Apple Inc. v. International Trade Commission , 725 F.3d 1356 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
MOTOROLA MOBILITY, INC.,
Intervenor.
______________________
2012-1338
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-750.
______________________
Decided: August 7, 2013
______________________
E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-
cliffe, LLP, of New York, New York, argued for the appel-
lant. With him on the brief were MARK S. DAVIES, RACHEL
M. MCKENZIE and T. VANN PEARCE, JR., of Washington,
DC.
2 APPLE INC. v. ITC
MEGAN M. VALENTINE, Attorney Advisor, Office of
General Counsel, United States International Trade
Commission, of Washington, DC, argued for appellee.
With her on the brief were DOMINIC L. BIANCHI, Acting
General Counsel, and ANDREA C. CASSON, Assistant
General Counsel for Litigation.
DAVID A. NELSON, Quinn Emanuel Urquhart & Sulli-
van LLP, of Chicago, Illinois, argued for intervenor. With
him on the brief were CHARLES K. VERHOEVEN, of San
Francisco, California. Of counsel on the brief were
EDWARD J. DEFRANCO, ALEXANDER RUDIS and MATTHEW
A. TRAUPMAN, of New York, New York.
______________________
Before MOORE, LINN, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge REYNA.
MOORE, Circuit Judge.
Apple appeals from the final decision of the Interna-
tional Trade Commission (ITC) that the asserted claims of
U.S. Patent No. 7,663,607 (’607 patent) are invalid and
that Motorola does not infringe the asserted claims of
U.S. Patent No. 7,812,828 (’828 patent). Apple challenges
the ITC’s claim construction and its determinations of
obviousness, anticipation, and noninfringement. For the
following reasons, we affirm-in-part, reverse-in-part, and
vacate-in-part the ITC’s decision and remand for further
proceedings.
BACKGROUND
This patent case involves smartphone touchscreens.
The ’607 patent discloses a touch panel with a transpar-
ent capacitive sensing medium that can detect multiple
touches at once. ’607 patent, at [57]. To achieve the
APPLE INC. v. ITC 3
multitouch functionality, the touch panel employs a
matrix of electrodes connected to circuits that measure
the change in charge that occurs as a result of pressure
applied to the screen. Id. col.5 l.27–col.6 l.7. The pres-
sure-induced change occurs because the electrode rows
are in a different layer than the electrode columns. Id.col.5 l.15–col.6 l.18. When a user touches the screen, the
pressure applied at each intersection point causes charge
to flow between the electrodes at that node. Id. Measur-
ing circuits connected to the electrodes scan the matrix
and measure the displaced charge at each node. Id. By
detecting these changes, the touch panel can determine if
and where a user has touched the screen. Id.The ’607 patent also discloses how to make the
touchscreen transparent. It teaches constructing the
electrodes with indium tin oxide (ITO), a transparent
material. ’607 patent, col.12 ll.35–52. But simply forming
the electrodes from ITO may not render the matrix invisi-
ble because the ITO electrodes tend to be less transparent
than gaps in the electrode matrix. Id. col.14 l.60–col.15
l.23. To remedy this problem, the patent teaches the use
of “dummy” ITO pads to fill in gaps in the matrix. Id.col.15 ll.8–24. By inserting these pads in the matrix gaps,
the matrix has the optical properties of a uniform sheet of
ITO and thus becomes invisible to the user. Id.The ’828 patent discloses a method to determine if the
displaced charge at the nodes corresponds to a finger
touching the screen. It teaches that the touch panel
software “mathematically fit[s] an ellipse” around the
nodes at which the measuring circuits have detected a
touch. ’828 patent, figs. 13–15, col.60 l.5–16. Performing
the “fit” allows the device to determine if pressure applied
to the screen constitutes a finger touch as well as track
the movement of the finger across the touchscreen. Id. at
[57].
4 APPLE INC. v. ITC
Apple initiated proceedings in the ITC, alleging that
Motorola’s smartphones and tablets infringed various
claims of the ’607 and ’828 patents. Apple alleged that
Motorola infringed claims 1–7 and 10 of the ’607 patent
and claims 1, 2, 10, 11, 24–26, and 29 of the ’828 patent.
Claim 1 of the ’607 patent is representative of the assert-
ed touch panel claims:
A touch panel comprising a transparent capacitive
sensing medium configured to detect multiple
touches or near touches that occur at a same time
and at distinct locations . . . wherein the trans-
parent capacitive sensing medium comprises:
a first layer having a plurality of transparent first
conductive lines . . . ; and
a second layer spatially separated from the first
layer and having a plurality of transparent second
conductive lines . . . each of the second conductive
lines being operatively coupled to capacitive moni-
toring circuitry;
wherein the capacitive monitoring circuitry is con-
figured to detect changes in charge coupling be-
tween the first conductive lines and the second
conductive lines.
’607 patent, claim 1 (emphases added). Claim 10, also
disputed on appeal, recites a similar display arrangement
and requires the touch panel to form a “pixilated image.”
Claim 1 of the ’828 patent is representative of the assert-
ed claims relating to mathematically fitting an ellipse:
A method of processing input from a touch-
sensitive surface, the method comprising:
receiving at least one proximity image representing
a scan of a plurality of electrodes of the touch-
sensitive surface;
APPLE INC. v. ITC 5
segmenting each proximity image into one or more
pixel groups that indicate significant proximity,
each pixel group representing proximity of a distin-
guishable hand part or other touch object on or
near the touch-sensitive surface; and
mathematically fitting an ellipse to at least one of
the pixel groups.
’828 patent, claim 1 (emphasis added). Motorola pre-
vailed in the ITC proceedings. While the ITC determined
that an article describing SmartSkin, a prior art
touchscreen system, did not anticipate the asserted claims
of the ’607 patent, it determined that SmartSkin rendered
those claims obvious. The ITC also found that U.S. Pa-
tent No. 7,372,455 (Perski ’455) anticipated the ’607
patent claims. The ITC also found that Motorola did not
infringe the ’828 patent. It construed the term “mathe-
matically fitting an ellipse” to require the method to
perform “a mathematical process” whereby “an ellipse is
actually fitted to the data.” J.A. 58–70. Finding that the
Motorola products do not fit an ellipse to the electrode
data, the ITC determined that those products do not
infringe the asserted claims of the ’828 patent.
Apple appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(6).
DISCUSSION
I. Standard of Review
We review the ITC’s legal determinations de novo and
its factual findings for substantial evidence. Crocs, Inc. v.
Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010).
Claim construction is a matter of law, which we review de
novo. Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375,
1378 (Fed. Cir. 2005). Obviousness is a question of law
based on underlying facts. Crocs, 598 F.3d at 1308. We
review the ITC’s obviousness determination without
deference and its factual findings for substantial evidence.
