Clash of the Smartphone Titans – Nokia vs. Apple
February 2, 2010 by Amanda Branch (IPilogue Editor)Amanda Branch is a J.D. Candidate at Osgoode Hall Law School, and is taking the Patent Law course.
Clashes between large companies are hardly uncommon, particularly when the salient issue concerns valuable intellectual property. Recently, Nokia has filed a lawsuit in the US against Apple claiming 10 alleged patent infringements involving wireless data, speed coding, security and encryption. Nokia is demanding back royalties on all iPhones sold since the launch in 2007, which could mean that Apple would have to pay Nokia anywhere from $200 million to $1 billion.
Nokia has invested approximately EUR 40 billion dollars in research and development over the past two decades and has agreements in place with 40 firms to allow them to use Nokia’s technology. Nokia says Apple has not signed such an agreement. Nokia has recently posted a quarterly loss, their first loss in over a decade, largely due to customers moving from Nokia models to the iPhone and Blackberry.
Some believe this lawsuit may be a desperate move made by Nokia in reaction to its loss of market share, with others going so far as to hypothesize that this lawsuit would not have been launched had Nokia been making better progress in the smartphone market. Conversely, it is argued the claim could have some merit to it as Nokia has many more patents than Apple, so it is possible that Apple, to some extent, has used some of Nokia’s patents. Similarly, others believe Apple may have a hard time defending their case, as they are a late entrant in the mobile phone market and it would be almost impossible to create a mobile phone without using Nokia’s patented technologies.
Although the case has been filed in a US court, for the purpose of this blog, I will consider the Canadian provisions as the Canadian Patent Act is the focus of Professor Mgbeoji’s Patent Law course. According to section 42 of the Act, the patentee is granted the “exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used”. As stated in the case of Whirlpool v. Camco, if any person, without the consent or permission of the patentee, does any of the exclusive rights granted by section 42, they have infringed the patent and are potentially liable to the patentee. Section 55(1) says that the infringer is liable to the patentee for all damage sustained by the patentee. Therefore, if Nokia is successful in proving that Apple has done something that only Nokia has the exclusive right to do, Apple will be liable for damages.
Much of the focus has been on Apple’s position in this lawsuit. Apple may be able to put forth a defence as allowed by section 59 of the Act. So far, Apple seems to be denying that they have infringed Nokia’s patents. This is certainly a defence, one in which Apple would have the burden of proof to show that the acts complained of did not infringe on Nokia’s patent, or that the scope of Nokia’s claims do not capture the alleged infringement. Apple could also argue they had Nokia’s consent to use the patents; however, given Nokia’s denial of such a licence, and Apple’s denial that they had used Nokia’s patents, this approach seems less likely. In Canada and the US, in order for an invention to be patented, it must be novel, non-obvious and useful, so a line a defence for Apple would be to attack the validity of the patents on the grounds that the invention is not “new”, that the invention is not “useful” or that the invention is “obvious” to a person skilled in the art. Attacking a patent on the grounds of novelty was an effective defence in the case of Gibney v. Ford Motor [52 C.P.R. 140 ] where it was held that the defendant did not infringe a patent because the patent was invalid on the grounds that it was not a “new” invention. Lastly, Apple could create a defence on the grounds that Nokia is not the person entitled to the patent, perhaps because they are not the true inventor (as was the case in 671905 Alberta Inc. v. Q’Max Solutions Inc.).
No matter what defence Apple chooses, it is expected that this case could go on for years with Apple putting forth a persistent and tenacious defence, as they take accusations of infringement very seriously. This case could get particularly complicated as the U.S. International Trade Commission has agreed to look into Nokia’s patent-infringement claims. Analysts argue that a licensing deal may be the best and quickest solution for both companies.
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As mentioned, Nokia is seeking damages against Apple for infringing seven of its patents. Among the seven patents included in the recent lawsuit is patent number 6,518,957, “Communications device with touch sensitive screen”(granted in 2003). The scope of Nokia’s patent is quite broad in this case and it encompasses a cell phone equipped with a touch screen device such that parts of its screen can become disabled as required. For instance, while talking on the cell phone, some portion of the screen becomes inoperable. The patent describes pretty much how any cell phone with a touch screen device works.
Given the broad language of the patent, if Nokia’s patent is held to be valid, then it seems to be clear that Apple has infringed Nokia’s patent. However, Apple may able to attack the validity of Nokia’s patent on the grounds of obviousness.
