HTC v. Apple, [2013] EWCA Civ 451 (Court of Appeals of England and Wales) 

Per Kitchin L.J. (Richards L.J. concurring):

This appeal was concerned with only two patents owned by Apple, EP2098948 (the "948 patent") and EP1964022 (the "022 patent").

The 948 patent relates to computer devices with touch sensitive screens which are capable of responding to more than one touch at a time. The trial judge found claims 1 and 2 were invalid because they related to computer programs as such and so claimed excluded subject matter. He also found claim 1 (but not claim 2) invalid for obviousness in the light of the common general knowledge. Apple appealed against both of these findings.

The 022 patent relates to ways of unlocking computer devices with touch sensitive screens. Various claims were in issue and the trial judge found all of them invalid, some for lack of novelty and others
for obviousness. Apple appeals only against the finding that claims 5 and 17 were invalid for obviousness in the light of an earlier device.

The appeal is dismissed in relation to claim 1 of the 948 patent, which while drawn to patentable subject matter, is invalid for obviousness.

The appeal is allowed in relation to claim 2 of the 948 patent, which is drawn to patentable subject matter.

The appeal is dismissed in relation to claims 5 and 17 of the 022 patent.

The 948 Patent

Claim 1 (with reference numerals added by the trial judge) reads as follows:

(i) A method for handling touch events at a multi-touch device, comprising:

(ii) displaying one or more views;

(iii) executing one or more software elements, each software element being associated with a
particular view;

(iv) associating a multi-touch flag or an exclusive touch flag with each view, said multi-touch flag indicating whether a particular view is allowed to receive multiple simultaneous touches and said exclusive touch flag indicating whether a particular view allows other views to receive touch events while the particular view is receiving a touch event;

(v) receiving one or more touches at the one or more views; and

(vi) selectively sending one or more touch events, each touch event describing a received touch,
to one or more of the software elements associated with the one or more views at which a touch was received based on the values of the multi- touch and exclusive touch flags.

Claim 2 reads: the method of claim 1, further comprising: if a multi-touch flag is associated with a particular view, allowing other touch events contemporaneous with a touch event received at the
particular view to be sent to software elements associated with the other views.

The 948 Patent – Computer Program As Such

The invention does make a technical contribution to the art and its contribution does not lie in excluded matter.

The trial judge took his eye off the ball in focussing on the fact that the invention was implemented in software and in so doing failed to look at the issue before him as a matter of substance not form. Had he done so he would have found that the problem and its solution are essentially technical in nature and so not excluded from patentability.

The Court applied Symbian and AT&T, and construed the patent as follows:

The problem which the patent addresses, namely how to deal with multiple simultaneous touches on one of the new multi-touch devices, is essentially technical. The solution to this problem lies in a method of dividing up the screen of such a device into views and configuring each view as a multi-touch view or a single-touch view using flags with a specific functionality. It causes the device to operate in a new and improved way and it presents an improved interface to application software writers.

A practical benefit of the invention is that it presents a new and improved interface to application
programmers, including third party programmers, and makes it easier for them to write application software for the multi-touch device. The device is, in a real practical sense, an improved device. This is not because it now runs different application programs but because it is, as a device, easier for programmers to use. Once again, this emphasizes the technical nature of the invention.

The 948 patent – Obviousness

The Court dismissed the appeal against the finding of obviousness of claim 1.

The Court expressed its displeasure at the way in which one of the experts approached his consideration of what, if any, step it was obvious for the skilled team to take in light of the common general knowledge. In particular, the Court stated that it is undesirable that an expert is asked to describe how one could arrive at the invention.

The 022 Patent – Obviousness

The Court dismissed the appeal in relation to obviousness of the claims, and held that the trial
judge had an evidential basis for making his findings. 

Per Lewison L.J. (concurring in the result):

The subject matter of the 948 patent is patentable. Claim 1 of the 948 patent succumbed to an obviousness attack; but claim 2 is valid.

Ignoring the statutory words "computer program … as such" and instead concentrating on whether there is a technical contribution is a singularly unhelpful test because the interaction between hardware and software in a computer is inherently "technical" in the ordinary sense of the word. If one buys a software package that malfunctions, the software house will often offer "technical support". But that is clearly not enough for the software to qualify as making a "technical contribution".

Since each case must be determined by reference to its particular facts and features the Court needs to begin by asking: what does the computer program in this case actually contribute? In a nutshell the answer is that it makes it easier to write programs for applications to be run on the device that contains it. In other words, it makes the device "more programmable". The Court agreed that writing software is not a "computer program as such", although the product may be. The trial judge erred in holding that the contribution lies solely in excluded matter.