Although the ongoing battle between Apple v Samsung has taken centre stage in the smartphone wars, one other skirmish in the UK involved Apple and a different opponent - the Taiwanese company HTC. Peace broke out in this skirmish at the end of 2012. However, recently, the Court of Appeal heard a case which concerned the fall-out from that battle. The case is of interest to practitioners as it may affect the UK IPO’s interpretation of the exclusion of “computer programs as such” from patent protection.

The original trial was held before Mr Justice Floyd in the High Court in July 2012 and involved four patents owned by Apple. Mr Justice Floyd held that three of the patents were not valid and the remaining patent was not infringed. This decision was appealed in part. As HTC and Apple had settled their dispute, HTC did not take part in the appeal. However, Apple appealled the decision relating to the validity of two of their patents found invalid during the High Court trial, namely EP(UK) 2 098 948 and EP(UK) 1 964 022.

During the original trial, Mr Justice Floyd found EP(UK) 2 098 948 to be invalid for two reasons:

  1. It was found to be nothing more than a “computer program as such”
  2. It was found to be obvious. EP(UK) 1 964 022 was also found to be obvious.

Although the Appeal Court upheld the decision in respect of EP(UK) 1 964 022 and the obviousness finding in respect of EP(UK) 2 098 948, the Appeal Court overturned the decision that EP(UK) 2 098 948 was nothing more than a computer program as such. This may impact the UK IPO’s interpretation of the computer program exclusion.

EP(UK) 2 098 948 deals with the issue of multi-touch gestures. Specifically, certain multi-touch ‘flags’ are set if certain views on the screen can accept multi-touch gestures. If the multi-touch flag is not set, then a second, contemporaneous, touch on the view is ignored by the software. During the original trial, it was held that the claimed invention related to “a computer program as such” and so was excluded subject matter under UK law. However, the Court of Appeal found that Mr Justice Floyd incorrectly identified the contribution in a first aspect of the invention as simply laying in software processing multi-touch inputs and in a second aspect made it easier to write software for multi-touch devices.

Instead, Lord Justice Kitchin (for the Appeal Court) said that the problem which the invention addresses, namely how to deal with multiple simultaneous touches on a multi-touch device, is essentially technical. Further, dividing the screen into a number of views, and associating a multitouch flag to each view, essentially concerns the internal operation of the device. The fact that the solution is embodied as software is irrelevant and importantly, in paragraph 57 of the judgment, Lord Justice Kitchen said that: ‘an invention which is patentable in accordance with conventional patentable criteria does not become unpatentable because a computer program is used to implement it.’

Lord Justice Lewison (for the Appeal Court) also commented in respect of the second aspect identified by Mr Justice Floyd that even if the contribution lay in making it easier to write software for a multi-touch device, this was not a computer program as such and should not be excluded.

This decision provides further evidence that the UK courts are taking a rather pragmatic view to the computer program exclusion, and look to the substance of invention rather than how the invention is embodied. This should provide further weight to the UK IPO to change their current restrictive view on the computer program exclusion.