II. THE PANELS OPINION SIGNIFICANTLY LOWERS THE STANDARD FOR ESTABLISHING A NEXUS BETWEEN SALES OF A PRODUCT AND THE MERITS OF THE CLAIMED INVENTION The panels opinion regarding the legal standard needed to establish the nexus between sales of a product and the merits of the claimed invention separately merits en banc review to ensure uniformity in this Courts precedent. In addition to the threshold showing that the commercially successful product practices the asserted claim, this Courts precedent also
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requires that a patentee establish a nexus between the commercial success and the merits of the claimed invention. See, e .g., Muniauction, 532 F.3d at 1327. The nexus requirement flows directly from the rationale set forth in Graham: A product, particularly a multi-component product, may be commercially successful for a number of reasons; for example, the ALJ found that the iPhones commercial success was due to factors unrelated to the 607 patent, including the iPhones slim profile, light weight, good battery life, attractive design, easy to use software, and availability of numerous popular applications, songs and videos. A217. In order for commercial success to be relevant in an obviousness analysis, the consumer demand driving commercial sales of the product must be attributable to the novel aspects of the claimed invention. This nexus to the merits of the invention rather than an entire product, or, in the case of a multi-component product, a particular feature is particularly important in industries where technological progress occurs incrementally, leading to minor improvements over existing technology. Thus, as part of the nexus requirement, a patentee must show that the commercial success is the result of novel features and not simply elements in the prior art. See, e.g., Tokai, 632 F.3d at 1369. In this case, the panel lowered the standard for establishing the required nexus. The panel found
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that Apple established a sufficient nexus by showing copying by competitors and industry praise for the iPhones multitouch screen. Op. at 17. Yet, as the panel itself recognized in conjunction with its anticipation analysis, the prior art Perski 455 patent discloses a transparent touchscreen capable of detecting multiple touches at the same time. Id. at 9-10. Thus, simply attributing the iPhones commercial success to the multitouch screen does not establish the required link between the iPhones commercial success and the merits of the invention recited in claim 10. Without additional analysis, it is impossible to tell whether the features of the multitouch screen allegedly responsible for the iPhones commercial success are features of prior art multitouch screens such as the one described in Perski or whether they are attributable to the allegedly novel features recited by claim 10. By failing to conduct this analysis, the panels opinion significantly lowers the standard needed to establish the nexus between a products commercial success and the merits of the claimed invention. The panels new standard is completely divorced from the underlying rationale for considering commercial success in an obviousness analysis. CONCLUSION Motorola respectfully requests panel rehearing or rehearing en banc.
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Dated: September 6, 2013
By:
s/ David A. Nelson Charles K. Verhoeven QUINN EMANUEL URQUHART & SULLIVAN, LLP 50 California St., 22nd Floor San Francisco, CA 94111 Tel. (415) 875-6600 Fax (415) 875-6700 Edward J. DeFranco Alexander Rudis Matthew A. Traupman QUINN EMANUEL URQUHART & SULLIVAN, LLP 51 Madison Ave., 22nd Floor New York, NY 10010 Tel. (212) 849-7000 Fax (212) 849-7100 David A. Nelson QUINN EMANUEL URQUHART & SULLIVAN, LLP 500 W. Madison St., Suite 2450 Chicago, IL 60661 Tel. (312) 705-7400 Fax (312) 705-7401 Attorneys for Intervenor Motorola Mobility, Inc.
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ADDENDUM
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United States Court of Appeals for the Federal Circuit

______________________ APPLE INC., Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee,
AND
MOTOROLA MOBILITY, INC., Intervenor. ______________________ 2012-1338 ______________________ Appeal from the United States International Trade Commission in Investigation No. 337-TA-750. ______________________ Decided: August 7, 2013 ______________________ E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe, LLP, of New York, New York, argued for the appellant. With him on the brief were MARK S. DAVIES, RACHEL M. MCKENZIE and T. VANN PEARCE, JR., of Washington, DC.
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APPLE INC.
v. ITC
MEGAN M. VALENTINE, Attorney Advisor, Office of General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With her on the brief were DOMINIC L. BIANCHI, Acting General Counsel, and ANDREA C. CASSON, Assistant General Counsel for Litigation. DAVID A. NELSON, Quinn Emanuel Urquhart & Sullivan LLP, of Chicago, Illinois, argued for intervenor. With him on the brief were CHARLES K. VERHOEVEN, of San Francisco, California. Of counsel on the brief were EDWARD J. DEFRANCO, ALEXANDER RUDIS and MATTHEW A. TRAUPMAN, of New York, New York. ______________________ Before MOORE, LINN, and REYNA, Circuit Judges. Opinion for the court filed by Circuit Judge MOORE. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge REYNA. MOORE, Circuit Judge. 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 ITCs 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 ITCs decision and remand for further proceedings. BACKGROUND This patent case involves smartphone touchscreens. The 607 patent discloses a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once. 607 patent, at [57]. To achieve the
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APPLE INC.
v. ITC
multitouch functionality, the touch panel employs a matrix of electrodes connected to circuits that measure the change in charge that occurs as a result of pressure applied to the screen. Id. col.5 l.27col.6 l.7. The pressure-induced change occurs because the electrode rows are in a different layer than the electrode columns. Id. col.5 l.15col.6 l.18. When a user touches the screen, the pressure applied at each intersection point causes charge to flow between the electrodes at that node. Id. Measuring circuits connected to the electrodes scan the matrix and measure the displaced charge at each node. Id. By detecting these changes, the touch panel can determine if and where a user has touched the screen. Id. The 607 patent also discloses how to make the touchscreen transparent. It teaches constructing the electrodes with indium tin oxide (ITO), a transparent material. 607 patent, col.12 ll.3552. But simply forming the electrodes from ITO may not render the matrix invisible because the ITO electrodes tend to be less transparent than gaps in the electrode matrix. Id. col.14 l.60col.15 l.23. To remedy this problem, the patent teaches the use of dummy ITO pads to fill in gaps in the matrix. Id. col.15 ll.824. By inserting these pads in the matrix gaps, the matrix has the optical properties of a uniform sheet of ITO and thus becomes invisible to the user. Id. The 828 patent discloses a method to determine if the displaced charge at the nodes corresponds to a finger touching the screen. It teaches that the touch panel software mathematically fit[s] an ellipse around the nodes at which the measuring circuits have detected a touch. 828 patent, figs. 1315, col.60 l.516. Performing the fit allows the device to determine if pressure applied to the screen constitutes a finger touch as well as track the movement of the finger across the touchscreen. Id. at [57].
