In Smartphone Battle Between Apple and Motorola, U.S. Appellate Court Invalidates Apple Patent Claims Based On Israeli Developed Technology

Authored by Jeffrey A. Berkowitz

The U.S. Court of Appeals for the Federal Circuit has invalidated key claims of an Apple patent covering smartphone touchscreen technology based on a patent held by N-trig, an Israeli tech company. Apple sued Motorola at the U.S. International Trade Commission (ITC) seeking an order precluding Motorola from importing into the United States smartphones allegedly infringing two of Apple's patents, U.S. Patent Nos. 7,663,607 and 7,812,828. The ITC found that asserted claims of Apple's '607 patent were invalid and that Motorola did not infringe the '828 patent. Apple appealed to the Federal Circuit, an appellate court that considers appeals from the ITC. The Federal Circuit found that the ITC made certain legal errors that required the case to be remanded to the ITC for reconsideration. However, and significant for the Israeli tech company N-trig, the Federal Circuit also found that key claims of Apple's '607 patent were invalid in light of one of N-trig's U.S. patents.

Apple's '607 patent discloses a touchscreen with a transparent capacitive sensing medium that can detect multiple touches at once. Motorola argued that Apple's '607 patent was invalid because N-trig invented it before Apple. Motorola pointed to a patent owned by N-trig filed on January 15, 2004 (U.S. Patent No. 7,372,455) and a provisional patent application filed by N-trig on February 10, 2003. Apple's '607 patent was filed on May 6, 2004, after N-trig's patent application was filed, but Apple argued that it conceived of the invention described in its patent before January 15, 2004. Because Apple's patent application was filed before the first inventor-to-file system went into effect in the U.S., Apple's argument would have been tenable if it established that N-trig's provisional application, filed before Apple's alleged date of conception, did not enable the invention.

The Federal Circuit rejected Apple's argument, determining that N-trig's provisional application enabled the multi-touch touchscreen technology. The Federal Circuit found that N-trig's provisional application and patent both "disclosed the 'optimal approach' . . . to achieve the right balance of speed and accuracy" to remedy the problem of inaccuracy when detecting multiple simultaneous touches on a touchscreen. Moreover, the Federal Circuit found that "the scanning algorithm disclosed in [Apple's] '607 patent is very similar to the 'faster approach' disclosed in [N-trig's patent]." The Federal Circuit ultimately held that N-trig's patent, in light of its claim to the provisional application, anticipated, and thus invalidated, several claims in Apple's '607 patent.

It remains to be seen whether Apple will ultimately prevail on the issues that the Federal Circuit remanded for the ITC to consider. However, if not for N-trig's innovations and early decision to protect its innovations, Apple's key claims likely would have survived Motorola's challenge and Motorola might have faced a ban on importing infringing smart phones into the United States.

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