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4 January 2017Patents

Federal Circuit vacates PTAB decision on Apple touchscreen patent

Apple secured a win yesterday at the US Court of Appeals for the Federal Circuit in a dispute centring on a patent for a touchscreen interface.

The court vacated and remanded a decision made by the Patent Trial and Appeal Board (PTAB) affirming an examiner’s rejection of claims 38–41 of US patent application number 12/364,470, assigned to Apple.

The ‘470 application is directed to a touchscreen interface in a portable electronic device that allows a user to rearrange icons.

“Claims 38 and 40, the only independent claims at issue, both recite the initiation of an ‘interface reconfiguration mode’ to permit icon rearrangement,” said the court.

Although the PTAB had reversed the examiner’s rejection of 29 claims, it affirmed that claims 38–41 would have been obvious over US patent number 7,231,229 (Hawkins) and US publication number 02/0191059 (Gillespie).

Marcel Van Os and other inventors at Apple had appealed against the board’s decision.

According to the court, the PTAB’s conclusion of obviousness “hinges on its finding that a person of ordinary skill in the art would have been motivated to modify Hawkins’ initiation of an editing mode via menu selection or keyboard command with Gillespie’s disclosure of a sustained touch”.

The board found, “without further discussion, that the combination of Gillespie with Hawkins would have been ‘intuitive’”, explained the court.

But this was not enough for the court, which added that it had “repeatedly explained” that obviousness findings “grounded in ‘common sense’ must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness”.

Neither the PTAB nor the examiner provided any reasoning or analysis to support finding a motivation to add Gillespie’s disclosure to Hawkins, beyond stating it would have been an “intuitive way” to initiate Hawkins’ editing mode.

The board did not explain why modifying Hawkins with the specific disclosure in Gillespie would have been “intuitive” or otherwise identify a motivation to combine, explained Circuit Judge Kimberly Moore.

In her opinion for the court, Moore added: “Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’.

“Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”

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15 February 2017   Apple has lost a patent lawsuit against a US-based technology company after the US Court of Appeals for the Federal Circuit vacated an earlier decision by the Patent Trial and Appeal Board.