Case: Case: 12-1338 12-1338
Filed: Filed: 09/06/2013 08/07/2013
APPLE INC.
v. ITC
Apple initiated proceedings in the ITC, alleging that Motorolas smartphones and tablets infringed various claims of the 607 and 828 patents. Apple alleged that Motorola infringed claims 17 and 10 of the 607 patent and claims 1, 2, 10, 11, 2426, and 29 of the 828 patent. Claim 1 of the 607 patent is representative of the asserted touch panel claims: A touch panel comprising a transparent capacitive sensing medium configured to detect multiple touches or near touches that occur at a same time and at distinct locations . . . wherein the transparent capacitive sensing medium comprises: a first layer having a plurality of transparent first conductive lines . . . ; and a second layer spatially separated from the first layer and having a plurality of transparent second conductive lines . . . each of the second conductive lines being operatively coupled to capacitive monitoring circuitry; wherein the capacitive monitoring circuitry is configured to detect changes in charge coupling between the first conductive lines and the second conductive lines. 607 patent, claim 1 (emphases added). Claim 10, also disputed on appeal, recites a similar display arrangement and requires the touch panel to form a pixilated image. Claim 1 of the 828 patent is representative of the asserted claims relating to mathematically fitting an ellipse: A method of processing input from a touchsensitive surface, the method comprising: receiving at least one proximity image representing a scan of a plurality of electrodes of the touchsensitive surface;
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APPLE INC.
v. ITC
segmenting each proximity image into one or more pixel groups that indicate significant proximity, each pixel group representing proximity of a distinguishable hand part or other touch object on or near the touch-sensitive surface; and mathematically fitting an ellipse to at least one of the pixel groups. 828 patent, claim 1 (emphasis added). Motorola prevailed in the ITC proceedings. While the ITC determined that an article describing SmartSkin, a prior art touchscreen system, did not anticipate the asserted claims of the 607 patent, it determined that SmartSkin rendered those claims obvious. The ITC also found that U.S. Patent No. 7,372,455 (Perski 455) anticipated the 607 patent claims. The ITC also found that Motorola did not infringe the 828 patent. It construed the term mathematically fitting an ellipse to require the method to perform a mathematical process whereby an ellipse is actually fitted to the data. J.A. 5870. Finding that the Motorola products do not fit an ellipse to the electrode data, the ITC determined that those products do not infringe the asserted claims of the 828 patent. Apple appeals. We have jurisdiction under 28 U.S.C. 1295(a)(6). DISCUSSION I. Standard of Review We review the ITCs legal determinations de novo and its factual findings for substantial evidence. Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294, 1302 (Fed. Cir. 2010). Claim construction is a matter of law, which we review de novo. Sorensen v. Intl Trade Commn, 427 F.3d 1375, 1378 (Fed. Cir. 2005). Obviousness is a question of law based on underlying facts. Crocs, 598 F.3d at 1308. We review the ITCs obviousness determination without deference and its factual findings for substantial evidence.
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APPLE INC.
v. ITC
Id. Whether a prior art reference anticipates the claims is a question of fact, reviewed for substantial evidence. Vizio, Inc. v. Intl Trade Commn, 605 F.3d 1330, 1342 (Fed. Cir. 2010). II. Anticipation of the 607 Patent: Perski 455 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 Apples 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. Apple argues that the ITC anticipation findings were in error. It contends that Perski 455 is not prior art because (1) Perski 808 does not disclose any way to determine whether multiple fingers touch the screen; and (2) Perski 808 does not specifically incorporate by reference the front end and digital unit aspects of U.S. Provisional Patent Application 60/406,662 (Morag) that the ALJ used to find claim 10 anticipated. Even if Perski 455 is prior art, Apple argues that the reference does not disclose detect[ing] multiple touches or near touches that occur at a same time and at distinct locations. It contends that the algorithm disclosed in Perski 455 cannot detect multiple touches that occur at the same time because it requires too much processing the algorithm requires at least n*m steps to accurately scan all the nodes in a sensor matrix containing m rows and n columns. Apple asserts that Motorola also failed to
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APPLE INC.
v. ITC
present any evidence that the matrix disclosed in Perski 455 can accurately detect multiple touches at the same time because a single large touch can cause an output signal to be detected on more than one conductor line. The ITC and Motorola respond that Perski 455 is prior art to the 607 patent. They argue that Perski 808 discloses the same sensor matrix and multitouch detection algorithms as Perski 455. Regarding claim 10, Motorola argues that Perski 808 specifically incorporates the relevant portions of Morag. The ITC and Motorola argue that Perski 455 discloses all of the limitations of the 607 patent claims. They argue that Perski 455 discloses a sensor that can detect multiple touches at the same time. They contend that the claims do not require a particular speed or accuracy in detecting the multiple touches, and regardless, Perski 455 discloses both simple and faster detection algorithms. Lastly, Motorola asserts that Perski 808 discloses the exact scanning method that the 607 patent discloses to detect multiple touches or near touches that occur at a same time and at distinct locations. As an initial matter, we agree with the ITC and Motorola that substantial evidence supports the ITCs 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. Specifically, each discloses scanning the nodes affiliated with a group of lines on one axis, which requires between two steps and n+m steps depending on the number of lines in the group. This faster
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APPLE INC.
v. ITC
approach, however, is not as accurate when detecting multiple touches that occur simultaneously at specific locations. To remedy this problem, both references disclose the optimal approach of combining the two methods to achieve the right balance of speed and accuracy. Thus, substantial evidence supports the ITCs finding that Perski 808 provides written support for Perski 455.1 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 docuThe dissent contends that Perski 808 does not provide adequate written support for Perski 455 because Perski 808 discloses multi-touch detection only as a goal, whereas Perski 455 enables the detection of multiple touches. Dissent at 89. This is incorrect. Perski 808 explains that the disclosed scanning algorithms are able to detect more than one finger touch at the same time. J.A. 16152. It discloses that the touchscreen detector is capable of detecting multiple finger touches simultaneously. J.A. 16151. Moreover, Perski 808 expressly states that [t]he present invention . . . enable[s] multiple and simultaneous finger inputs directly on the display. J.A. 16149. Nothing in the record supports the dissents view that the scanning algorithms in Perski 808 could not detect multiple touches simultaneously. Indeed, the faster approach described in Perski 808 is virtually identical to the scanning algorithm disclosed in the 607 patent.
