Software Patents: HTC Europe Co Ltd v Apple Inc

In HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (3 May 2013), the Court of Appeal (Lord Justices Richards, Lewison and Kitchin) ventured again into what Lord Justice Lewison described at paragraph [140] of the Court's judgment as "the minefield of the exclusion from patentability of computer programs 'as such'".

The Appeal
This was an appeal from the judgment of Mr Justice Floyd (as he then was) in HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) (4 July 2012). The judge found that two of the claims of one of Apple's patents were invalid because they related to computer programs as such and one of those claims was also invalid for obviousness. He also found that all the claims of another patent were invalid either for want of novelty or obviousness.  The first of those patents, European patent number 2,098.948, related to computer devices with touch sensitive screens that are capable of responding to more than one touch at a time. The second, European patent number 1,964,022, to ways of unlocking computer devices with touch sensitive screens.   After the trial Apple and HTC settled their dispute and HTC took no further part in these proceedings.  However, Apple invited the Comptroller to appear on the appeal "to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register."

Computer Programs "as such"
Art 52 (2) (c) of the European Patent Convention provides that programs for computers shall not be regarded as inventions. However, art 52 (3) adds that art 52 (2) shall "exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such."

In Aerotel Ltd. v Telco Holdings Ltd and Others  [2007] Bus LR 634, [2006] EWCA Civ 1371, [2007] RPC 7, [2006] Info TLR 215, [2007] BusLR 634, [2007] 1 All ER 225 the Court of Appeal propounded the following four step approach to determining whether a software implemented invention was a computer program as such:
"i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether it falls solely within the excluded subject matter;
iv) check whether the actual or alleged contribution is actually technical in nature."
(Simon Hart, who was involved in Macrossan which has heard at the same time contributed this article "Patents: Re Macrossan's Application" 5 Apr 2006). The Court of Appeal's approach was criticized by the Technical Board of Appeal in Duns Licensing Associates LP, T 0154/04 - 3.5.01 though the Court of Appeal concluded in Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, [2009] Bus LR 607 that most of the decisions of the Board and the English Courts were reconcilable (see my article "Software Patents: Here we go again" 9 Oct 2009). 

The first of those steps is straightforward but the second and third tend to elide and the fourth acts as a check on the previous two.   It follows that in practice the question whether a software implemented invention is patentable boils down to the question: "has the invention made a technical contribution to the known art?". Between paragraphs [45] and [49] Lord Justice Kitchin identified the following pointers:
"First, it is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts bearing in mind the guidance given by the Court of Appeal in Merrill Lynch and Gale and by the Boards of Appeal in Case T 0208/84 Vicom Systems Inc [1987] OJ EPO 14, [1987] 2 EPOR 74, Case T 06/83 IBM Corporation/Data processing network [1990] OJ EPO 5, [1990] EPOR 91 and Case T 115/85 IBM Corporation/Computer-related invention [1990] EPOR 107.
[46] Second, the fact that improvements are made to the software programmed into the computer rather than hardware forming part of the computer does not make a difference. As I have said, the analysis must be carried out as a matter of substance not form.
[47] Third, the exclusions operate cumulatively. So, for example, the invention in Gale related to a new way of calculating a square root of a number with the aid of a computer and Mr Gale sought to claim it as a ROM in which his program was stored. This was not permissible. The incorporation of the program in a ROM did not alter its nature: it was still a computer program (excluded matter) incorporating a mathematical method (also excluded matter). So also the invention in Macrossan related to a way of making company formation documents and Mr Macrossan sought to claim it as a method using a data processing system. This was not permissible either: it was a computer program (excluded matter) for carrying out a method for doing business (also excluded matter).
[48] Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution lies in excluded matter then it is not patentable.
[49] Fifth, and conversely, it is also helpful to consider whether the invention may be regarded as solving a problem which is essentially technical, and that is so whether that problem lies inside or outside the computer. An invention which solves a technical problem within the computer will have a relevant technical effect in that it will make the computer, as a computer, an improved device, for example by increasing its speed. An invention which solves a technical problem outside the computer will also have a relevant technical effect, for example by controlling an improved technical process. In either case it will not be excluded by Art 52 as relating to a computer program as such."
At paragraph [143] of his judgment, Lord Justice Lewison regretted that because the apparently simple words of art 52 (2) and (3) 
"both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to understand them. However we are so far down that road that "returning were as tedious as go o'er". Instead we are now engaged on a search for a "technical contribution" or a "technical effect". Instead of arguing about what the legislation means, we argue about what the gloss means."
He concluded at [147]:
"So the upshot is that we now ignore the words "computer program … as such" and instead concentrate on whether there is a technical contribution. It is, if I may say so, 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 I buy a software package that malfunctions the software house will often offer me "technical support". But that is clearly not enough for the software to qualify as making a "technical contribution". In Symbian this court declined to provide a definition of the right kind of technical effect; but instead provided a recommended reading list."
From that "reading list" Lord Justice Lewison had distilled the following signposts as to what constituted a "technical effect" in AT&T Knowledge Ventures LP, [2009] EWHC 343 (Pat), [2009] Bus LR D51, [2009] FSR 19:
"i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new way;
iv) whether there is an increase in the speed or reliability of the computer;
v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented."
In this appeal, he substituted 
"It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer."
which had been suggested by Mr Justice Mann in Gemstar-Tv Guide International Inc and Others v Virgin Media Ltd and Another  [2009] EWHC 3068 (Ch), [2010] RPC 10 for his own formulation in paragraph (iv),   Lord Justice Kitchin adopted Lord Justice Lewison's revised signposts at paragraph [51] of his judgment.

The Lords Justices applied that analysis to European patent number 2,098.948 did make a technical contribution to the art and that its contribution did not lie in excluded matter.

Lord Justice Kitchin referred to the Court of Appeal's previous decision in Pozzoli Spa v BDMO SA and another  [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37:
"(1)(a) Identify the notional 'person skilled in the art'.
      (b) Identify the relevant common general knowledge of that person.
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it.
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed.
(4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
The Court considered whether the trial judge had followed that approach and found that he had.   Thus, the appeal against obviousness failed in respect of both patents.

Further Information
The computer program exclusion is one of my special interests and has been for nearly 30 years, If anyone wants to discuss this case or any of the issues please call me on +44 (0)20 7404 5252 or contact me through Facebook, Linkedin, twitter, Xing, or my contact page.


drllau said…
I think part of the problem with software (apart from boundary ambiguity) is that the statutory protection is a fixed 20 years whereas the change in art may be incremental (or foreseeable). Society accepts a tradeoff, in return for say several years of research (cf not coding development) it grants an exclusion to discourage trade secrets. Whereas the economic life of that incremental innovation may well be much shorter. So given the gap between statutory protection and economic lifespan, the perverse incentive is to include the minimum to gain that 20 year protection as the negative costs are not bourne by the patent holder (aka pulling up ladder after you irregardless of height)

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