Posted: January 21st, 2020
Conversant Wireless Licensing S.A.R.L. v Apple Retail UK Limited & Ors  EWHC 3266 (Pat)
The Patents Court has handed down a decision revoking Conversant Wireless Licensing S.A.R.L. (“Conversant”)’s United Kingdom patent GB 2 365 712 entitled “Computing device with improved user interface for applications” (the “Patent”) on the basis that it was obvious. The judgment provides some useful guidance on how to identify the skilled person in circumstances where a patent is subject to claim amendments.
Although the specification and unamended claim 1 had referred to “computing devices” in general, claim 1 of the Patent (as unconditionally amended) claimed a “smart phone” with a display screen that had, inter alia, been configured to display so-called “application summary windows” in addition to a main hierarchical menu. An “application summary window” displays a list of more than one commonly used function within an application (for example, “Create a new Mail message”) or stores data commonly accessed for that function (for example, “1 unread new Mail message”) or both.
The action started with a claim for infringement brought by Conversant against various companies in the Apple group (together “Apple”) in relation to iPhones running various versions of the iOS operating system and two aspects of the user interface (known as “Widgets” and “Home Screen Quick Action Window”). Apple denied infringement and counterclaimed for invalidity on a number of different grounds. By the time the case reached trial, Apple had admitted that the iPhone was a “smart phone” within the meaning of claim 1 (but not that the iPhone infringed the other integers of claim 1) and Apple’s invalidity case had narrowed to allegations of obviousness based on two pieces of prior art, Agrevo-obviousness and added matter.
The skilled person
At trial, a key issue for the Judge, Mr Justice Birss, was how to define the skilled person. Whilst Conversant contended that the skilled person was a user interface designer specifically for mobile phones, Apple contended that the skilled person was a user interface designer with knowledge and experience of computing devices more generally (including, but not limited to, mobile devices such as Personal Digital Assistants). Noting that a patent is taken to be directed to those with a practical interest in its subject matter (i.e. the invention as defined in the claims), the Judge held that the identity of the notional skilled person may change as a result of a claim amendment. Applying this principle to the facts of the case, he rejected both Conversant and Apple’s positions and found the skilled person to be someone with a practical interest in smart phones.
Having identified the skilled person in this way, Mr Justice Birss held the Patent to be obvious over the prior art: a 1994 manual for IBM and Bell South’s Simon cellular phone device. The Simon device was a smart phone within the meaning of amended claim 1 and it was configured to display an application summary window which presents both stored data and commonly used functions at the same time. In circumstances where the skilled person would be interested in the way the screen presents functions and data together, Mr Justice Birss found that the invention claimed in amended claim 1 (and claim 2) would have been obvious to the skilled person.
Apple’s other validity attacks failed. Had the Patent been valid, it would have been infringed.
A copy of the judgment can be found here.
Headnote: Olivia Henry and Rachel Mumby, Bristows LLP