1
Contrary to arguments by Motorola and the ITC, Apple raised this argument in its petition for ITC review and thus preserved it for appeal.
2
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APPLE INC.
v. ITC
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. Perski 808 does not even refer to the particular functionality in Morag that detects the presence of a stylus, let alone the process that outputs touch event information to form a pixilated image, as required by claim 10. Thus, Perski 808s reference to Morag falls short of identifying with detailed particularity the material that discloses the pixilated image limitation in claim 10. Because Perski 808 does not incorporate by reference the anticipatory subject matter from Morag, the ITCs finding that Perski 455 anticipates claim 10 of the 607 patent lacks substantial evidence. Having resolved that Perski 455 is prior art for claims 17 of the 607 patent, we conclude that substantial evidence supports the ITCs finding that Perski 455 anticipates those claims. Perski 455 discloses an embodiment in which [a] two-dimensional sensor matrix lies in a transparent layer over an electronic display device and a finger touch at a certain location on the matrix increases the capacitance between the first conductor line and the orthogonal conductor line which happens to be at or closest to the touch position. Perski 455, col.13 ll.3240 (reference numerals omitted). It discloses two matrix scanning algorithms that are preferably able to detect more than one finger touch at the same time. Id. col.14 ll.1519.
Case: Case:12-1338 12-1338
Document: Document:74-2 75 Page: Page:35 10 Filed: Filed:09/06/2013 08/07/2013
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APPLE INC.
v. ITC
As recounted above, the number of steps required to scan the matrix depends on the number of matrix columns and rows. The matrix disclosed in Perski 455 has n columns and m rows. Perski 455, col.13 l.65col.14 l.4. Apple is correct that the slower method disclosed in Perski 455 requires at least n*m steps to scan the matrix because it scans each node one by one. Id. col.14 ll.2043. But the reference also discloses a faster approach that requires between two steps and a maximum of n+m steps. Id. col.14. ll.4456. The faster approach scans groups of nodes per step, which significantly reduces the number of steps required to scan the matrix. Id. The reference also discloses a blend of the slower and faster approaches as the optimal approach to detecting multiple touches. Id. col.14 l.5759. 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. 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. 607 patent, col.5 l.60col.6 l.6. Moreover, the claims of the 607 patent do not expressly contain a speed or accuracy limitation. Thus, we conclude that substantial evidence supports the ITCs finding that Perski 455 anticipates claims 17 of the 607 patent. The ITCs decision that Perski 455 anticipates claim 10, however, lacks substantial evidence. III. Anticipation and Obviousness of the 607 Patent: SmartSkin A. Anticipation Motorola argues that if we reverse the ITCs decision that Perski 455 anticipates claim 10 of the 607 patent,
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APPLE INC.
v. ITC
11
we should reverse the ITCs decision that SmartSkin does not anticipate claim 10. The ALJ determined that SmartSkin does not disclose the use of transparent conductive lines because the references statements about using transparent ITO conductive lines related to future work. The ITC declined to review the ALJs finding. Motorola argues that the ALJ erred because SmartSkins disclosure would have enabled a skilled artisan to build a touchscreen using transparent ITO electrodes. We agree with Apple and the ITC that substantial evidence supports the ITCs finding of no anticipation. SmartSkin discloses an opaque surface covered with a grid of copper electrodes, not a transparent touchscreen based on ITO electrodes. In the SmartSkin system, a projector displays an image on the surface and circuitry connected to the copper electrode grid detects when a user touches the surface, enabling the surface to operate as a touch-screen. SmartSkin explains that its authors had developed two working interactive surface systems based on this technology: a table and a tablet. J.A. 13603. Figure 7 from SmartSkin shows an exemplary table system:
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12
APPLE INC.
v. ITC
J.A. 13599. Thus, the reference explains that the authors had not achieved a touchscreen employing transparent electrodes. The only discussion of transparent electrodes appears under the Conclusions and Directions for Future Work section, in which the authors explain that they were interested in future research directions. J.A. 13603. One of those directions was the use of transparent ITO electrodes that are mounted in front of a flat panel display or a rear-projection screen. Id. There is no disclosure that the authors had achieved a transparent touch screen and the record does not indicate that it would have been routine to do so. Nor is there any disclosure in SmartSkin that the matrix of ITO electrodes would have created the transparent . . . layer[s] recited in claim 10. Although the ITO electrodes are transparent, the 607 patent explains that, when arranged in a matrix, the patterned ITO can become quite visible thereby producing a touchscreen with undesirable optical properties. 607 patent, col.14 l.65col.15 l.3. We do not agree with Motorola that the ITCs determination regarding the disclosure of the SmartSkin reference lacks substantial evidence. Given SmartSkins limited disclosure, we decline to disturb the ITCs finding
Case: Case:12-1338 12-1338
APPLE INC.
v. ITC
13
that Motorola failed to prove that SmartSkin anticipates claim 10 of the 607 patent. B. Obviousness Despite finding that SmartSkin did not anticipate the 607 patent claims, the ALJ concluded that they would have been obvious in light of SmartSkin in combination with a patent application that stemmed from the SmartSkin project, Unexamined Japanese Patent Application No. 2002-342033A (Rekimoto). The ITC reviewed the ALJs decision and upheld it. The ITC agreed with the ALJs conclusion that SmartSkin provides a motivation to combine the use of transparent electrodes with a mutual capacitance sensor. The ITC also agreed with the ALJs finding that Rekimoto disclosed the limitations in claim 10 that are absent from SmartSkin. 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 artApples 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 iPhones touchscreen; that nearly every major cellphone manufacturer, including Motorola, copied the iPhones touchscreen; and that the iPhone was a commercial success. Apple argues that the ITC improperly employed a hindsight analysis by asking whether the invention was different from the prior art. Second, Apple asserts that the ITC undervalued the ingenuity in measuring capacitance changes and hiding the ITO circuitry, both of which are absent in SmartSkin and Rekimoto. Third, Apple
Case: Case:12-1338 12-1338
14
APPLE INC.