6 APPLE INC. v. ITC
Id. Whether a prior art reference anticipates the claims is
a question of fact, reviewed for substantial evidence.
Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1342
(Fed. Cir. 2010).
II. Anticipation of the ’607 Patent: Perski ’455
The ALJ found that Perski ’455 anticipates the as-
serted claims of the ’607 patent. He found that Perski
’455 was § 102(e) prior art despite Apple’s allegation of
conception prior to the filing date of the application that
issued as Perski ’455. The ALJ found that the provisional
application to which Perski ’455 claims priority, U.S.
Provisional Patent Application No. 60/446,808 (Perski
’808), provides written description support for the disclo-
sure in Perski ’455. After resolving the priority issue
against Apple, the ALJ determined that Perski ’455
anticipates the ’607 patent claims. The ALJ found that
Perski ’455 discloses a touchscreen that can detect multi-
ple touches at the same time. The ITC declined to review
these findings.
Apple argues that the ITC anticipation findings were
in error. It contends that Perski ’455 is not prior art
because (1) Perski ’808 does not disclose any way to
determine whether multiple fingers touch the screen; and
(2) Perski ’808 does not specifically incorporate by refer-
ence the “front end” and “digital unit” aspects of U.S.
Provisional Patent Application 60/406,662 (Morag) that
the ALJ used to find claim 10 anticipated.
Even if Perski ’455 is prior art, Apple argues that the
reference does not disclose “detect[ing] multiple touches
or near touches that occur at a same time and at distinct
locations.” It contends that the algorithm disclosed in
Perski ’455 cannot detect multiple touches that occur at
the same time because it requires too much processing—
the algorithm requires at least n*m steps to accurately
scan all the nodes in a sensor matrix containing m rows
and n columns. Apple asserts that Motorola also failed to
APPLE INC. v. ITC 7
present any evidence that the matrix disclosed in Perski
’455 can accurately detect multiple touches at the same
time because a single large touch can cause an output
signal to be detected on more than one conductor line.
The ITC and Motorola respond that Perski ’455 is pri-
or art to the ’607 patent. They argue that Perski ’808
discloses the same sensor matrix and multitouch detec-
tion algorithms as Perski ’455. Regarding claim 10,
Motorola argues that Perski ’808 specifically incorporates
the relevant portions of Morag.
The ITC and Motorola argue that Perski ’455 discloses
all of the limitations of the ’607 patent claims. They
argue that Perski ’455 discloses a sensor that can detect
multiple touches at the same time. They contend that the
claims do not require a particular speed or accuracy in
detecting the multiple touches, and regardless, Perski
’455 discloses both “simple” and “faster” detection algo-
rithms. Lastly, Motorola asserts that Perski ’808 disclos-
es the exact scanning method that the ’607 patent
discloses to “detect multiple touches or near touches that
occur at a same time and at distinct locations.”
As an initial matter, we agree with the ITC and
Motorola that substantial evidence supports the ITC’s
determination that the disclosure in Perski ’808 provides
adequate written support for Perski ’455. Perski ’808
provides the same multitouch scanning algorithms as
Perski ’455. Both disclose a sensor matrix that senses a
touch by scanning the nodes of the matrix. Both disclose
a “simple and direct approach” in which the circuitry
scans each node of the matrix, which requires at least
n*m steps for a sensor matrix that contains n columns
and m rows. Each reference also discloses the same
“faster approach.” Specifically, each discloses scanning
the nodes affiliated with a group of lines on one axis,
which requires between two steps and n+m steps depend-
ing on the number of lines in the group. This faster
8 APPLE INC. v. ITC
approach, however, is not as accurate when detecting
multiple touches that occur simultaneously at specific
locations. To remedy this problem, both references dis-
close the “optimal approach” of combining the two meth-
ods to achieve the right balance of speed and accuracy.
Thus, substantial evidence supports the ITC’s finding
that Perski ’808 provides written support for Perski ’455.1
We agree with Apple, however, that Perski ’808 fails
to incorporate by reference Morag.2 For a prior art refer-
ence to anticipate a claim, the reference must disclose
each claim limitation in a single document. Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
(Fed. Cir. 2000). The prior art document, however, may
incorporate subject matter by reference to another docu-
1 The dissent contends that Perski ’808 does not
provide adequate written support for Perski ’455 because
Perski ’808 discloses multi-touch detection only as a
“goal,” whereas Perski ’455 “enables” the detection of
multiple touches. Dissent at 8–9. This is incorrect.
Perski ’808 explains that the disclosed scanning algo-
rithms are “able to detect more than one finger touch at
the same time.” J.A. 16152. It discloses that the
touchscreen detector is “capable of detecting multiple
finger touches simultaneously.” J.A. 16151. Moreover,
Perski ’808 expressly states that “[t]he present invention .
. . enable[s] multiple and simultaneous finger inputs
directly on the display.” J.A. 16149. Nothing in the
record supports the dissent’s view that the scanning
algorithms in Perski ’808 could not detect multiple touch-
es simultaneously. Indeed, the “faster approach” de-
scribed in Perski ’808 is virtually identical to the scanning
algorithm disclosed in the ’607 patent.
2 Contrary to arguments by Motorola and the ITC,
Apple raised this argument in its petition for ITC review
and thus preserved it for appeal.
APPLE INC. v. ITC 9
ment such that the incorporated material becomes part of
the host document for the purposes of anticipation. Id.“To incorporate material by reference, the host document
must identify with detailed particularity what specific
material it incorporates and clearly indicate where that
material is found in the various documents.” Id. at 1282–
83. Whether and to what extent a host document incorpo-
rates material by reference is a question of law, subject to
de novo review. Id. at 1283.
Here, Perski ’808 only makes a passing reference to
Morag as a “method similar” for detecting the presence of
a stylus. J.A. 16149. It does not affirmatively incorporate
any information. Perski ’808 does not even refer to the
particular functionality in Morag that detects the pres-
ence of a stylus, let alone the process that outputs touch
event information to form a pixilated image, as required
by claim 10. Thus, Perski ’808’s reference to Morag falls
short of identifying with detailed particularity the mate-
rial that discloses the “pixilated image” limitation in
claim 10. Because Perski ’808 does not incorporate by
reference the anticipatory subject matter from Morag, the
ITC’s finding that Perski ’455 anticipates claim 10 of the
’607 patent lacks substantial evidence.
Having resolved that Perski ’455 is prior art for
claims 1–7 of the ’607 patent, we conclude that substan-
tial evidence supports the ITC’s finding that Perski ’455
anticipates those claims. Perski ’455 discloses an embod-
iment in which “[a] two-dimensional sensor matrix lies in
a transparent layer over an electronic display device” and
a finger touch at a certain location on the matrix “increas-
es the capacitance between the first conductor line and
the orthogonal conductor line which happens to be at or
closest to the touch position.” Perski ’455, col.13 ll.32–40
(reference numerals omitted). It discloses two matrix
scanning algorithms that are “preferably able to detect
more than one finger touch at the same time.” Id. col.14
ll.15–19.
