On Friday, June 1st, the Court of Appeals for the Federal Circuit handed down a precedential decision in Zeroclick, LLC v. Apple, Inc. which overturned an earlier decision by the district court judge who found asserted claims of two asserted patents invalid for indefiniteness. The Federal Circuit panel of Circuit Judges Jimmie Reyna, Richard Taranto and Todd Hughes found that the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion to invalidate the asserted claims.
There are two patents-at-issue in this case which have been asserted by Zeroclick in district court:
- U.S. Patent No. 7818691, issued in October 2010 and titled Zeroclick. It covers a method of operating a graphical user interface (GUI) that operates by an input of a movement of a pointer according to a specified movement that generates a “click” event by the completion of the movement of the pointer which is first positioned within a control area and then a subsequent movement of the pointer within a predetermined path area. The patent application for this invention was first filed in May 2001.
- U.S. Patent No. 8549443, same title as the ‘691 patent. It covers a device capable of executing software comprising a touch-sensitive screen, a processor connected to the touch-sensitive screen to receive screen information regarding locations touched by a user’s finger, executable user interface code stored in a memory connected to the processor to detect initial touching of the user’s finger on the screen and initial subsequent movement of the finger on the screen to determine a selected operation.
Both of these patents list a single inventor: Nes Stewart Irvine of Hertfordshire, England. According to Zeroclick’s patent infringement suit against Apple filed in the Northern District of California back in September 2015, Irvine developed the Zeroclick technologies while he was a medical doctor which he implemented into his medical practice to improve the ease of using GUIs on computing equipment. Irvine first filed patent applications covering the technology back in 2000. In 2002, Irvine faxed a letter to Apple explaining the novelty and benefits of the Zeroclick technology. Although Apple never responded to Irvine, Apple developed GUIs supported by the company’s iOS mobile operating system which enabled users to activate functions via touchscreen using only finger movements.
Although Apple did not respond to Irvine’s 2002 correspondence, Zeroclick alleged that Apple subsequently developed patent applications covering clickless touch-based user interfaces which cited Irvine’s work. Apple GUI features which allegedly infringe on the Zeroclick patents, including the “slide-to-unlock” feature of iPhones, were admitted by Apple executives to be very important to consumers in that company’s own patent enforcement campaign against Samsung. In September 2015, Zeroclick also filed a motion to relate its case against Apple with Apple’s own case against Samsung based on the substantial similarity evidenced by the “slide-to-unlock” feature which was central to both cases.
In August 2016, U.S. District Judge Jon Tigar entered an order on claim construction which declared that asserted claims from both of Zeroclick’s patents were invalid for indefiniteness. Judge Tigar determined that claim terms “program that can operate the movement of the pointer (0)” and “user interface code” were means-plus-function terms, the structures of which were not sufficiently disclosed in the specification as related to the claimed function. Thus, the claims were invalid under 35 U.S.C. § 112(f). In reaching this decision, Judge Tigar relied on standards set by the Federal Circuit in Williamson v. Citrix Online (2015, en banc) and Blackboard, Inc. v. Desire2Learn, Inc. (2009) In his decision, Judge Tigar found that the term “program” was a means for the “operating the movement of the pointer (0) over the screen” function, and that the term “user interface code” was a means for performing the two-fold function “to detect one or more locations touched by a movement of the user’s finger on a screen without requiring the exertion of pressure” and to “determine therefrom a selected operation.”
On appeal to the Federal Circuit, Zeroclick argued that the district court erred in construing those two terms as means-plus-function limitations, an argument with which the Federal Circuit panel agreed. “Neither of the limitations at issue uses the word ‘means,’” Circuit Judge Hughes writes in his majority opinion. “Presumptively, therefore, [Section 112(f)] does not apply to the limitations.” Although Apple argued in the district court that the claims must be construed under Section 112(f), it provided no evidentiary support for its position. Although the court compared Apple’s arguments to Zeroclick’s objections, Judge Tigar did not point to any record evidence supporting the ultimate conclusion on Section 112(f) grounds.
“By taking that approach, the district court effectively treated ‘program’ and ‘user interface code’ as nonce words, which can operate as substitutes for ‘means’ and presumptively bring the disputed claims limitations within the ambit of [Section 112(f)],” the Federal Circuit found. The appellate court held that such an approach was erroneous for three reasons. First, just because the claim limitations at dispute incorporate functional language did not automatically convert words into means for performing such functions. Citing to its own 1995 decision in Greenberg v. Ethicon Endo Surgery, the Federal Circuit noted that many devices take their names from the function they perform, such as “filter,” “brake” or “screwdriver.” Thus “program” and “user interface code” are specific references to conventional tools existing in prior art at the time of the inventions and are neither generic nor “black box recitations of structure.” Secondly, the distinctions drawn between prior art GUIs and improvements to those interfaces covered by the claims existed in the written descriptions supporting the asserted claims, and Apple presented no other evidence that questioned that conclusion. Finally, the Federal Circuit found that the district court made no pertinent finding that conventional GUI programs or code are terms which are commonly used as a substitute for “means.” The Federal Circuit vacated Judge Tigar’s judgment and remanded the case for further proceedings consistent with this opinion.
Brian D. Ledahl, Partner at Rust August & Kabat and counsel for Zeroclick in both the district court and appeal litigation, offered the following comment regarding the Federal Circuit’s decision:
“We’re obviously pleased that the Federal Circuit agreed with us, that the claims are not indefinite, and we look forward to moving forward with the case in the district court.”