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Law Lessons: How Not To Owe Apple £90m For Patent Infringement

Kaya Elkiner, head of patents at Ashfords LLP, takes us through the intricacies of intellectual property and what it could mean for your business

Apple recently celebrated a victory over Samsung in the US. After a series of court actions and appeals, the US Supreme Court finally turned down Samsung’s latest appeal to the ruling that was delivered in 2014 which declared that Samsung must pay $120 million (£90m) to Apple for the infringement of Apple’s patents, including the well-known “slide to unlock” patent.

This could spark a worry for many technology businesses that are developing graphical user interfaces (GUIs) and other computer-implemented technology.

Patent infringement liability can potentially destroy a business, and the most uncomfortable aspect is that it is possible to unknowingly infringe a patent.

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Patently bad

Even if the idea that leads to infringement was conceived independently, this is not a defence, and a prior-lodged patent application gives the patent holder the right to take even “innocent” infringers to court.

Whilst this may seem unfair to many, there are a number of factors which should be borne in mind.

Firstly, patent laws are territorial. A US patent only has effect in the US. Patents must be applied for and enforced independently in other countries, and the outcomes aren’t always the same. Notably, US patent laws are generally considered to be one of the most liberal and patent-friendly in the world for computer-implemented inventions.

In contrast, European patent laws are more stringent about what can be patented. This should give technology businesses that are based in the UK and Europe some reassurances that they are less likely to be at the receiving end of a successful patent infringement action.

It is interesting to note that EP1964022 – the European equivalent of Apple’s US “slide-to-unlock” patent was granted, and validated in the UK, but Apple’s efforts to enforce it in the UK have not been very successful, with the patent being revoked in 2012.

Secondly, when it comes to patent rights, the details are all-important. The Claims section of a patent specification must be closely analysed to determine the scope of protection the patent confers to its owner.

For example, “Slide-to-Unlock” is a convenient shorthand for the technology, but before it is possible to determine whether there is patent infringement of this technology, the features and limitations of the Claims must be examined. Doing this will reveal ways to avoid infringement of the patent.

For example, the main Claim of Apple’s granted European patent is characterised by: “…moving an unlock image along a predefined displayed path…” Thus, if an unlocking interface doesn’t display a path, it escapes infringement of this patent. This detail has been used by many of Apple’s rivals to design GUI workarounds.

Thirdly, there is a huge difference between a patent and a patent application. The latter cannot be enforced, and it can take many years, and a lot of amendment and restriction to the Claims of a patent application before a patent is granted. Thus when analysing third party patent rights, it is key to ensure that it is a published patent (not a patent application) that is being looked at.

Peace in our time?

Fourthly, the burden of monitoring for infringement must be taken up by the patent holder. This means that many patent holders do not actively seek out infringers, and so it is often only by chance that patent infringements are discovered.

Additionally, as patent infringement challenges can be costly to launch, most patent holders are reluctant about asserting their patents against anyone that isn’t a direct threat.

Thus, whilst it is possible to be infringing many different patents, the likelihood of being sued by a patent holder could, in fact, be very small. This is mainly governed by how visible the offending technology is to that patent holder.

If a business has few hostile competitors, maintains a low-profile in the marketplace and has many different and easily-adaptable products, then the risk is low. On the other hand, if a technology company is planning to make a dramatic entry to the marketplace across multiple jurisdictions with a core disruptive product, then its patent risks are higher.

One strategy used for companies having this profile is to seek patent rights themselves for use as a bargaining chip during commercial negotiations. Cross-licensing deals are common where opposing companies each have an effective arsenal of patents.

In the latest case of Apple vs Samsung, the choice was made to fight, and Apple has won the latest round. However, the smartphone patent wars are far from over.

Kaya possesses both an Apple and a Samsung smartphone, and says he loves them both equally. He is Head of Patents at UK law firm, Ashfords LLP and specialises in computer-implemented technology.

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