10 APPLE INC. v. ITC
As recounted above, the number of steps required to
scan the matrix depends on the number of matrix col-
umns and rows. The matrix disclosed in Perski ’455 has n
columns and m rows. Perski ’455, col.13 l.65–col.14 l.4.
Apple is correct that the slower method disclosed in
Perski ’455 requires at least n*m steps to scan the matrix
because it scans each node one by one. Id. col.14 ll.20–43.
But the reference also discloses a “faster approach” that
requires between two steps and a “maximum of n+m
steps.” Id. col.14. ll.44–56. The faster approach scans
groups of nodes per step, which significantly reduces the
number of steps required to scan the matrix. Id. The
reference also discloses a blend of the slower and faster
approaches as the “optimal approach” to detecting multi-
ple touches. Id. col.14 l.57–59.
Apple fails to provide any reason why the faster or op-
timal approaches would be too slow or inaccurate to detect
multiple touches or why the disclosure of Perski ’455 fails
to enable multiple touches. To the contrary, as Motorola
points out, the scanning algorithm disclosed in the ’607
patent is very similar to the “faster approach” disclosed in
Perski ’455. The ’607 patent discloses a sensing circuit
that detects changes in capacitance at each node along n
columns in the matrix by cycling through one row at a
time for the m rows. ’607 patent, col.5 l.60–col.6 l.6.
Moreover, the claims of the ’607 patent do not expressly
contain a speed or accuracy limitation. Thus, we conclude
that substantial evidence supports the ITC’s finding that
Perski ’455 anticipates claims 1–7 of the ’607 patent. The
ITC’s decision that Perski ’455 anticipates claim 10,
however, lacks substantial evidence.
III. Anticipation and Obviousness of the ’607 Patent:
SmartSkin
A. Anticipation
Motorola argues that if we reverse the ITC’s decision
that Perski ’455 anticipates claim 10 of the ’607 patent,
APPLE INC. v. ITC 11
we should reverse the ITC’s decision that SmartSkin does
not anticipate claim 10. The ALJ determined that
SmartSkin does not disclose the use of transparent con-
ductive lines because the reference’s statements about
using transparent ITO conductive lines related to future
work. The ITC declined to review the ALJ’s finding.
Motorola argues that the ALJ erred because SmartSkin’s
disclosure would have enabled a skilled artisan to build a
touchscreen using transparent ITO electrodes.
We agree with Apple and the ITC that substantial ev-
idence supports the ITC’s finding of no anticipation.
SmartSkin discloses an opaque surface covered with a
grid of copper electrodes, not a transparent touchscreen
based on ITO electrodes. In the SmartSkin system, a
projector displays an image on the surface and circuitry
connected to the copper electrode grid detects when a user
touches the surface, enabling the surface to operate as a
touch-screen. SmartSkin explains that its authors had
developed two “working interactive surface systems based
on this technology: a table and a tablet.” J.A. 13603.
Figure 7 from SmartSkin shows an exemplary “table”
system:
12 APPLE INC. v. ITC
J.A. 13599. Thus, the reference explains that the authors
had not achieved a touchscreen employing transparent
electrodes.
The only discussion of transparent electrodes appears
under the “Conclusions and Directions for Future Work”
section, in which the authors explain that they were
interested in future “research directions.” J.A. 13603.
One of those directions was the use of transparent ITO
electrodes that are “mounted in front of a flat panel
display or a rear-projection screen.” Id. There is no
disclosure that the authors had achieved a transparent
touch screen and the record does not indicate that it
would have been routine to do so. Nor is there any disclo-
sure in SmartSkin that the matrix of ITO electrodes
would have created the “transparent . . . layer[s]” recited
in claim 10. Although the ITO electrodes are transparent,
the ’607 patent explains that, when arranged in a matrix,
“the patterned ITO can become quite visible thereby
producing a touchscreen with undesirable optical proper-
ties.” ’607 patent, col.14 l.65–col.15 l.3.
We do not agree with Motorola that the ITC’s deter-
mination regarding the disclosure of the SmartSkin
reference lacks substantial evidence. Given SmartSkin’s
limited disclosure, we decline to disturb the ITC’s finding
APPLE INC. v. ITC 13
that Motorola failed to prove that SmartSkin anticipates
claim 10 of the ’607 patent.
B. Obviousness
Despite finding that SmartSkin did not anticipate the
’607 patent claims, the ALJ concluded that they would
have been obvious in light of SmartSkin in combination
with a patent application that stemmed from the
SmartSkin project, Unexamined Japanese Patent Appli-
cation No. 2002-342033A (Rekimoto). The ITC reviewed
the ALJ’s decision and upheld it. The ITC agreed with
the ALJ’s conclusion that SmartSkin provides a motiva-
tion to combine the use of transparent electrodes with a
mutual capacitance sensor. The ITC also agreed with the
ALJ’s finding that Rekimoto disclosed the limitations in
claim 10 that are absent from SmartSkin.
Apple argues that the ITC erred in concluding that
SmartSkin in combination with Rekimoto rendered obvi-
ous claim 10 of the ’607 patent. Apple contends that its
design and development story shows that a transparent
multitouch screen would not have been obvious to those of
skill in the art—Apple’s highly-skilled engineers had to
extensively research and modify the copper mesh
SmartSkin design. It asserts that objective evidence
reinforces that the ’607 patent is not obvious. Specifically,
Apple points to evidence that the industry praised the
iPhone’s touchscreen; that nearly every major cellphone
manufacturer, including Motorola, copied the iPhone’s
touchscreen; and that the iPhone was a commercial
success.
Apple argues that the ITC improperly employed a
hindsight analysis by asking whether the invention was
different from the prior art. Second, Apple asserts that
the ITC undervalued the ingenuity in measuring capaci-
tance changes and hiding the ITO circuitry, both of which
are absent in SmartSkin and Rekimoto. Third, Apple
14 APPLE INC. v. ITC
contends that the ITC improperly ignored Apple’s objec-
tive evidence.
The ITC and Motorola respond that claim 10 would
have been obvious. They contend that claim 10 is not
limited to a particular method to measure capacitance
and does not require hiding the ITO circuitry to achieve
complete transparency. They argue that SmartSkin and
Rekimoto disclose every limitation of claim 10. Motorola
argues that SmartSkin defines the same problem as the
’607 patent—creating a multitouch surface—and provides
the solution, including the use of transparent ITO. It
points to emails between Apple’s engineers that
SmartSkin “could work for multitouch input.”
