In re Apple Inc. (Fed. Cir. 2017)

Acting as Lexicographers Saves Patent from Being Found Invalid

By Joseph Herndon --

In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and define the term accordingly.  Here, a U.S. patent directed to user interface functionality on a touchscreen device was saved due to a claim term "rubberbanding" being well-defined in the specification.

Procedurally, in this case, an unidentified third party filed a request for ex parte reexamination of all claims of Apple's U.S. Patent No. 7,844,915, and the U.S. Patent and Trademark Office granted the request.  Based on its constructions of "scroll or gesture" and "rubberbanding" claim limitations, the Examiner rejected every claim of the '915 patent as anticipated or obvious in view of the prior art, and the Board affirmed.

Apple appealed the Patent Trial and Appeal Board's decision rejecting all claims, contending that the Board erred by construing the claim limitations of "scroll or gesture" and "rubberbanding" too broadly.  The Federal Circuit agreed with Apple on the latter, but not the former.

The '915 patent claims software that allows a touchscreen device to differentiate between a scroll operation and a gesture operation based on the number of detected input points or finger touches.  The '915 patent teaches that a single input point is interpreted as a scroll, whereas two or more input points are interpreted as a gesture.  Gestures may include zooming in, zooming out, or rotating an image on the screen.  Claim 1 recites a method that invokes the "scroll or gesture" limitation in dispute in this case:

1.  A machine implemented method for scrolling on a touch-sensitive display of a device comprising:
    receiving a user input, the user input is one or more input points applied to the touch-sensitive display that is integrated with the device;
    creating an event object in response to the user input;
    determining whether the event object invokes a scroll or gesture operation by distinguishing between a single input point applied to the touch-sensitive display that is interpreted as the scroll operation and two or more input points applied to the touch-sensitive display that are interpreted as the gesture operation;
    issuing at least one scroll or gesture call based on invoking the scroll or gesture operation;
    responding to at least one scroll call, if issued, by scrolling a window having a view associated with the event object based on an amount of a scroll with the scroll stopped at a predetermined position in relation to the user input; and
    responding to at least one gesture call, if issued, by scaling the view associated with the event object based on receiving the two or more input points in the form of the user input.

The '915 patent also describes an improved scrolling feature called "rubberbanding."  When a user scrolls past the edge of the content on the screen, a predetermined amount of blank space is displayed and then the content slides back to fit on the screen, resembling the motion of a taut rubber band when the tension is released from one end.  For example, if a user scrolls too far such that no content remains in the direction of the scroll -- i.e., a user scrolls down when the screen is already displaying the most recent email at the top -- the phone will show a predetermined amount of blank space above the most recent email and will slide the content back onto the screen at the end of the scroll.

Claim 2 recites rubberbanding:  "The method as in claim 1, further comprising: rubberbanding a scrolling region displayed within the window by a predetermined maximum displacement when the scrolling region exceeds a window edge based on the scroll."

"Scroll or Gesture"

Both of Apple's arguments on appeal are rooted in claim construction.  First, Apple contended that the Board's construction of the phrase "two or more" in the scroll or gesture limitation is unreasonable in light of the claim structure and specification.  According to Apple, the '915 patent articulates a single rule for distinguishing between two categories of operations:  1) a "single" input point that is interpreted as a scroll operation; and 2) "two or more" input points that are interpreted as a gesture operation.  Apple claimed that the "or" in the phrase "two or more" does not create a distinction between two input points and more than two input points.  In other words, the phrase "two or more" must be interpreted as an atomic unit, meaning that two-, three-, four-, and five-input points must all be interpreted as gestures.

In reaching a contrary conclusion, the Board explained that the broadest reasonable interpretation of the phrase "two or more" permits either two input points or more than two input points to be interpreted as a gesture operation.  Stated differently, the Board held that the claim language only requires detection of a scroll operation in response to a single input point and a gesture operation in response to one of the possible multi-input touches.  Thus, this included more than a single rule.  Because the prior art relied on by the Examiner both teach a single-input scroll and a two-input gesture, the Board rejected the claims.

