Apple´s “Slide to unlock”-patent finally invalidated as being obvious by the German Federal Court of Justice (FCJ)


Official Headnotes:

a) For the examination of inventive step instructions relating to the presentation of a particular content and thus aiming to influence human imagination or comprehension are not taken into account as such. Instructions relating to information to be reproduced according to the teaching of the invention can support patentability in relation to inventive step only in so far as they determine or at least influence the solution of a technical problem with technical means.  

b) Claim elements relating to information have to be examined as to whether the information to be presented at the same time forms an embodiment of technical means – not already recited elsewhere the claim – for solving a problem. In such case the technical means for solving a problem have to be taken into account for the examination of patentability. 

Apple´s well-known and  internationally litigated “Slide-to-unlock” patent – being part of the original iphone patents – has been invalidated in first instance nullity proceedings by the Federal Patentn Court. The patentee appealed to the Federal Court of Justice, which on 25 August 2015 rejected the appeal and finally confirmed the invalidation decision of the Federal Patent Court. The grounds for the decision have been published on the FCJ website only now.

Representative method claim 1 reads as follows:

1.A computer-implemented method of controlling a portable electronic device comprising a touch-sensitive display comprising:
detecting contact with the touch-sensitive display while the device is in a user-interface lock state;
transitioning the device to a user-interfae unlock state if the detected contact corresponds to a predefined gesture; and
maintaining the device in the user-interface lock state if the detected contact does not correspond to the predefined gesture;
characterized by
moving an unlock image along a predefined displayed path on the touch sensitive display in accordance with the contact, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device.

In the proceedings a written description “N1 Quick Start Guide, Version 0.5” relating to a prior art mobile phone “Neonode N1” formed the closest prior art reference E14. It describes a mobile phone having a touch-sensitive display displaying upon actuating a power button the information “Right sweep tp unlock”. Thereupon the user can unlock the device using a corresponding finger movement (gesture). An unlock image, however, is not displayed. Upon failure to unlock the phone an invitation to retry is instead displayed. The distinguishing features over closest prior art reference E14 therefore were found to be:

(5.1) Moving an unlock image

(5.2) along a predefined displayed path on the touch sensitive display

(5.3) in accordance with the contact,

(5.4) wherein the unlock image is a graphical, interactive user-interface object

(5.5) with which a user interacts in order to unlock the device.

In its first instance decision the Federal Patent Court found that all claim elements (5.1) to (5.5) would relate only to the presentation of information directed to the user and would not influence the technical functioning of the device and consequently had to be ignored for the assessment of inventive step.

The FCJ expressly disagreed with this finding. According the the FCJ the technical problem solved by the invention over the prior art is to provide a more user-friendly unlocking procedure. This technicla problem is solved by the combination of above features (5.1) to (5.5) solving the technical problem of improving user operation reliability by the technical means of optically signalling the unlock path to the user.

The court, however, held that features (5.4) and (5.5) do not add any technical matter to features (5.1) to (5.3) which would contribute further to the solution of the technical problem of improving operation relaibility of the unlock procedure and were therefore ignored by the court for the examination of inventive step. Features (5.1) to (5.3) were meanwhile regarded by the court as obvious in view of further reference E7, a video presented at a conference in 1992 showing several virtual operation keys on a touch sensitive display, among them a virtual slider toggle providing the function of the unlocking mechanism according to the patent in suit (“The user can then grab the pointer and slide it to the other side”), albeit not in connection with a mobile phone. The court, however, took the view that the skilled person would nevertheless apply the refined virtual key functionality disclosed in E7 to the gesture-controlled unlock procedure of the mobile phone with touch sensitive display according to E14, thus rendering the claim obvious of a combination of references E 14 and E7. This judgement equally applied to the amended claims of the several auxiliary requests on file.

While the judgement resulted in the loss of the patent of Apple, it is in general good news for inventors striving to improve user interfaces. Patent applications in this field are frequently rejected as being related to the presentation of information which allegedly had to be ignored when assessing inventive step. The FCJ clearly disapproves such practice stating (at the end of paragraph 18 of the judgement): “It would not be justified not to include the technical effects of the presentation of information for the examination of inventive step, because they are claimed in the patent claim merely in the form of presentation of a particular information.”

Multiple patentees have to pay separate appeal fees for joint appeal: Decision “Set of building bricks” by the German Federal Court of Justice (FCJ)

Official Headnotes:

a) If multiple patentees file an appeal against the decision of the German Patent and Trademark Office (GPTO) in opposition proceedings, each one has to pay an appeal fee (Law on Patent Fees No. 401 100). 

b) If for an appeal lodged by multiple participants only one appeal fee has been paid, it has to be examined whether the paid fee can be assigned to one appellant. 

In the decided case “Set of building bricks” an opposition was filed against the patentin suit which was jointly owned by two patentees. The opposition was successful and the patent was revoked by the patent department of the GPTO. The two patentees jointly filed an appeal against the revokation decision but paid only one fee. The Federal Patent Court dismissed the appeal as inadmissible on the ground that the one appeal fee paid cannot be assigned to one of the two joint appellants and therefore none has paid the necessary fees.

The joint patentees lodged a further appeal for legal review (“Rechtsbeschwerde”) with the FCJ and were successful. The FCJ confirmed the first instance decision that the two patentees had to pay two appeal fees for their joint appeal, but that in order to avoid hardship a single appeal fee is to be assigned to one of multiple appellants whenever possible. The was done by the FCJ based on the name of the first appellant on the money transfer form filed with the Federal Patent Court. Consequently the case was remitted back to the Federal Patent Court for decision on the merits.

This deision is important for all applicants before the GPTO because the FCJ made it clear that joint right holders (not only of patents, but also of utility models, trade marks and designs) have to pay separate fees for appeals and similar legal remedies explicitly enumerated in the Law on Patent Fees. The FCJ confirmed that the regulations in the Law on Patent Fees do not distinguish between right holders and opponents or other third parties. Under this reasoning seperate appeal fees for joint appeals therefore have to be paid not only in contradictory proceedings like oppositions but also in the most common appeal procedure, namely an appeal against the rejection of a patent application by the GPTO.

The ruling is in contradiction to hitherto common practice at the GPTO and the Federal Pastent Court requiring the payment of only one appeal fee for a joint appeal of multiple patentees. It is also contrary to the law and practice at the EPO and that in patent nullity proceedings.