The ITC and Motorola argue that Apple’s secondary
consideration evidence is not adequate to overcome the
strong prima facie showing of obviousness. They argue
that multiple patents cover the iPhone’s touchscreen and
that Apple failed to prove nexus between the ‘607 patent-
ed invention and the commercial success. They contend
that the industry praise for the iPhone related to features
other than the multitouch screen and assert that Apple
presented no evidence of copying.
We are troubled by the ITC’s obviousness analysis.
We have repeatedly held that evidence relating to all four
Graham factors—including objective evidence of second-
ary considerations—must be considered before determin-
ing whether the claimed invention would have been
obvious to one of skill in the art at the time of invention.
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012);
see also Mintz v. Dietz & Watson, Inc., 679 F.3d 1372,
1379 (Fed. Cir. 2012) (collecting cases). Indeed, it is
axiomatic that “[t]he establishment of a prima facie case .
. . is not a conclusion on the ultimate issue of obvious-
ness.” Transocean, 699 F.3d at 1348.
APPLE INC. v. ITC 15
The ITC failed to follow this precedent. Prior to even
mentioning the secondary considerations, the ALJ con-
cluded that “the evidence clearly and convincingly shows
that the ’607 patent is obvious in light of SmartSkin in
combination with Rekimoto.” J.A. 216. That error war-
rants vacating the ITC’s decision. The ITC also concluded
that claim 10 was obvious and issued its own findings
regarding the first three Graham factors (rejecting some
of the ALJ conclusions regarding the disclosures in the
prior art). The ITC concluded that the ‘607 patent claims
at issue would have been obvious in view of Smartskin in
combination with Rekimoto. J.A. 529. The ITC, however,
never even mentioned, much less weighed as part of the
obviousness analysis, the secondary consideration evi-
dence Apple presented. It stated only that it did not
review the ALJ finding regarding secondary considera-
tions. J.A. 523 n.7. This is not adequate under our law.
The ultimate conclusion of obviousness is a legal conclu-
sion to be reached after weighing all the evidence on both
sides.3 The ITC analyzed only the disclosure of the prior
art references and based solely on that evidence deter-
mined the claims would have been obvious. We conclude
that the ITC’s fact findings regarding what the references
disclose are supported by substantial evidence. And as
the ALJ and the ITC found, the Smartskin reference is
very close and expressly recommends as “Conclusions and
Directions for Future Work” using transparent ITO
electrodes to build a “transparent SmartSkin sensor.” J.A.
13603. Indeed, the reference teaches that this transpar-
ent sensor could be integrated with “most of today’s flat
3 The dissent’s claim that objective evidence is the
“best” evidence is not correct. Dissent at 14–15. In an
individual case, it is certainly possible that objective
evidence may outweigh the evidence that tends to estab-
lish obviousness. It is also possible that strong evidence
under the first three Graham factors may outweigh the
objective evidence. But there is no hierarchy of evidence.
16 APPLE INC. v. ITC
panel displays” because those systems rely on an “active
matrix and transparent electrodes.” Id. The ITC erred,
however, to the extent that it did not analyze the second-
ary consideration evidence.
This error was not harmless. Secondary considera-
tions evidence can establish that “an invention appearing
to have been obvious in light of the prior art was not” and
may be “the most probative and cogent evidence in the
record.” Transocean, 699 F.3d at 1349 (quoting Stratoflex,
Inc. v. Aeroquip Corp., 713 F.3d 1530, 1538 (Fed. Cir.
1983)). This evidence guards against the use of hindsight
because it helps “turn back the clock and place the claims
in the context that led to their invention.” Mintz, 679
F.3d at 1378. Apple presented compelling secondary
considerations evidence that may have rebutted even a
strong showing under the first three Graham factors, and
the ITC failed to grapple with it.
For example, Apple presented evidence of industry
praise by business publications. Time Magazine hailed
the iPhone as the 2007 “Invention of the Year” in part
because of the phone’s touchscreen and its multitouch
capabilities. J.A. 7483–84. Bloomberg Businessweek
issued a 2007 article entitled “Apple’s Magic Touch
Screen,” in which it labeled the “sophisticated multipoint
touch screen” as “[t]he most impressive feature of the new
iPhone.” J.A. 7826. Around the same time, Wired Maga-
zine recounted that, after Apple demonstrated the iPhone
and its “brilliant screen,” an AT&T executive praised the
iPhone as “the best device I have ever seen.” J.A. 8259
(internal quotation marks omitted). The ITC failed to
address this evidence and the record does not appear to
contain any contrary evidence.
Apple also presented evidence of copying. The ITC
failed to address this evidence as well.
Lastly, Apple presented evidence that the iPhone has
achieved a high degree of commercial success. Apple
APPLE INC. v. ITC 17
presented financial information that showed that the
iPhone and related products received billions in dollars of
revenue from 2008 to 2010. J.A. 14184. Apple also pre-
sented evidence showing a nexus between the undisputed
commercial success of the iPhone and the patented multi-
touch functionality, namely evidence that Apple’s compet-
itors copied its touchscreen and that those in the industry
praised the iPhone’s multitouch functionality. The ITC
did not address any of this evidence.4
For the foregoing reasons, we vacate the ITC’s deci-
sion that claim 10 of the ’607 patent would have been
obvious and remand the case for further proceedings. To
be clear, we conclude that the ITC fact findings regarding
the scope and content of the prior art (what the reference
4 The ITC did not weigh this evidence. After con-
cluding that the claims were obvious, the ALJ did find
that there was no nexus between the commercial success
of the iPhone and the multitouch functionality that is the
subject of the ’607 patent. J.A. 217. We conclude that
this fact finding is not supported by substantial evidence.
Apple’s evidence of industry copying of the multitouch
screen and industry praise of this feature are strong
evidence of nexus. The only contrary evidence is a curso-
ry statement of Motorola’s technical expert. Given the
strong record evidence of nexus, this conclusory statement
is insufficient to support the finding of no nexus. See
Perske v. Office of Pers. Mgmt., 25 F.3d 1014, 1020 (Fed.
Cir. 1994) (holding that the Merit Systems Protection
Board’s finding lacked substantial evidence because
contrary evidence in the record “overwhelm[ed]” the
evidence that supported the Board’s finding); Eckstrom
Indus., Inc. v. United States, 254 F.3d 1068, 1076 (Fed.
Cir. 2001) (holding that the Department of Commerce’s
fact finding was not supported by substantial evidence
because, after a “review of all of the evidence,” the “over-
whelming evidence” supported a contrary finding).
18 APPLE INC. v. ITC
discloses) are supported by substantial evidence. We
remand so the ITC can consider that evidence in conjunc-
tion with the evidence of secondary considerations and
determine in the first instance whether claim 10 would
have been obvious to one of skill in the art at the time of
the invention.
