Slide to Unlock: Apple-samsung, Alice, and the Need for Clarity in Assessing Patent-eligibility Under Section 101 for Touchscreen Software Patents

• Publication year: 2015

Slide to Unlock: Apple-Samsung, Alice, and the Need for Clarity in Assessing Patent-Eligibility Under Section 101 for Touchscreen Software Patents

Tucker J. McKinley

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McKinley: Slide to Unlock: Apple-Samsung, Alice, and the Need for Clarity i

SLIDE TO UNLOCK: APPLE-SAMSUNG, ALICE, AND THE NEED FOR CLARITY IN ASSESSING PATENT-ELIGIBILITY UNDER SECTION 101 FOR TOUCHSCREEN SOFTWARE PATENTS

Tucker J. McKinley^*

Table of Contents

I. INTRODUCTION..........................................................................................412

II. BACKGROUND.............................................................................................415

A. HISTORY OF SECTION 101 AND THE PATENTABLE SUBJECT MATTER REQUIREMENT.....................................................................416
B. ALICE CORP. V. CLS BANK..................................................................419
C. A BRIEF BACKGROUND OF THE APPLE V. SAMSUNG LITIGATION..........................................................................................421

III. ANALYSIS...........................................................................................................424

A. THE METHOD CLAIMED IN THE '721 PATENT REPRESENTS AN ABSTRACT IDEA....................................................................................424
B. THE "SLIDE-TO-UNLOCK" PATENT DOES NOT CONTAIN A SUFFICIENTLY "INVENTIVE CONCEPT" TO WARRANT PATENT ELIGIBILITY UNDER SECTION 101....................................427
C. A WORKABLE JUDICIAL TEST TO ANALYZE SECTION 101 CLAIMS OF TOUCHSCREEN SOFTWARE PATENTS...........................430

IV. CONCLUSION...............................................................................................432

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I. Introduction

Over the last ten years, cell phone ownership in the United States has skyrocketed.¹ Inherent in this fact is the equally dramatic rise in the ownership of smartphones.² The effects of smartphones on modern society are wide ranging—socially, economically, and legally. Of particular interest for this Note, however, is the technology incorporated in one of the modern smartphone's most common features—the touchscreen and its associated software³ —and how patent law protects it.

Long a staple of science fiction, touchscreen technology has existed in some form since the 1960s. The first phone to make use of touchscreen technology was the IBM Simon—sometimes considered the world's first smartphone.⁴ The Simon incorporated software and technology now commonplace on today's phones—e-mail, calculator, etc.⁵

The Simon, along with subsequent innovations in touchscreen technology, paved the way towards the modern smartphone—most notably Apple's iPhone and other smartphones running the Android operating system. Both smartphones prominently feature a touchscreen based interface, where the software users almost exclusively operate the device by touching the screen with their fingers. As most current readers are well aware, Apple and Android based phones have battled for supremacy in the smartphone market.⁶

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Unsurprisingly, this battle has spread from the market to the courtroom. Both Apple and Samsung—the largest supplier of Android based smartphones—hold valuable patents protecting the technology utilized by their phones.⁷ At issue for this Note are those patents pertaining to the software for implementing the touchscreen. In particular, this Note will focus on the patent eligibility of Apple's "Slide-to-Unlock" patent.⁸

The subject of the "Slide-to-Unlock" patent is familiar to any user of an iPhone, iPad, or other touchscreen based device designed by Apple. When a user wishes to unlock a phone for use, he or she simply drags an image across the screen of the device.⁹ This concept—or similar implementations—are now commonplace on touchscreen devices.¹⁰ What many users may not know however, is that the patent behind this idea is at the center of a hundred million dollar verdict.¹¹

Since 2011, Apple and Samsung have been engaged in contentions litigation over a number of patent disputes.¹² The first round of litigation in the United States¹³ resulted in a jury verdict in Apple's favor with damages totaling over $1 billion.¹⁴

The "Slide-to-Unlock" patent became the subject of dispute in the second infringement suit filed by Apple in 2012.¹⁵ Apple alleged infringement of eight