v. ITC
contends that the ITC improperly ignored Apples objective evidence. The ITC and Motorola respond that claim 10 would have been obvious. They contend that claim 10 is not limited to a particular method to measure capacitance and does not require hiding the ITO circuitry to achieve complete transparency. They argue that SmartSkin and Rekimoto disclose every limitation of claim 10. Motorola argues that SmartSkin defines the same problem as the 607 patentcreating a multitouch surfaceand provides the solution, including the use of transparent ITO. It points to emails between Apples engineers that SmartSkin could work for multitouch input. The ITC and Motorola argue that Apples secondary consideration evidence is not adequate to overcome the strong prima facie showing of obviousness. They argue that multiple patents cover the iPhones touchscreen and that Apple failed to prove nexus between the 607 patented invention and the commercial success. They contend that the industry praise for the iPhone related to features other than the multitouch screen and assert that Apple presented no evidence of copying. We are troubled by the ITCs obviousness analysis. We have repeatedly held that evidence relating to all four Graham factorsincluding objective evidence of secondary considerationsmust be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of invention. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see also Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012) (collecting cases). Indeed, it is axiomatic that [t]he establishment of a prima facie case . . . is not a conclusion on the ultimate issue of obviousness. Transocean, 699 F.3d at 1348.
Case: Case:12-1338 12-1338
APPLE INC.
v. ITC
15
The ITC failed to follow this precedent. Prior to even mentioning the secondary considerations, the ALJ concluded that the evidence clearly and convincingly shows that the 607 patent is obvious in light of SmartSkin in combination with Rekimoto. J.A. 216. That error warrants vacating the ITCs decision. The ITC also concluded that claim 10 was obvious and issued its own findings regarding the first three Graham factors (rejecting some of the ALJ conclusions regarding the disclosures in the prior art). The ITC concluded that the 607 patent claims at issue would have been obvious in view of Smartskin in combination with Rekimoto. J.A. 529. The ITC, however, never even mentioned, much less weighed as part of the obviousness analysis, the secondary consideration evidence Apple presented. It stated only that it did not review the ALJ finding regarding secondary considerations. J.A. 523 n.7. This is not adequate under our law. The ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all the evidence on both sides.3 The ITC analyzed only the disclosure of the prior art references and based solely on that evidence determined the claims would have been obvious. We conclude that the ITCs fact findings regarding what the references disclose are supported by substantial evidence. And as the ALJ and the ITC found, the Smartskin reference is very close and expressly recommends as Conclusions and Directions for Future Work using transparent ITO electrodes to build a transparent SmartSkin sensor. J.A. 13603. Indeed, the reference teaches that this transparent sensor could be integrated with most of todays flat The dissents claim that objective evidence is the best evidence is not correct. Dissent at 1415. In an individual case, it is certainly possible that objective evidence may outweigh the evidence that tends to establish obviousness. It is also possible that strong evidence under the first three Graham factors may outweigh the objective evidence. But there is no hierarchy of evidence.
3
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16
APPLE INC.
v. ITC
panel displays because those systems rely on an active matrix and transparent electrodes. Id. The ITC erred, however, to the extent that it did not analyze the secondary consideration evidence. This error was not harmless. Secondary considerations evidence can establish that an invention appearing to have been obvious in light of the prior art was not and may be the most probative and cogent evidence in the record. Transocean, 699 F.3d at 1349 (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.3d 1530, 1538 (Fed. Cir. 1983)). This evidence guards against the use of hindsight because it helps turn back the clock and place the claims in the context that led to their invention. Mintz, 679 F.3d at 1378. Apple presented compelling secondary considerations evidence that may have rebutted even a strong showing under the first three Graham factors, and the ITC failed to grapple with it. For example, Apple presented evidence of industry praise by business publications. Time Magazine hailed the iPhone as the 2007 Invention of the Year in part because of the phones touchscreen and its multitouch capabilities. J.A. 748384. Bloomberg Businessweek issued a 2007 article entitled Apples Magic Touch Screen, in which it labeled the sophisticated multipoint touch screen as [t]he most impressive feature of the new iPhone. J.A. 7826. Around the same time, Wired Magazine recounted that, after Apple demonstrated the iPhone and its brilliant screen, an AT&T executive praised the iPhone as the best device I have ever seen. J.A. 8259 (internal quotation marks omitted). The ITC failed to address this evidence and the record does not appear to contain any contrary evidence. Apple also presented evidence of copying. failed to address this evidence as well. The ITC
Lastly, Apple presented evidence that the iPhone has achieved a high degree of commercial success. Apple
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APPLE INC.
v. ITC
17
presented financial information that showed that the iPhone and related products received billions in dollars of revenue from 2008 to 2010. J.A. 14184. Apple also presented evidence showing a nexus between the undisputed commercial success of the iPhone and the patented multitouch functionality, namely evidence that Apples competitors copied its touchscreen and that those in the industry praised the iPhones multitouch functionality. The ITC did not address any of this evidence.4 For the foregoing reasons, we vacate the ITCs decision that claim 10 of the 607 patent would have been obvious and remand the case for further proceedings. To be clear, we conclude that the ITC fact findings regarding the scope and content of the prior art (what the reference The ITC did not weigh this evidence. After concluding that the claims were obvious, the ALJ did find that there was no nexus between the commercial success of the iPhone and the multitouch functionality that is the subject of the 607 patent. J.A. 217. We conclude that this fact finding is not supported by substantial evidence. Apples evidence of industry copying of the multitouch screen and industry praise of this feature are strong evidence of nexus. The only contrary evidence is a cursory statement of Motorolas technical expert. Given the strong record evidence of nexus, this conclusory statement is insufficient to support the finding of no nexus. See Perske v. Office of Pers. Mgmt., 25 F.3d 1014, 1020 (Fed. Cir. 1994) (holding that the Merit Systems Protection Boards finding lacked substantial evidence because contrary evidence in the record overwhelm[ed] the evidence that supported the Boards finding); Eckstrom Indus., Inc. v. United States, 254 F.3d 1068, 1076 (Fed. Cir. 2001) (holding that the Department of Commerces fact finding was not supported by substantial evidence because, after a review of all of the evidence, the overwhelming evidence supported a contrary finding).