The Law
One of the requirements of patentability is that the subject matter of the alleged invention must not be obvious to a person skilled in the relevant art or science. This means that the alleged invention must embody ingenuity.
The popular definition or test of obviousness is whether a skilled but unimaginative technician would “have come without any difficulty to the solution taught by the patent.”(Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 at 294, Beecham Canada Ltd. v. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1 at 27). In determining whether the alleged invention was obvious, one needs to consider both the claim date and the filing date (Canadian Patent Act s. 28(3), Sharpe & Dohme Inc. v Boots Pure Drug Coy Ltd. (1928) 45 R.P.C. 153 at 163, Windsurfing Int. Inc. v. Trilantic Corp. (1986), 8 C.P.R. (3d) 241 (F.C.A.)). Furthermore, in addressing the question of obviousness the relevant group of people to consider is the specialized people skilled in the relevant art or science (equivalent to the reasonable person in tort, except that in patent law we do not consider the ordinary public). Following factors can guide us in determining whether the alleged invention is ingenuous (note that neither of the factors are conclusive):
– Does the invention introduce a new “technical effect”?
– Does the result of the invention “surprise” the skilled but unimaginative technician?
– Is the alleged invention novel and superior to what was available until then?
– Has it been widely used in preference to alternative devices?
– Have competitors or experts in the field ever thought of anything like it?
– Did amazement follow its public disclosure?
– Is the invention a commercial success?
Applying the law to this case
Prior Art
In order to be able to address the factors raised above, one needs to have an understanding of the prior art and the available technologies at the time of the claim. Nokia filed for patent in August 2000. Thus, a literature review till August 2000 is provided in this post.
The use of touch sensitive control devices in early synthesizer and electronic music instrument makers outdates the age of PCs. The first breakthrough regarding the use of touch screen devices in the computer world was in 1972, when IBM introduced its first touch screen computer, PLATO IV, which was used for educational purposes. The device had only single-touch capability and was not pressure sensitive. The first multi-touch system was developed at the University of Toronto in 1982. The system used cameras to detect users touch input and was pressure sensitive to some extent. The technology was further developed throughout the century and multi-touch desktops and other similar devices were introduced. (For a brief history of multi-touch screen development please refer to http://www.billbuxton.com/multitouchOverview.html).
In 1993, IBM and Bell South released the Simon Personal Communicator (smart phone). Simon, like iPhone and many other touch-driven cell phones, had a touch-screen driven “soft machine” user interface. Although, it was a single touch device, it did include many aspects of the current touch-driven mobile devices. However, Simon had some limitations. For instance, it was difficult to view the data display while communicating over the phone. Furthermore, it was relatively heavy due to its large LCD display and also required high power to operate.
Ericsson R380 was released in 2000. It was the first touch screen phone having PDA functionalities. This smart phone allowed users to access their emails, it had an address book, a calendar, a note pad and worked as a personal organizer. It was also capable of hand written recognition and could connect to the Internet using WAP (Wireless Application Protocol).
At the same time, on the academic front, researchers were developing different ways of interacting with touch screen devices for instance using physical objects to control, move, and rotate virtual objects on the computer (1995). T3 – developed at University of Toronto – although a tablet device, it used many of interactions techniques that are used in touch screen devices today, such as zooming and scaling (1997). Fingerworks, also made a range of touch tablets with multi-touch sensing capabilities. The products were based on Wayne Westerman’s thesis (1999): Hand Tracking,Finger Identification, and Chordic Manipulation on a Multi-Touch Surface. U of Delaware PhD Dissertation: http://www.ee.udel.edu/~westerma/main.pdf. Note that Fingerworks was acquired by Apple in 2005. Furthermore, Myers et al., in their paper “Past, Present, and Future of User Interface Software Tools” had already predicted the possibility of using recognition based user interfaces in future (Published in March 2000).
Thus, it seems to me that Nokia’s patent regarding cell phone with touch screen device did not necessarily introduce a new “technical effect” and it seems that experts in the field had already thought of this technology, since Simon and Ericsson R380 both had touch screen capabilities. Furthermore, researchers in the academia were already experimenting human interactions with touch screen devices. For the same reasons, arguably, the invention does not “surprise” the skilled but unimaginative technician. Given the very general wording of Nokia’s patent it is quite hard to say whether the invention was superior to what was available until then (Nokia’s patent simply introduces a cell phone that has multi-touch capabilities). Thus, arguably, Apple may be able to invalidate Nokia’s 6,518,957 patent. Even if successful in this claim, however, I assume Apple would have a hard time invalidating all of Nokia’s patents included in the lawsuit.