IV. Noninfringement of ’828 Patent
The ALJ construed the term “mathematically fitting
an ellipse” to require the method to perform “a mathemat-
ical process” whereby “an ellipse is actually fitted to the
data,” and, from that ellipse, “various parameters can be
calculated.” J.A. 58–70. Based on this construction, the
ALJ found that Motorola’s accused products did not
infringe because they only measure data from the
touchscreen but do not actually fit an ellipse. The ITC
declined to review the ALJ’s noninfrinement decision.
Apple argues that the ITC improperly limited the
term “mathematically fitting an ellipse” to require calcu-
lation of the ellipse parameters after the ellipse has been
“actually fitted.” It contends that the specification re-
peatedly explains that the method fits an ellipse by calcu-
lating the parameters of that ellipse or by using default
parameters as a baseline—there is no prior “fitting” or
drawing of the ellipse. Apple asserts that it is irrelevant
that the ellipse parameters could, in theory, define other
shapes.
The ITC and Motorola contend that the ALJ correctly
construed the limitation to require the software to “actu-
ally fit[]” the ellipse and then calculate the parameters of
the ellipse. They contend that the inventors amended the
claims during prosecution to overcome a reference that
“obtain[ed] measured data . . . so long as the measured
data happens to be measured from an object that ‘is in
general ellipse-like.’” J.A. 11920–21. They argue that the
plain language of the claim requires the software to
“mathematically fit[]” an ellipse separate from calculating
APPLE INC. v. ITC 19
ellipse parameters. Lastly, they argue that the specifica-
tion explains that the ellipse parameters are determined
by “fitting an ellipse.”
We agree with Apple that the ITC erroneously con-
strued the “mathematically fitting an ellipse” limitation.
The plain language requires the software to “mathemati-
cally fit[]” an ellipse to the data. That process refers to
calculating the mathematical parameters that define an
ellipse. The dependent claims further support this inter-
pretation. Those claims recite the step of “transmitting
one or more ellipse parameters,” ’828 patent, claims 2, 3,
which implies that the steps in the independent method
claim have already calculated the ellipse parameters.
Those claims do not imply, as Motorola contends, a sepa-
rate step of calculating the ellipse parameters.
The remainder of the intrinsic record is in accord with
the ordinary meaning of the claim language. The specifi-
cation repeatedly explains that the mathematical fitting
process creates the parameters of the ellipse. E.g., ’828
patent, Fig. 18, col.25 l.54–col.26 l.21. The prosecution
history is also consistent with the plain meaning of
“mathematically fitting an ellipse.” During prosecution,
the applicants distinguished a prior art reference on the
basis that the reference obtained data that happened to
be “ellipse-like,” i.e., the prior art never mathematically
fit the received data. J.A. 11920 (emphasis omitted).
Those statements are consistent with the ordinary mean-
ing of “mathematically fitting an ellipse” and do not
suggest that we should limit the term to require the
method to “actually fit[] [an ellipse] to the data.” The
correct construction only requires the method to calculate
the parameters that define an ellipse. Accordingly, we
conclude that the ITC erred in its construction of “math-
ematically fitting an ellipse.”
Having adopted Apple’s construction, we vacate the
ITC’s decision that Motorola does not infringe the ’828
20 APPLE INC. v. ITC
patent claims and remand the case for further proceed-
ings. We do not accept Motorola’s invitation that we
render judgment of noninfringment on appeal. Contrary
to Motorola’s arguments, the ITC never found that the
Xoom did not infringe under any construction. Nor did
Apple concede noninfringment under any construction.
See J.A. 133. Apple’s expert did testify that Motorola’s
non-Xoom products did not infringe, but that testimony
was based on his acceptance of the ITC’s construction of
“mathematically fitting an ellipse.” J.A. 30653–55. We
thus vacate the ITC’s decision that Motorola does not
infringe the ’828 patent claims and remand the case to
allow the ITC to consider in the first instance whether the
accused products infringe under the correct construction
of “mathematically fitting an ellipse.”
CONCLUSION
We have considered the parties’ remaining arguments
and find that they are without merit. For the foregoing
reasons, we affirm-in-part, reverse-in-part, and vacate-in-
part the ITC’s decision and remand for further proceed-
ings.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
VACATED-IN-PART
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
MOTOROLA MOBILITY, INC.,
Intervenor.
______________________
2012-1338
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-750.
______________________
REYNA, Circuit Judge, concurring-in-part and dissenting-
in-part.
I.
The Smartphone has defined modern life. Be it in the
workplace, the home, airports, or entertainment venues
across America, individuals are tethered to their
handheld devices. Not long ago, users primarily spoke
into these devices. Today, fingers tapping, grazing,
pinching, or scrolling the screen is a ubiquitous image
that reflects how we conduct business, work, play, and
2 APPLE INC. v. ITC
live. The asserted patent in this case is an invention that
has propelled not just technology, but also dramatically
altered how humans across the globe interact and com-
municate. It marks true innovation.
Today the majority invalidates seven claims in United
States Patent No. 7,633,607 (the ’607 Patent) based on
prior art that would not enable one of skill in the art at
the time of the invention. In concluding that the Perski
’455 prior art reference can be backdated to claim priority
to the provisional application, the majority misapplies our
requirement that the earlier disclosure comply with § 112
¶ 1. Given the critical differences between the provisional
and non-provisional disclosures, I would reverse the ITC’s
finding that Perski ’455 is entitled to the Perski ’808
priority date and remand for additional proceedings.
On the issue of obviousness, rather than adopting the
ITC’s determination that the SmartSkin prior art refer-
ence would have motivated one of skill in the art to com-
bine mutual capacitance technology with transparent
screens, I would hold as a matter of law that the asserted
claims are not obvious.
I join the majority in concluding that the ITC erred in
making an obviousness determination without fully
considering evidence pertaining to industry praise, copy-
ing, and commercial success, but I write separately to
discuss my views as to the purpose and function of objec-
tive indicia of nonobviousness as indicators of innovation
in the relevant field.
I join the remainder of the majority opinion, including
treatment of arguments relating to non-infringement of
U.S. Patent No. 7,812,828, construction of the claim term
“mathematically fitting an ellipse,” and the reasoning
concluding that neither SmartSkin nor Perski ’808 antici-
pate claim 10 of the ’607 Patent.