4
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APPLE INC.
v. ITC
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. IV. Noninfringement of 828 Patent The ALJ construed the term mathematically fitting an ellipse to require the method to perform a mathematical process whereby an ellipse is actually fitted to the data, and, from that ellipse, various parameters can be calculated. J.A. 5870. Based on this construction, the ALJ found that Motorolas accused products did not infringe because they only measure data from the touchscreen but do not actually fit an ellipse. The ITC declined to review the ALJs noninfrinement decision. Apple argues that the ITC improperly limited the term mathematically fitting an ellipse to require calculation of the ellipse parameters after the ellipse has been actually fitted. It contends that the specification repeatedly explains that the method fits an ellipse by calculating the parameters of that ellipse or by using default parameters as a baselinethere is no prior fitting or drawing of the ellipse. Apple asserts that it is irrelevant that the ellipse parameters could, in theory, define other shapes. The ITC and Motorola contend that the ALJ correctly construed the limitation to require the software to actually fit[] the ellipse and then calculate the parameters of the ellipse. They contend that the inventors amended the claims during prosecution to overcome a reference that obtain[ed] measured data . . . so long as the measured data happens to be measured from an object that is in general ellipse-like. J.A. 1192021. They argue that the plain language of the claim requires the software to mathematically fit[] an ellipse separate from calculating
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APPLE INC.
v. ITC
19
ellipse parameters. Lastly, they argue that the specification explains that the ellipse parameters are determined by fitting an ellipse. We agree with Apple that the ITC erroneously construed the mathematically fitting an ellipse limitation. The plain language requires the software to mathematically fit[] an ellipse to the data. That process refers to calculating the mathematical parameters that define an ellipse. The dependent claims further support this interpretation. Those claims recite the step of transmitting one or more ellipse parameters, 828 patent, claims 2, 3, which implies that the steps in the independent method claim have already calculated the ellipse parameters. Those claims do not imply, as Motorola contends, a separate step of calculating the ellipse parameters. The remainder of the intrinsic record is in accord with the ordinary meaning of the claim language. The specification repeatedly explains that the mathematical fitting process creates the parameters of the ellipse. E.g., 828 patent, Fig. 18, col.25 l.54col.26 l.21. The prosecution history is also consistent with the plain meaning of mathematically fitting an ellipse. During prosecution, the applicants distinguished a prior art reference on the basis that the reference obtained data that happened to be ellipse-like, i.e., the prior art never mathematically fit the received data. J.A. 11920 (emphasis omitted). Those statements are consistent with the ordinary meaning of mathematically fitting an ellipse and do not suggest that we should limit the term to require the method to actually fit[] [an ellipse] to the data. The correct construction only requires the method to calculate the parameters that define an ellipse. Accordingly, we conclude that the ITC erred in its construction of mathematically fitting an ellipse. Having adopted Apples construction, we vacate the ITCs decision that Motorola does not infringe the 828
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APPLE INC.
v. ITC
patent claims and remand the case for further proceedings. We do not accept Motorolas invitation that we render judgment of noninfringment on appeal. Contrary to Motorolas arguments, the ITC never found that the Xoom did not infringe under any construction. Nor did Apple concede noninfringment under any construction. See J.A. 133. Apples expert did testify that Motorolas non-Xoom products did not infringe, but that testimony was based on his acceptance of the ITCs construction of mathematically fitting an ellipse. J.A. 3065355. We thus vacate the ITCs decision that Motorola does not infringe the 828 patent claims and remand the case to allow the ITC to consider in the first instance whether the accused products infringe under the correct construction of mathematically fitting an ellipse. CONCLUSION 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-inpart the ITCs decision and remand for further proceedings. AFFIRMED-IN-PART, REVERSED-IN-PART, AND VACATED-IN-PART
Case: Case:12-1338 12-1338
United States Court of Appeals for the Federal Circuit

______________________ APPLE INC., Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee,
AND
MOTOROLA MOBILITY, INC., Intervenor. ______________________ 2012-1338 ______________________ Appeal from the United States International Trade Commission in Investigation No. 337-TA-750. ______________________ REYNA, Circuit Judge, concurring-in-part and dissentingin-part. I. The Smartphone has defined modern life. Be it in the workplace, the home, airports, or entertainment venues across America, individuals are tethered to their handheld devices. Not long ago, users primarily spoke into these devices. Today, fingers tapping, grazing, pinching, or scrolling the screen is a ubiquitous image that reflects how we conduct business, work, play, and
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APPLE INC.
v. ITC
live. The asserted patent in this case is an invention that has propelled not just technology, but also dramatically altered how humans across the globe interact and communicate. It marks true innovation. Today the majority invalidates seven claims in United States Patent No. 7,633,607 (the 607 Patent) based on prior art that would not enable one of skill in the art at the time of the invention. In concluding that the Perski 455 prior art reference can be backdated to claim priority to the provisional application, the majority misapplies our requirement that the earlier disclosure comply with 112 1. Given the critical differences between the provisional and non-provisional disclosures, I would reverse the ITCs finding that Perski 455 is entitled to the Perski 808 priority date and remand for additional proceedings. On the issue of obviousness, rather than adopting the ITCs determination that the SmartSkin prior art reference would have motivated one of skill in the art to combine mutual capacitance technology with transparent screens, I would hold as a matter of law that the asserted claims are not obvious. I join the majority in concluding that the ITC erred in making an obviousness determination without fully considering evidence pertaining to industry praise, copying, and commercial success, but I write separately to discuss my views as to the purpose and function of objective indicia of nonobviousness as indicators of innovation in the relevant field. I join the remainder of the majority opinion, including treatment of arguments relating to non-infringement of U.S. Patent No. 7,812,828, construction of the claim term mathematically fitting an ellipse, and the reasoning concluding that neither SmartSkin nor Perski 808 anticipate claim 10 of the 607 Patent.
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APPLE INC.
v. ITC
Apple characterizes its invention as the first transparent, full image touchscreen that accurately detects and responds to multiple touches at once. More precisely, the asserted claims of the 607 Patent generally disclose a touch panel having a transparent capacitive sensing medium1 configured to detect multiple, co-occurring touches at different locations to produce signals representative of the location of the touches. The touch panel, embodied in the marketplace as the interactive screen of an iPhone or iPad, is comprised of two layers of transparent electrically-isolated conductive lines where the two layers are spatially separated from each other and where conductive lines in one layer are positioned transverse to the conductive lines in the other layer, creating an array of intersection points. The images included below illustrate that the claimed detection and response to touch occurs through a mutual capacitance circuitry measuring the change in voltage between a horizontal wire and a vertical wire when a finger approaches a crossing point on the screen. See 607 Patent col. 9 ll. 52-62.