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of its patents, the '721 (Slide-to-Unlock) patent among them.¹⁶ In its defense, Samsung had tried and failed on several occasions to invalidate the '721 patent.¹⁷ Critically, however—as this Note will later discuss—Samsung never raised a Section 101¹⁸ challenge to the "Slide-to-Unlock" patent.¹⁹ In early 2014, the jury returned a verdict in Apple's favor, finding Samsung had infringed several of Apple's patents and awarded Apple $120 million.²⁰

Not long after the jury verdict against Samsung, the Supreme Court announced its decision in Alice Corp. v. CLS Bank,²¹ a patent dispute concerning the Patent Act's subject matter requirement.²² In Alice, the Court invalidated a software patent for exchanging financial obligations as ineligible subject matter under Section 101.²³ Unfortunately for Samsung, this decision came too late to have a meaningful effect on its litigation with Apple.²⁴

Despite several recent rulings on what constitutes patentable subject matter, culminating in Alice, the contours of the Court's Section 101 jurisprudence—particularly as it pertains to "process[es]" (including software processes)—remain unclear.²⁵ The Court's failure to clearly establish the limits of patentable subject matter creates problems for all involved in the patent process—

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inventors, attorneys, and judges. As touchscreen software continues to surge in popularity, the confusion is only likely to grow.²⁶ Therefore, this Note aims to clarify many of these issues, and proposes a simple test for evaluating process claims under Section 101 in the touchscreen software context.

Part II of this Note describes the legal landscape for the "Slide-to-Unlock" patent, including a summary of the Court's patentable subject matter jurisprudence. More specifically, this Part details the patentable subject matter requirement set forth in 35 U.S.C. § 101 (2006), including the relevant case law, while then addressing the Alice decision. This Part then summarizes the litigation regarding the "Slide-to-Unlock" patent and details its history. Next, Part III of this Note uses the framework established by the Supreme Court in Alice and previous cases to analyze the "Slide-to-Unlock" patent under Section 101, concluding that it should have been invalidated as ineligible subject matter. Finally, this Note argues for the adoption of a more workable standard for touchscreen software patents under Section 101—namely a "stripping away" method—that simplifies the current analytical scheme while remaining consistent with the Court's precedent.

II. Background

The Constitution provides that Congress shall have the power "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."²⁷ This clause grants Congress the power to regulate patents in the United States. Accordingly, Congress has enacted a number of limitations on the eligibility of an invention for patent protection. First, Section 101 of the Patent Act describes what subject matter is eligible for patent protection: "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."²⁸ This seemingly straightforward section of the

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Patent Act has drawn an increasing amount of attention in recent years.²⁹ In addition, an invention must be new,³⁰ nonobvious³¹ and meet certain formalities to receive patent protection.³² Courts have clarified that the eligibility determination is separate and distinct from the latter requirements of patentability.³³

A. HISTORY OF SECTION 101 AND THE PATENTABLE SUBJECT MATTER REQUIREMENT

With respect to the patentable subject matter requirement, the Court has "held that [§ 101] contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."³⁴ Case law demonstrates that applying this general exception is often a difficult task. For example, the Supreme Court has had to determine whether industrial processes for curing rubber,³⁵ business methods for hedging risk,³⁶ processes for administering pharmaceuticals,³⁷ and DNA segments³⁸ constitute patentable subject matter under § 101.

In Diamond v. Diehr, the Court found that the claimed method—a computer-monitored process for properly curing raw, synthetic rubber—satisfied the subject matter requirement.³⁹ The Court noted that several steps of the process involved a mathematical equation—in itself not patentable—but reasoned that the patent did not seek to protect the equation, rather it sought to patent the process for curing rubber.⁴⁰ In reaching its conclusion, the Court contrasted the patent at issue in Diehr with a patent in an earlier case. Parker v. Flook.⁴¹ In

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Flook, the patent claimed a method for determining "alarm limits" based off a number of other known variables,⁴² which the Court invalidated because the patent attempted to protect the mathematical formula, rather than any process.⁴³

Between the court's decision in Diehr in 1981 and 2010, the lower courts assessed patentable subject matter using the so-called machine-or-transformation test.⁴⁴ The MOT test states that "an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article."⁴⁵ The MOT test helped simplify the difficulties of § 101 analysis, but its usefulness in modern...