APPLE INC. v. ITC 3
Apple characterizes its invention as the first trans-
parent, full image touchscreen that accurately detects and
responds to multiple touches at once. More precisely, the
asserted claims of the ’607 Patent generally disclose a
touch panel having a transparent capacitive sensing
medium1 configured to detect multiple, co-occurring
touches at different locations to produce signals repre-
sentative of the location of the touches. The touch panel,
embodied in the marketplace as the interactive screen of
an iPhone or iPad, is comprised of two layers of transpar-
ent electrically-isolated conductive lines where the two
layers are spatially separated from each other and where
conductive lines in one layer are positioned transverse to
the conductive lines in the other layer, creating an array
of intersection points. The images included below illus-
trate that the claimed detection and response to touch
occurs through a “mutual capacitance” circuitry measur-
ing the change in voltage between a horizontal wire and a
vertical wire when a finger approaches a crossing point on
the screen. See ’607 Patent col. 9 ll. 52-62.
1 The claimed touchscreen sensors are made out of
indium tin oxide (ITO). As implemented in the ’607
Patent preferred embodiments, ITO circuitry was masked
to the user through caulking ITO channels with clear
insulation. ’607 Patent col. 12 l. 24 to col. 13 l. 6 and col.
14 l. 60 to col. 17 l. 11.
APPLE INC. v. ITC 5
and exact terms.” New Railhead Mfg., L.L.C. v. Vermeer
Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002) (quoting
statute). I dissent from the majority’s conclusion that
Perski ’455 is prior art to the ’607 Patent.
A.
The Perski inventors initially filed a provisional pa-
tent application—Perski ’808—on February 10, 2003. The
non-provisional Perski ’455 application was later filed on
January 15, 2004. During the 11 months between the
time the provisional and non-provisional applications
were filed, the inventors continued to refine the invention,
as reflected in the extensive revisions made in filings with
the PTO. Those revisions clearly show that in filing for
Perski ’455, language from the provisional was removed
and new language was added. Apple emphasizes the
breadth of the inventors’ revisions by constructing a
redline2 comparing the language of the provisional appli-
cation in February 2003 and the language of the non-
provisional application in January 2004:
2 The language in black remained unchanged be-
tween the provisional and non-provisional filings. The
language in red represents what appeared in the Febru-
ary 2003 filing of the provisional application, but was
removed in the January 2004 filing of the non-provisional
application. The language in blue represents additions
made in the filing of the non-provisional application. The
blue language never appeared in the original provisional
application.
6 APPLE INC. v. ITC
J.A. 6857 (excerpted portion).
Motorola argues that Perski ’455 is entitled to the
February 2003 priority date because the Perski ’808
provisional application provides written description
support for the claimed invention. On this point, the
Administrative Law Judge agreed, finding that the Perski
’808 provisional application sufficiently disclosed the
finger detection method and described algorithms for use
with transparent mutual capacitance.
Apple contends that Perski ’455 is not entitled to the
earlier priority date because there is no clear and convinc-
ing evidence that Perski ’808 satisfied the written de-
scription requirement. Apple submits that the provisional
application lacked enabling disclosures because it was not
until Perski ’455 was filed in January 2004 that the
inventors disclosed how the screen recognized multiple
finger touches.
APPLE INC. v. ITC 7
Apple also argues that the reference is not anticipa-
tory because there is testimony that the ’607 Patent was
conceived of between September 2003 and November
2003—i.e., before the Perski ’455 application.3 See J.A.
8728−29. The Administrative Law Judge never consid-
ered Apple’s evidence of an earlier conception date be-
cause he was satisfied that Perski ’455 was entitled to the
earlier priority date. J.A. 182 (declining to make any
findings on Apple’s date of invention). On appeal, Apple
seeks review of the Administrative Law Judge’s decision
regarding the Perski ’455 priority date and his failure to
address the conception date for the ’607 Patent.
B.
In section § 119(e)(1) of the Patent Statute, a non-
provisional utility patent application may be afforded the
priority date of a related provisional application if the two
applications share at least one common inventor and the
written description of the provisional application ade-
quately supports the claims of the non-provisional applica-
tion. To backdate the later application with the earlier
priority date, the specification of the provisional applica-
tion must “contain a written description of the invention”
as defined in § 112 ¶ 1. New Railhead Mfg., L.L.C., 298
F.3d at 1295 (discussing 35 U.S.C. § 119(e)(1) and 35
U.S.C. § 112 ¶ 1).
3 To prove an earlier conception date, Apple must
show by clear and convincing evidence that it conceived of
the claimed subject matter before its filing date. 35
U.S.C.A. § 102(g)(2); see also Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572, 1577 (Fed. Cir. 1996) (“[P]riority of inven-
tion goes to the first party to reduce an invention to
practice unless the other party can show that it was the
first to conceive the invention and that it exercised rea-
sonable diligence in later reducing that invention to
practice.”).
8 APPLE INC. v. ITC
My review of the differences between the Perski ’808
application and the Perski ’455 application leads me to
determine that the prior application does not “clearly
conclude” that the Perski inventors possessed the claimed
invention as of February 10, 2003. Trading Tech. Int’l.,
Inc. v. eSpeed, Inc., 595 F.3d 1340, 1359 (Fed. Cir. 2010)
(quoting Lockwood v. Am. Airlines, 107 F.3d 1565, 1572
(Fed. Cir. 1997)). In brief, Perski ’455 should not have
been awarded the earlier provisional application date
because Perski ’808 does not indicate that the inventors
knew how to detect multiple touches in February 2003.
As filed, the provisional application discusses finger
detection as a “goal,” with the goal being “to recognize all
of the sensor matrix junctions that bypass signals due to
external finger touch.” J.A. 16152. Recitation of a goal,
however, is not sufficient if the corresponding steps are
not disclosed. The majority credits the incomplete discus-
sion of scanning the nodes of a matrix as satisfying the
written description requirement without explaining how
such a reference would put the Perski inventors in pos-
session of the method for recognizing multiple finger
touches and then generating the appropriate output
signal. Maj. Op. 7. Indeed, the n*m “algorithm” dis-
cussed and heavily relied on in the majority’s rationale is
no more than the scanning of nodes in a matrix where n
corresponds to columns and m corresponds to rows.4 I
cannot agree that scanning a matrix is the same as teach-
ing detection of multiple finger touches.
4 The fact that a certain thing may result from a
given set of circumstances is not sufficient to anticipate
because ultimately the prior art “shows what it shows.”
Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629,
639−40 (Fed. Cir. 2011) (internal citations omitted). I
conclude that “n*m,” by itself, is not an algorithm. What
is missing are corresponding steps, such as those added
11 months later.
APPLE INC. v. ITC 9
In January 2004, Perski ’808 did not sufficiently ex-
plain how the multipoint detection would occur. J.A.
16152. It was not until Perski ’455 that the inventors set
forth a critical passage confirming that the initial goal
had been met and “procedures for detection” were now
“possible”:
In fact, because it is typically necessary to
repeat the procedure for the second axis so
the number of steps is more typically 2*n*m
steps. However, this method enables the de-
tection of multiple finger touches. When an
output signal is detected on more then [sic]
one conductor that means more than one fin-
ger touch is present. The junctions that are
being touched are the ones connecting the
conductor that is currently being energized
and the conductors which exhibit an output
signal.
