Objective Evidence Of Secondary Considerations Cannot Be Ignored When Determining Obviousness Under The Graham Factors

In Apple Inc. v. International Trade Commission, No. 12-1338 (Fed. Cir. Aug. 7, 2013), the Federal Circuit affirmed the ITC's determination that claims 1-7 of Apple Inc.'s ("Apple") U.S. Patent No. 7,663,607 ("the '607 patent") were anticipated by the prior art, while reversing the determination that claim 10 was anticipated. The Court also vacated the ITC's decision that claim 10 of the '607 patent would have been obvious in light of the prior art and that Motorola did not infringe Apple's U.S. Patent No. 7,812,828 ("the '828 patent"). The Court remanded for further proceedings in accordance with its opinion.

Apple alleged in the ITC that Intervenor Motorola Mobility, Inc.'s ("Motorola") smartphones and tablets infringed various claims of two of its smartphone touchscreen patents. The '607 patent discloses a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once. The touch panel contains two layers of indium tin oxide ("ITO") electrodes, one of all rows and another of all columns. When the screen is touched, the contact position is determined by detecting the displaced charge between the electrodes of the intersecting row and column. Each layer also contains "dummy" ITO pads to fill in the gaps in the matrix, making the screen appear uniformly transparent. The '828 patent discloses a method to determine if the displaced charge corresponds to a finger touching the screen by "mathematically fitting an ellipse" around the touched nodes.

The ITC concluded that U.S. Patent No. 7,372,455 ("Perski '455") anticipated the asserted claims of the '607 patent despite Apple's allegation of conception prior to the filing date. The Federal Circuit first affirmed that Perski '455 could claim priority from earlier U.S. Provisional Patent Application No. 60/446,808 ("Perski '808") for claims 1-7 of the '607 patent, as the references disclosed the same sensor matrix and multitouch algorithms. The Court further agreed that claims 1-7 of the '607 patent were anticipated by Perski '455, noting that the scanning algorithms disclosed were very similar despite Apple's claims to the contrary. But the Court held the ITC incorrectly concluded Perski '808 incorporated by reference a particular application relevant to claim 10. Consequently, the Court stated the ITC lacked substantial evidence to determine that claim 10 of the '607 patent was anticipated by Perski '455.

If claim 10 was found not to be anticipated by Perski...