HTC Europe Co Ltd v Apple Inc (Rev 1)

A computer-implemented invention is not excluded from patentability merely because its solution is embodied in software. The court must identify its actual contribution as a matter of substance and decide whether that contribution is technical rather than solely excluded subject matter. A program may make a technical contribution by solving a technical problem within or outside the computer, including by making the computer operate more efficiently or effectively as a computer.

Obviousness must be assessed without hindsight by identifying the skilled person, common general knowledge, inventive concept and differences from the prior art. The ultimate question is whether those differences required any degree of invention. A device may be locked for one operation while unlocked for another where access to the former requires a predefined gesture.

Apple appealed from Floyd J's decision, [2012] EWHC 1789 (Pat), concerning two touch-screen patents. HTC and Apple settled their wider dispute, so the Comptroller-General of Patents appeared to protect the public interest in preventing invalid patents from being restored.

The 948 patent concerned operating-system flags controlling the delivery of touch events on multi-touch devices. The judge held claims 1 and 2 excluded as computer programs as such and claim 1 obvious over common general knowledge. The 022 patent concerned unlocking a touch-screen device by moving an image along a displayed path. Claims 5 and 17 were held obvious over the Neonode telephone.

The appeal raised whether the 948 invention made a technical contribution, whether claim 1 was obvious, and whether the Neonode rendered claims 5 and 17 of the 022 patent obvious.

1. Disposition. The appeal concerning claim 1 of the 948 patent was dismissed because that claim was obvious. The appeal concerning claim 2 was allowed because it was neither obvious nor excluded as a computer program as such. The appeals concerning claims 5 and 17 of the 022 patent were dismissed. Richards LJ and Lewison LJ agreed with Kitchin LJ's disposition.
2. The approach in Aerotel remained applicable. The court should construe the claim, identify the actual contribution, ask whether it falls solely within excluded subject matter, and check whether it is technical. The contribution must be assessed as a matter of substance. An otherwise patentable invention does not become excluded merely because it is implemented in software: Patents Act 1977, section 1(2), and the European Patent Convention, article 52.
3. The 948 invention addressed the technical problem of processing multiple simultaneous touches. Its flags operated through the system software independently of the particular application. They made the device operate in an improved way and provided a better interface for application programmers. The invention therefore made a technical contribution and was not excluded. Lewison LJ agreed, explaining that the established signposts are guidance rather than prescriptive conditions and that making a computer run more efficiently or effectively is a relevant indication.
4. Claim 1 of the 948 patent was nevertheless obvious. Applying the structured Pozzoli approach, the judge had properly identified the skilled team, common general knowledge and inventive concept. The team would recognise the need for different treatment of touch inputs, had an incentive to introduce that functionality at system level, and knew that flags were used to filter events. The judge was entitled to prefer the evidence that the claimed arrangement followed by routine application of common general knowledge. Claim 2 had not been attacked for obviousness and survived.
5. For the 022 patent, a device may purposively be understood as unlocked for one operation but locked for another. On the Neonode status screen, each basic application remained locked because it could be accessed only by a further predefined swipe. The evidence supported the finding that applying swipe-with-feedback to the three applications was obvious. Claims 5 and 17 were therefore invalid.

1. Court of Appeal (Civil Division): By [2013] EWCA Civ 451, dismissed the appeal concerning claim 1 of the 948 patent and claims 5 and 17 of the 022 patent, but allowed the appeal concerning claim 2 of the 948 patent.
2. High Court, Patents Court: Floyd J, in [2012] EWHC 1789 (Pat), held claims 1 and 2 of the 948 patent excluded as computer programs as such, claim 1 additionally obvious, and the relevant claims of the 022 patent invalid for obviousness.