J.A. 16610 at col. 14 ll. 35-43 (emphasis added); J.A. 6857
(indicating through color designations that the “output
signal” language was not present in the Perski ’808 appli-
cation).
The record reflects that the 2*n*m scanning method
“enabling the detection of multiple finger touches” was
absent in February 2003 and the provisional application
was limited to the simplistic n*m method which by itself
merely describes the existence of a grid—i.e., intersection
lines parallel to each other. Because the disclosure in
Perski ’808 would not convey to a skilled artisan that the
detection of an output signal on more than one conductor
corresponds to multiple touches, I would reverse the ITC’s
finding that Perski ’455 is entitled to the Perski ’808
priority date. I would thus remand for additional pro-
ceedings determining Apple’s conception date and wheth-
er, based on the newly developed record, Perski ’455
qualifies as § 102(e) prior art.
10 APPLE INC. v. ITC
III.
In addressing whether the claims of the ’607 Patent
are obvious, the majority endorses the ITC’s underlying
findings regarding scope and content of the prior art—
leaving for another day resolution of the ultimate legal
question of obviousness. Maj. Op. 18. I would decide the
issue and reverse the ITC’s determination that
SmartSkin, alone or in combination with Rekimoto ’033,5
would have motivated one of skill in the art to combine
mutual capacitance technology with transparent screens.
The asserted claims and the SmartSkin prior art are
addressing two separate problems with two separate
solutions. Prior to Apple’s invention, it was known how to
achieve multitouch functionality on opaque surfaces and
it was known how to achieve a transparent screen with
single touch. But, a transparent touchscreen that accu-
rately detected and responded to simultaneous multiple
touches remained elusive.
The record shows that after Steve Jobs charged Ap-
ple’s engineers with the seemingly unachievable task of
solving the multitouch problem, Apple explored adapting
the primitive mutual capacitance system disclosed in
SmartSkin to a novel system operating with transparent
electrodes. The undertaking was fraught with technical
challenges and ultimately proved that the incomplete
guidance of the SmartSkin prior art contradicts the ITC’s
5 The Administrative Law Judge based his obvious-
ness analysis on SmartSkin in combination with Japanese
Unexamined Patent Application Publication No. 2002-
342033A (Rekimoto ’033). The ITC disagreed with the
Administrative Law Judge that Rekimoto ’033 disclosed a
relevant use of transparent electrodes. J.A. 523, n.6.
Because I would reverse the ITC’s analysis based on the
primary prior art reference, I do not discuss the secondary
Rekimoto ’033 reference.
APPLE INC. v. ITC 11
finding that SmartSkin would provide one of skill in the
art with a “reasonable expectation of success.” J.A. 523.
SmartSkin, discussing surface-finger interactions through
a mutual capacitance system, was focused on opaque
prototypes such as interactive tables or walls. SmartSkin
did not share Apple’s focus of making a smaller, transpar-
ent screen interactive; rather, the grid of copper electrodes
detected touch on two sizeable systems much larger than
a handheld device or tablet: an 80 x 90 cm plywood table
and a 32 x 24 cm gesture recognition pad. In my view, the
prior art reference cannot be clear and convincing evi-
dence of obviousness where, as here, it does not guide a
skilled artisan towards a particular solution. Bayer v.
Schering, 575 F.3d 1341, 1347 (Fed. Cir. 2009); see also
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352,
1361 (Fed. Cir. 2011) (declining to find a claim obvious
when the when prior art does not provide “indication of
which parameters were critical” or “direction as to which
of many possible choices is likely to be successful”).
There is no basis to conclude that SmartSkin would
teach a skilled artisan the foresight to realize Apple’s
desired solution when the SmartSkin authors conceded
that they did not know how to accomplish a multitouch
screen with transparent electrodes. In the “Future Work”
section, the SmartSkin authors muse that such a combi-
nation is possible, but they lacked the know-how to im-
plement the very technology Apple sought:
This work is still at an early stage and may
develop in several directions. For example,
interaction using multiple fingers and shapes
is a very new area of human-computer inter-
action, and the interaction techniques de-
scribed in this paper are just a few examples.
More research is needed, in particular, focus-
ing on careful usability evaluation.
12 APPLE INC. v. ITC
J.A. 13603 (emphases added). In light of the clearly
stated uncertainty expressed by the SmartSkin authors
that they could achieve a transparent touchscreen and
that experimentation was still necessary to pursue the
desired result, it was error to rely on SmartSkin to
demonstrate that Apple’s invention was a “predictable
solution” or “an anticipated success.” Rolls-Royce, PLC v.
United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010).
I note with great interest that the majority, in its an-
ticipation discussion, recognizes that the SmartSkin
authors “had not achieved a touchscreen employing
transparent electrodes.” Maj. Op. 12. In discussing the
disparities between the teachings in SmartSkin and those
in the ’607 Patent, the majority goes on to observe that
SmartSkin provides “no disclosure that the authors had
achieved a transparent touch screen and the record does
not indicate that it would have been routine to do so. Nor
is there any disclosure in SmartSkin that the matrix of
ITO electrodes would have created the “transparent . . .
layer[s] recited in claim 10.” Maj. Op. 12. The majority’s
anticipation discussion supports a finding of nonobvious-
ness by pointing out that the prior art authors did not
know how to achieve a transparent touchscreen and
acknowledging that the skilled artisan would have nu-
merous design decisions to make and/or obstacles to
overcome even after consulting the prior art. While the
type of hope discussed in SmartSkin can be said to drive
science, it should not without caution be embraced as an
impediment to actual innovation.
Obviousness is not shown when prior art gives only
“general guidance as to the particular form of the claimed
invention or how to achieve it.” In re Rosuvastatin Calci-
um Patent Litigation, 703 F.3d 511, 518 (Fed. Cir. 2012)
(quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988)). In this case, SmartSkin does not amount to clear
and convincing evidence because the prior art references
lack satisfactory guidance as to how to transform the
APPLE INC. v. ITC 13
screen of a handheld device into an interactive surface
reacting to simultaneous multiple touches of a user’s
fingertips. Contrary to the ITC’s conclusion that the
asserted claims amount to no more than mechanical
rearrangement of known pieces, the evidence supports
that Apple, after identifying a problem pervading the
prior art, succeeded in forging through obstacles to devel-
op the solution. Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1377 (Fed. Cir. 2012) (citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966)). Because I believe that the
record compels a legal conclusion that the asserted claims
are not obvious, I dissent from the decision to remand the
issue back to the ITC.
IV.