The claimed touchscreen sensors are made out of indium tin oxide (ITO). As implemented in the 607 Patent preferred embodiments, ITO circuitry was masked to the user through caulking ITO channels with clear insulation. 607 Patent col. 12 l. 24 to col. 13 l. 6 and col. 14 l. 60 to col. 17 l. 11.
1
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Case: Case:12-1338 12-1338
APPLE INC.
v. ITC
and exact terms. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002) (quoting statute). I dissent from the majoritys conclusion that Perski 455 is prior art to the 607 Patent. A. The Perski inventors initially filed a provisional patent applicationPerski 808on February 10, 2003. The non-provisional Perski 455 application was later filed on January 15, 2004. During the 11 months between the time the provisional and non-provisional applications were filed, the inventors continued to refine the invention, as reflected in the extensive revisions made in filings with the PTO. Those revisions clearly show that in filing for Perski 455, language from the provisional was removed and new language was added. Apple emphasizes the breadth of the inventors revisions by constructing a redline2 comparing the language of the provisional application in February 2003 and the language of the nonprovisional application in January 2004:
The language in black remained unchanged between the provisional and non-provisional filings. The language in red represents what appeared in the February 2003 filing of the provisional application, but was removed in the January 2004 filing of the non-provisional application. The language in blue represents additions made in the filing of the non-provisional application. The blue language never appeared in the original provisional application.
2
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J.A. 6857 (excerpted portion). Motorola argues that Perski 455 is entitled to the February 2003 priority date because the Perski 808 provisional application provides written description support for the claimed invention. On this point, the Administrative Law Judge agreed, finding that the Perski 808 provisional application sufficiently disclosed the finger detection method and described algorithms for use with transparent mutual capacitance. Apple contends that Perski 455 is not entitled to the earlier priority date because there is no clear and convincing evidence that Perski 808 satisfied the written description requirement. Apple submits that the provisional application lacked enabling disclosures because it was not until Perski 455 was filed in January 2004 that the inventors disclosed how the screen recognized multiple finger touches.
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Apple also argues that the reference is not anticipatory because there is testimony that the 607 Patent was conceived of between September 2003 and November 2003i.e., before the Perski 455 application.3 See J.A. 872829. The Administrative Law Judge never considered Apples evidence of an earlier conception date because he was satisfied that Perski 455 was entitled to the earlier priority date. J.A. 182 (declining to make any findings on Apples date of invention). On appeal, Apple seeks review of the Administrative Law Judges decision regarding the Perski 455 priority date and his failure to address the conception date for the 607 Patent. B. In section 119(e)(1) of the Patent Statute, a nonprovisional utility patent application may be afforded the priority date of a related provisional application if the two applications share at least one common inventor and the written description of the provisional application adequately supports the claims of the non-provisional application. To backdate the later application with the earlier priority date, the specification of the provisional application must contain a written description of the invention as defined in 112 1. New Railhead Mfg., L.L.C., 298 F.3d at 1295 (discussing 35 U.S.C. 119(e)(1) and 35 U.S.C. 112 1).
To prove an earlier conception date, Apple must show by clear and convincing evidence that it conceived of the claimed subject matter before its filing date. 35 U.S.C.A. 102(g)(2); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) ([P]riority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice.).
3
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My review of the differences between the Perski 808 application and the Perski 455 application leads me to determine that the prior application does not clearly conclude that the Perski inventors possessed the claimed invention as of February 10, 2003. Trading Tech. Intl., Inc. v. eSpeed, Inc., 595 F.3d 1340, 1359 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997)). In brief, Perski 455 should not have been awarded the earlier provisional application date because Perski 808 does not indicate that the inventors knew how to detect multiple touches in February 2003. As filed, the provisional application discusses finger detection as a goal, with the goal being to recognize all of the sensor matrix junctions that bypass signals due to external finger touch. J.A. 16152. Recitation of a goal, however, is not sufficient if the corresponding steps are not disclosed. The majority credits the incomplete discussion of scanning the nodes of a matrix as satisfying the written description requirement without explaining how such a reference would put the Perski inventors in possession of the method for recognizing multiple finger touches and then generating the appropriate output signal. Maj. Op. 7. Indeed, the n*m algorithm discussed and heavily relied on in the majoritys rationale is no more than the scanning of nodes in a matrix where n corresponds to columns and m corresponds to rows.4 I cannot agree that scanning a matrix is the same as teaching detection of multiple finger touches. The fact that a certain thing may result from a given set of circumstances is not sufficient to anticipate because ultimately the prior art shows what it shows. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 63940 (Fed. Cir. 2011) (internal citations omitted). I conclude that n*m, by itself, is not an algorithm. What is missing are corresponding steps, such as those added 11 months later.
4
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In January 2004, Perski 808 did not sufficiently explain how the multipoint detection would occur. J.A. 16152. It was not until Perski 455 that the inventors set forth a critical passage confirming that the initial goal had been met and procedures for detection were now possible: In fact, because it is typically necessary to repeat the procedure for the second axis so the number of steps is more typically 2*n*m steps. However, this method enables the detection of multiple finger touches. When an output signal is detected on more then [sic] one conductor that means more than one finger touch is present. The junctions that are being touched are the ones connecting the conductor that is currently being energized and the conductors which exhibit an output signal. J.A. 16610 at col. 14 ll. 35-43 (emphasis added); J.A. 6857 (indicating through color designations that the output signal language was not present in the Perski 808 application). The record reflects that the 2*n*m scanning method enabling the detection of multiple finger touches was absent in February 2003 and the provisional application was limited to the simplistic n*m method which by itself merely describes the existence of a gridi.e., intersection lines parallel to each other. Because the disclosure in Perski 808 would not convey to a skilled artisan that the detection of an output signal on more than one conductor corresponds to multiple touches, I would reverse the ITCs finding that Perski 455 is entitled to the Perski 808 priority date. I would thus remand for additional proceedings determining Apples conception date and whether, based on the newly developed record, Perski 455 qualifies as 102(e) prior art.
