Conversant Wireless Licensing SARL v Apple Retail UK Ltd & Ors

For patent obviousness, the skilled person is identified by reference to the invention defined by the claims and those with a practical interest in its subject matter. An amendment may therefore alter the relevant skilled team. Prior art must be read with interest, but the analysis must avoid hindsight and must not assume that the document points towards the invention. A user-interface invention may make a technical contribution by providing an improved, quicker or easier alternative route to information or functions. The patent was nevertheless invalid because the claimed application-summary-window concept was obvious from the Simon cellular phone manual combined with common general knowledge.

Conversant claimed infringement of a patent concerning application summary windows on computing devices. It proposed amendments limiting the claims to a smart phone. Apple denied infringement and challenged validity on added matter and obviousness grounds, relying principally on Outlook Express material from Windows 98 for Dummies and the Simon cellular phone manual.

The issues included construction of “smart phone”, “main hierarchical menu system” and “display, in addition to”; added matter; infringement by iPhone Widgets and Home Screen Quick Action Windows; and obviousness.

1. Construction and skilled team. The relevant skilled person is a person or team with a practical interest in smart phones. The statutory subject matter is the invention defined by the claims, so an amendment may alter the identity of the skilled person: Schlumberger v EMGS [2010] EWCA Civ 819, Catnic v Hill & Smith [1982] RPC 183, and section 125 of the Patents Act 1977. A smart phone need only be a handheld device capable of cellular telephony and computer-like functions; it is not limited by screen size or a “phone first” requirement.
2. Claim construction and added matter. The iPhone home-screen icons constituted a main hierarchical menu system. “In addition to” did not require the menu to remain visible when the summary window appeared. The amendments requiring at least one window to display both functions and stored data, and permitting an application to open without necessarily activating the selected function, disclosed no new matter. The approach to disclosure was consistent with AP Racing v Alcon [2014] EWCA Civ 40, referring to AC Edwards v Acme [1992] RPC 131.
3. Infringement. Widgets and Home Screen Quick Action Windows satisfied the relevant construction of claim 1. The iPhone would infringe if the patent were valid.
4. Obviousness. Applying the approach in Pozzoli, the inventive concept was the provision of application summary windows giving access to commonly used functions and stored data. The skilled team would read prior art with interest, but must not be treated as being told that it contained a solution: Dr Reddy’s v Eli Lilly [2008] EWCA 2345 (Pat). Outlook Express was too remote from the smart-phone context. Simon, however, disclosed a relevant presentation of functions and data on a handheld device. Common general knowledge made it obvious to provide that presentation in a user-selected window without opening the application, while retaining the ordinary hierarchical menu. Applying the concept across applications did not involve hindsight.
5. Disposition. The claims were obvious over Simon and the patent was invalid. The other invalidity arguments failed.