In finding that the ITC erred in assessing whether
the asserted claims were obvious, the majority focuses on
the objective evidence of nonobviousness, often referred to
as “secondary considerations.” See Graham, 383 U.S. at
36. The majority correctly points to the ITC’s failure to
follow precedent and reach an obviousness conclusion
after weighing all evidence on both sides. Maj. Op. 15. I
agree with the majority that the ITC erred in not analyz-
ing objective evidence of industry praise, copying, and
commercial success. I write separately on this issue to
express my view that an invention’s recognition in the
related industry and its success in the marketplace, along
with the other Graham factors, could constitute strong
evidence of innovation which could negate an obviousness
finding.
Objective evidence of secondary considerations of pa-
tentability are essential components of our obviousness
inquiry. Power Integrations, Inc. v. Fairchild Semicon-
ductor Int’l., Inc., 711 F.3d 1348, 1356 (Fed. Cir. 2013)
(citing In re Cyclobenzaprine Hydrochloride Extended-
Release Capsule Patent Litigation, 676 F.3d 1063, 1076–
79 (Fed. Cir. 2012)). This is especially true in this modern
14 APPLE INC. v. ITC
day of nanotechnology where what may be viewed as a
mere incremental step could constitute a great leap in
innovation. In order to protect against the prejudice of
hindsight bias, courts make factual findings as to factors
such as copying, long felt but unsolved need, failure of
others, commercial success, unexpected results created by
the claimed invention, unexpected properties of the
claimed invention, licenses showing industry respect for
the invention, and skepticism of skilled artisans before
the invention. Power Integrations, 711 F.3d at 1356
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(collecting cases)). I emphasize that objective evidence of
nonobviousness, such as that gleaned from the patented
product’s role in the marketplace, is the indicia of the
innovation principle upon which rests our system of
patents. A major problem I detect in conclusions reached
under § 103 is that objective evidence of nonobviousness
is too often treated as “secondary considerations.” In my
view, objective evidence of nonobviousness is objective
indicia of innovation. We must not lose sight that a
patent, presumed valid, commemorates an inventor’s
achievement that entitles her to full and equal considera-
tion of all evidence before a conclusion on the issue of
obviousness is reached.
Our patent laws are designed to foster optimal incen-
tives for innovation, yet too often the genius of an inven-
tion is dismissed by combination of known elements
viewed through glasses of hindsight. Our cases highlight
that inventive contribution often “lies in defining the
problem in a new revelatory way.” Mintz, 679 F.3d
at1377; Uniroyal, Inc. v. Rudkin–Wiley Corp., 837 F.2d
1044, 1051 (Fed. Cir. 1988) (“That which may be made
clear and thus ‘obvious’ to a court, with the invention fully
diagrammed and aided by experts in the field, may have
been a breakthrough of substantial dimension when first
unveiled.”). I encourage courts handling patent infringe-
ment matters to treat evidence corresponding to the
APPLE INC. v. ITC 15
factors identified in Graham as strong, if not the best,
evidence of innovation—i.e., the manner in which the
industry and the marketplace responded to the disclosure
in a patent.
Here, the ITC succumbed to the bias of hindsight as
the record bears significant objective evidence that Ap-
ple’s patent was innovative. As a result, the Administra-
tive Law Judge and the ITC were “misled by improper
‘combination’ notions.”6 Custom Accessories, Inc. v. Jef-
frey-Allan Industries, Inc., 807 F.2d 955, 960 (Fed. Cir.
1986).
As the majority aptly points out, Time Magazine
named the iPhone the 2007 “Invention of the Year,” and
the publication heralded the touchscreen as a “powerful
illusion that you’re physically handling data with your
fingers.” J.A. 7483. Similar sentiments were expressed
in Bloomberg Business Week, with an article titled “Ap-
ple’s Magic Touch Screen” that specifically refers to
Apple’s patent application and describes the screen’s
capability “to react to as many as 15 simultaneous touch-
es” as “impressive.” J.A. 7826. These examples—as well
as the many others in the record—offer effusive praise
relating to the patented invention. Such praise of innova-
tion by the relevant industry weighs against invalidating
a patent as obvious. Power-One, Inc. v. Artesyn Tech. Inc.,
599 F.3d 1343, 1352 (Fed. Cir. 2010).
Evidence of innovation is also found in the testimony
and emails demonstrating that Apple’s competitors were
copying the claimed technology. See Maj. Op. 17. The
6 The Administrative Law Judge recognized the pa-
tented product’s marketplace success but found, among
other things, that industry praise, attempts to copy, and
commercial success could not overcome the combination of
SmartSkin and Rekimoto ’033. J.A. 216−17. The ITC
adopted the Administrative Law Judge’s reasoning.
16 APPLE INC. v. ITC
reported success of the patented feature suggests that
Apple’s competitors were compelled to ride Apple’s coat
tails by expending significant effort to determine how the
patentee’s product worked and then altering their own
products to conform to the reverse engineered feature.
Power Integrations, 711 F.3d at 1369; Akamai Tech. Inc.
v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186,
1196 (Fed. Cir. 2003). The ITC failed to address the
extent to which copying supports Apple’s contention that
the claimed touchscreen was integral to its market domi-
nance. These efforts to copy Apple’s claimed technology
also weigh against a conclusion of obviousness. See Crocs,
Inc. v. ITC, 598 F.3d 1294, 1311 (Fed. Cir. 2010) (“Copy-
ing may indeed be another form of flattering praise for
inventive features.”).
The evidence in this record is a prime example of why
we have repeatedly cautioned against assigning inade-
quate priority to “secondary considerations.” While I
agree with the majority’s analysis, I discern the record to
contain significant objective indicia of innovation, which
in my view, is “the most probative evidence of nonobvi-
ousness.” Custom Accessories, 807 F.3d at 960.
* * *
Based on the extensive record in this case, I believe
Apple overcame significant complexities to produce a
touchscreen with desirable optical properties that accu-
rately detected multiple simultaneous touches. Ultimate-
ly, it was Apple—not the prior art inventors—who
identified the problem, disclosed the steps explaining how
the problem was solved, and then created a marketplace
for its contribution. By incorporating the invention in the
patented products of the iPhone and iPad, Apple’s efforts
endowed users around the world with better access to
information, more efficient communication, and unparal-
leled convenience to organize life on the mobile.
APPLE INC. v. ITC 17
For the foregoing reasons, I would reverse the finding
that Perski ’808 provides adequate written description
support for Perski ’455 and remand the anticipation case
for additional proceedings as to Apple’s conception date,
and whether, based on that date, Perski ’455 qualified as
§ 102(e) prior art. I also would recognize Apple’s technical
advances over the SmartSkin reference and find evidence
of industry praise, copying, and commercial success
dispositive indicators that Apple’s claims were innovative
and nonobvious. Accordingly, I respectfully dissent.