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III. In addressing whether the claims of the 607 Patent are obvious, the majority endorses the ITCs underlying findings regarding scope and content of the prior art leaving for another day resolution of the ultimate legal question of obviousness. Maj. Op. 18. I would decide the issue and reverse the ITCs determination that SmartSkin, alone or in combination with Rekimoto 033,5 would have motivated one of skill in the art to combine mutual capacitance technology with transparent screens. The asserted claims and the SmartSkin prior art are addressing two separate problems with two separate solutions. Prior to Apples invention, it was known how to achieve multitouch functionality on opaque surfaces and it was known how to achieve a transparent screen with single touch. But, a transparent touchscreen that accurately detected and responded to simultaneous multiple touches remained elusive. The record shows that after Steve Jobs charged Apples engineers with the seemingly unachievable task of solving the multitouch problem, Apple explored adapting the primitive mutual capacitance system disclosed in SmartSkin to a novel system operating with transparent electrodes. The undertaking was fraught with technical challenges and ultimately proved that the incomplete guidance of the SmartSkin prior art contradicts the ITCs The Administrative Law Judge based his obviousness analysis on SmartSkin in combination with Japanese Unexamined Patent Application Publication No. 2002342033A (Rekimoto 033). The ITC disagreed with the Administrative Law Judge that Rekimoto 033 disclosed a relevant use of transparent electrodes. J.A. 523, n.6. Because I would reverse the ITCs analysis based on the primary prior art reference, I do not discuss the secondary Rekimoto 033 reference.
5
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finding that SmartSkin would provide one of skill in the art with a reasonable expectation of success. J.A. 523. SmartSkin, discussing surface-finger interactions through a mutual capacitance system, was focused on opaque prototypes such as interactive tables or walls. SmartSkin did not share Apples focus of making a smaller, transparent screen interactive; rather, the grid of copper electrodes detected touch on two sizeable systems much larger than a handheld device or tablet: an 80 x 90 cm plywood table and a 32 x 24 cm gesture recognition pad. In my view, the prior art reference cannot be clear and convincing evidence of obviousness where, as here, it does not guide a skilled artisan towards a particular solution. Bayer v. Schering, 575 F.3d 1341, 1347 (Fed. Cir. 2009); see also Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (declining to find a claim obvious when the when prior art does not provide indication of which parameters were critical or direction as to which of many possible choices is likely to be successful). There is no basis to conclude that SmartSkin would teach a skilled artisan the foresight to realize Apples desired solution when the SmartSkin authors conceded that they did not know how to accomplish a multitouch screen with transparent electrodes. In the Future Work section, the SmartSkin authors muse that such a combination is possible, but they lacked the know-how to implement the very technology Apple sought: This work is still at an early stage and may develop in several directions. For example, interaction using multiple fingers and shapes is a very new area of human-computer interaction, and the interaction techniques described in this paper are just a few examples. More research is needed, in particular, focusing on careful usability evaluation.
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J.A. 13603 (emphases added). In light of the clearly stated uncertainty expressed by the SmartSkin authors that they could achieve a transparent touchscreen and that experimentation was still necessary to pursue the desired result, it was error to rely on SmartSkin to demonstrate that Apples invention was a predictable solution or an anticipated success. Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010). I note with great interest that the majority, in its anticipation discussion, recognizes that the SmartSkin authors had not achieved a touchscreen employing transparent electrodes. Maj. Op. 12. In discussing the disparities between the teachings in SmartSkin and those in the 607 Patent, the majority goes on to observe that SmartSkin provides no disclosure that the authors had achieved a transparent touch screen and the record does not indicate that it would have been routine to do so. Nor is there any disclosure in SmartSkin that the matrix of ITO electrodes would have created the transparent . . . layer[s] recited in claim 10. Maj. Op. 12. The majoritys anticipation discussion supports a finding of nonobviousness by pointing out that the prior art authors did not know how to achieve a transparent touchscreen and acknowledging that the skilled artisan would have numerous design decisions to make and/or obstacles to overcome even after consulting the prior art. While the type of hope discussed in SmartSkin can be said to drive science, it should not without caution be embraced as an impediment to actual innovation. Obviousness is not shown when prior art gives only general guidance as to the particular form of the claimed invention or how to achieve it. In re Rosuvastatin Calcium Patent Litigation, 703 F.3d 511, 518 (Fed. Cir. 2012) (quoting In re OFarrell, 853 F.2d 894, 903 (Fed. Cir. 1988)). In this case, SmartSkin does not amount to clear and convincing evidence because the prior art references lack satisfactory guidance as to how to transform the
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screen of a handheld device into an interactive surface reacting to simultaneous multiple touches of a users fingertips. Contrary to the ITCs conclusion that the asserted claims amount to no more than mechanical rearrangement of known pieces, the evidence supports that Apple, after identifying a problem pervading the prior art, succeeded in forging through obstacles to develop the solution. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). Because I believe that the record compels a legal conclusion that the asserted claims are not obvious, I dissent from the decision to remand the issue back to the ITC. IV. In finding that the ITC erred in assessing whether the asserted claims were obvious, the majority focuses on the objective evidence of nonobviousness, often referred to as secondary considerations. See Graham, 383 U.S. at 36. The majority correctly points to the ITCs failure to follow precedent and reach an obviousness conclusion after weighing all evidence on both sides. Maj. Op. 15. I agree with the majority that the ITC erred in not analyzing objective evidence of industry praise, copying, and commercial success. I write separately on this issue to express my view that an inventions recognition in the related industry and its success in the marketplace, along with the other Graham factors, could constitute strong evidence of innovation which could negate an obviousness finding. Objective evidence of secondary considerations of patentability are essential components of our obviousness inquiry. Power Integrations, Inc. v. Fairchild Semiconductor Intl., Inc., 711 F.3d 1348, 1356 (Fed. Cir. 2013) (citing In re Cyclobenzaprine Hydrochloride ExtendedRelease Capsule Patent Litigation, 676 F.3d 1063, 1076 79 (Fed. Cir. 2012)). This is especially true in this modern
