Apple Inc. v. U.S. ITC

Resurrecting Apple’s multi-touch patent U.S. International Trade Commission (ITC) complaint, the U.S. Court of Appeals for the Federal Circuit rebuked the ITC’s claim construction with regard to one of the patents in the case and faulted its obviousness analysis with regard to the other patent. Apple Inc. v. U.S. ITC, Case No. 12-1338 (Fed. Cir. Aug. 7, 2013) (Moore, J.) (Reyna, J., dissenting).

The patents asserted by Apple in the appeal are directed to key features of a mobile device having a touchscreen. The ITC found one of the Apple patents to be obvious (and therefore invalid) based on a combination of two references. The Federal Circuit, in reversing the finding of obviousness, noted that the ITC analysis never mentioned, much less weighed, Apple’s “compelling” secondary consideration evidence. The Federal Circuit explained that evidence relating to all four Graham factors—including objective evidence of secondary considerations—must be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of invention. In this case, Apple had presented evidence of secondary considerations in the form of industry praise, copying and commercial success. The Federal Circuit remanded the case to the ITC to properly consider those Graham factors and instructed that “[t]he ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all of the evidence on both sides.” As for the claims found to be anticipated, the Federal Circuit affirmed the ITC decision.

For the other Apple patent in issue, the Federal Circuit focused on the ITC’s claim construction. The administrative law judge (ALJ) construed the term “mathematically fitting an ellipse” to require the method to perform “a mathematical process” whereby first “an ellipse is actually fitted to the data,” and then, from that fitted ellipse, “various parameters can be calculated.” Instead of the two-step process as construed by the ALJ, where parameters are calculated after an ellipse is fitted to the data, the Federal Circuit used the plain meaning of the terms, along with the prosecution history, to conclude that the contested term simply meant “calculating the mathematical parameters that define an ellipse.”