The Federal Circuit agreed with the Board's construction.  The pertinent claim language recites:  "distinguishing between a single input point . . . and two or more input points."  On its face, this language does not limit the invention such that all received user inputs must be categorized as either a scroll or a gesture as Apple contends.  Apple's construction would replace the word "or" with "and," thereby requiring all multi-input touches to be distinguished as gestures.  But this reading is too narrow.  The broadest reasonable interpretation of the word "or" in the phrase "two or more" creates alternatives for the gesture operation:  a gesture operation occurs if either two input points or more than two input points are detected.

The Federal Circuit additionally noted that the claims use the open-ended transitional phrase "comprising" and thus the claims are broad enough to include user inputs that are categorized as something other than a scroll or a gesture, undermining Apple's suggestion that the claims are limited to a single rule.

"Rubberbanding"

Apple next argued that the Examiner's interpretation of "rubberbanding" was erroneous as covering sliding content forward at the end of a scroll (i.e., sliding in the same direction as the scroll).  Based on this construction, the Board rejected claims 2, 9, and 16 -- which include the rubberbanding limitation -- as obvious in view of other prior art of record.  Apple contended the Board erred in its claim construction because rubberbanding requires sliding the content backwards in the opposite direction of the scroll.

The PTO argued on appeal that the broadest reasonable interpretation of rubberbanding is not limited to sliding content in a particular direction, much less requiring that the content must slide backwards, and that the concept of rubberbanding "simply seeks to control the movement of scrolled content."

The Federal Circuit agreed with Apple here in that the Board's analysis rests on an incorrect interpretation of "rubberbanding".  As expressly defined in the specification, the key to the rubberbanding feature is sliding content in the opposite direction of the scroll -- sliding content backwards -- once the scroll has been completed.  Acting as lexicographers, the inventors of the '915 patent expressly defined rubberbanding in the specification as follows:

Rubberbanding a scrolled region according to the method 300 occurs by a predetermined maximum displacement value when the scrolled region exceeds a display edge of a display device based on a scroll.  If a user scrolls content of the display making a region past the edge of the content visible in the display, then the displacement value limits the maximum amount for the region outside the content.  At the end of the scroll, the content slides back making the region outside of the content no longer visible on the display.

The term "rubberbanding," as defined by the inventors, does not cover sliding content forward at the end of the scroll, and the Examiner did not cite any evidence to support the proposition that selecting the direction of the scrolling would be within the level of ordinary skill.  Thus, because the Federal Circuit found that the Board misinterpreted the rubberbanding limitation, the rejection of claims 2, 9, and 16 was vacated and the case was remanded for the Board to reconsider these claims in light of the proper interpretation of rubberbanding.

In re Apple Inc. (Fed. Cir. 2017)
Nonprecedential disposition
Before Chief Judge Prost and Circuit Judges Dyk and Stoll
Opinion by Circuit Judge Stoll

Comments

[Paul F. Morgan]

Re: "the case was remanded for the Board to reconsider these claims in light of the proper interpretation of rubberbanding."
This leads to a basic question: how does the Board handle remands of ex parte reexaminations [where the fact-finding is done ex parte by examiners], as compared to remands of IPRs [which are decided after inter party trials by Board APJs] ?

[Cardinal Intellectual Property]

THE CONUNDRUM - DUALITY OF PATENT LAW
During the patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized, "the USPTO employs the “broadest reasonable interpretation” standard."

The United States Patent and Trademark Office (USPTO) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). An examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. “During the patent examination, the pending claims must be interpreted as broadly as their terms reasonably allow.”); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). Thus, the claim has to be interpreted broadly so that it can be rejected over the prior art.

Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. The USPTO does not interpret claims in the same manner as the courts. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989).

Is the Reexamination involving the Court is part of the prosecution process where the claim has to interpreted broadly, or is it an infringement proceeding where the claim has to be interpreted narrowly by the Court?

[David]

Would Apple have been better off claiming "at least two" rather than "two or more"?