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day of nanotechnology where what may be viewed as a mere incremental step could constitute a great leap in innovation. In order to protect against the prejudice of hindsight bias, courts make factual findings as to factors such as copying, long felt but unsolved need, failure of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention. Power Integrations, 711 F.3d at 1356 (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (collecting cases)). I emphasize that objective evidence of nonobviousness, such as that gleaned from the patented products role in the marketplace, is the indicia of the innovation principle upon which rests our system of patents. A major problem I detect in conclusions reached under 103 is that objective evidence of nonobviousness is too often treated as secondary considerations. In my view, objective evidence of nonobviousness is objective indicia of innovation. We must not lose sight that a patent, presumed valid, commemorates an inventors achievement that entitles her to full and equal consideration of all evidence before a conclusion on the issue of obviousness is reached. Our patent laws are designed to foster optimal incentives for innovation, yet too often the genius of an invention is dismissed by combination of known elements viewed through glasses of hindsight. Our cases highlight that inventive contribution often lies in defining the problem in a new revelatory way. Mintz, 679 F.3d at1377; Uniroyal, Inc. v. RudkinWiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988) (That which may be made clear and thus obvious to a court, with the invention fully diagrammed and aided by experts in the field, may have been a breakthrough of substantial dimension when first unveiled.). I encourage courts handling patent infringement matters to treat evidence corresponding to the
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factors identified in Graham as strong, if not the best, evidence of innovationi.e., the manner in which the industry and the marketplace responded to the disclosure in a patent. Here, the ITC succumbed to the bias of hindsight as the record bears significant objective evidence that Apples patent was innovative. As a result, the Administrative Law Judge and the ITC were misled by improper combination notions.6 Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 (Fed. Cir. 1986). As the majority aptly points out, Time Magazine named the iPhone the 2007 Invention of the Year, and the publication heralded the touchscreen as a powerful illusion that youre physically handling data with your fingers. J.A. 7483. Similar sentiments were expressed in Bloomberg Business Week, with an article titled Apples Magic Touch Screen that specifically refers to Apples patent application and describes the screens capability to react to as many as 15 simultaneous touches as impressive. J.A. 7826. These examplesas well as the many others in the recordoffer effusive praise relating to the patented invention. Such praise of innovation by the relevant industry weighs against invalidating a patent as obvious. Power-One, Inc. v. Artesyn Tech. Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010). Evidence of innovation is also found in the testimony and emails demonstrating that Apples competitors were copying the claimed technology. See Maj. Op. 17. The The Administrative Law Judge recognized the patented products marketplace success but found, among other things, that industry praise, attempts to copy, and commercial success could not overcome the combination of SmartSkin and Rekimoto 033. J.A. 21617. The ITC adopted the Administrative Law Judges reasoning.
6
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reported success of the patented feature suggests that Apples competitors were compelled to ride Apples coat tails by expending significant effort to determine how the patentees product worked and then altering their own products to conform to the reverse engineered feature. Power Integrations, 711 F.3d at 1369; Akamai Tech. Inc. v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186, 1196 (Fed. Cir. 2003). The ITC failed to address the extent to which copying supports Apples contention that the claimed touchscreen was integral to its market dominance. These efforts to copy Apples claimed technology also weigh against a conclusion of obviousness. See Crocs, Inc. v. ITC, 598 F.3d 1294, 1311 (Fed. Cir. 2010) (Copying may indeed be another form of flattering praise for inventive features.). The evidence in this record is a prime example of why we have repeatedly cautioned against assigning inadequate priority to secondary considerations. While I agree with the majoritys analysis, I discern the record to contain significant objective indicia of innovation, which in my view, is the most probative evidence of nonobviousness. Custom Accessories, 807 F.3d at 960. * * * 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. Ultimately, it was Applenot the prior art inventorswho 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, Apples efforts endowed users around the world with better access to information, more efficient communication, and unparalleled convenience to organize life on the mobile.
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For the foregoing reasons, I would reverse the finding that Perski 808 provides adequate written description support for Perski 455 and remand the anticipation case for additional proceedings as to Apples conception date, and whether, based on that date, Perski 455 qualified as 102(e) prior art. I also would recognize Apples technical advances over the SmartSkin reference and find evidence of industry praise, copying, and commercial success dispositive indicators that Apples claims were innovative and nonobvious. Accordingly, I respectfully dissent.
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CERTIFICATE OF SERVICE I hereby certify that on this 6th day of September, 2013, I will electronically file the confidential and non-confidential versions of the Intervenor Motorola Mobility, Inc.s Petition for Rehearing and Rehearing En Banc with the Clerk of Court using the CM/ECF System, which will serve via e-mail notice of such filing to any of the following counsel registered as CM/ECF users: E. Joshua Rosenkranz Orrick, Herrington & Sutcliffe LLP 51 West 52nd Street New York, NY 10010 jrosenkranz@orrick.com Mark S. Davies Orrick, Herrington & Sutcliffe LLP 1152 15th Street, N.W. Washington, DC 20005 mark.davies@orrick.com Rachel M. McKenzie Orrick, Herrington & Sutcliffe LLP 1152 15th Street, N.W. Washington, DC 20005 rmckenzie@orrick.com T. Vann Pearce Orrick, Herrington & Sutcliffe LLP 1152 15th Street, N.W. Washington, DC 20005 vpearce@orrick.com Attorneys for Appellant Apple Inc.
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Megan M. Valentine International Trade Commission Suite 707-K 500 E Street, S.W. Washington, DC 20436 megan.valentine@usitc.gov Attorneys for Appellee United States International Trade Commission On this date pursuant to the agreement of the parties, I will also serve electronic copies of the e-filed documents via electronic mail to the attorneys listed above. I will also file via Federal Express sixteen paper copies of the confidential version of Intervenor Motorola Mobility, Inc.s Petition for Rehearing and Rehearing En Banc within 2 business days of the filing. Respectfully submitted, s/ David A. Nelson Attorney for Intervenor

13-09-06 Motorola Petition For Rehearing (Apple ITC Appeal)

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13-09-06 Motorola Petition For Rehearing (Apple ITC Appeal)

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Case: 12-1338

NON-CONFIDENTIAL Appeal No. 2012-1338

Dated: September 6, 2013

Commission or ITC ID Perski 455

Perski 808 provisional Section 337 SmartSkin

Gray Br. 607 patent .

Dated: September 6, 2013

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