In the Apple v. Motorola lawsuit in the Northern District of Illinois, the parties have filed a slew of motions this week, mostly motions in limine (exclusion of evidence from next month's trial). Most of those are sealed. Today they filed a joint motion under which Apple drops, unless an appeal results in a more favorable claim construction, three dependent claims from U.S. Patent No. 7,479,949 on a "touch screen device, method, and graphical user interface for determining commands by applying heuristics" -- I usually refer to this as the "touchscreen heuristics patent", and if you hear people talk about "the Steve Jobs patent", they mean this one most of the time (though he's listed as an inventor on roughly 300 patents, mostly design patents).
Apple is still asserting the main claim -- independent claim 1 -- but that's now the only claim-in-suit from this patent. The withdrawn claims are claim 2 (dependent on claim 1), claim 9 (dependent on claim 1), and claim 10 (dependent on claim 9 and, therefore, also on claim 1).
If a dependent claim depends on another claim, this means it incorporates the limitations (criteria, elements) of the parent claim -- so it is narrower by definition. The narrower a claim is, the less likely it is to be infringed, and the easier it is to work around, but the harder it is to invalidate. The "sweet spot" is where a claim is just broad enough to be infringed and hard to work around, but not so broad that it can be invalidated for obviousness, lack of novelty, or indefiniteness. Therefore, a dependent claim can be more successful, but if the claim it's derived from is proven valid, then the parent claim is the more powerful weapon.
In March, Judge Posner entered a claim construction order (which I discussed in detail) relating to five terms (in addition to two others he previously interpreted),
the first three of which appear in claim 1 (and, by extension, claims 2 through 10, all of which are derived from claim 1, directly or indirectly),
the fourth one of which appears only in claim 2, and
the fifth one of which appears only in claim 10.
All five terms (types of gestures) survived that claim construction order, but reduced the scope of the third and the fourth gesture.
Following today's stipulation, only the gestures corresponding to the first three terms (for details, please look up my discussion of the claim construction order) matter anymore, and the third one -- a next-item (page-flipping-like) gesture -- will also be of rather limited use to Apple at the upcoming trial. Motorola previously moved for summary judgment of non-infringement with respect to the "next item" heuristic. On April 27, Judge Posner largely granted that motion. (I promised I would talk about it here after looking at it more closely.) Apple's infringement allegations for the "next item" heuristic related to six applications that can run on Motorola Android devices: "Gallery", "Music", "Browser" (specifically, the Browser application's bookmark feature), "YouTube", "Google Image Search", and "Kindle Reader". The first four of those apps were deemed not to infringe. To arrive at a different result would have required, in Judge Posner's opinion, a rather ambitious claim construction, according to which "a tap is a zero-length swipe", which he considered "silly" because "[i]t's like saying that a point is a zero-length line". For the Google Image Search, Judge Posner wasn't convinced of "Motorola knew (or was reckless in failing to learn) that switching to a next item by means of a finger tap in the Google search engine might be held (in combination with the other limitations of claim 1) to infringe the '949 patent" (the order doesn't say it, but Apple would have to sue Google directly over it or, which it wouldn't do, sue end users). For the Kindle Reader, he determined that there's no liability on Motorola's part if users install it (the order doesn't say it, but Apple would have to sue Amazon or, which it wouldn't do, end users), but to the extent the Kindle Reader app is pre-installed on Motorola devices, "Motorola itself cannot elude a finding of infringement by not being the author of the application, because by installing the application onto its devices it has made and then sold an infringing device".
As for the claims dropped pursuant to today's stipulation, claim 2 relates to the distinction between operations on an entire page versus a frame, and claims 9 and 10 relate to a web browser application and photo album.
The gestures which construed terms 1 and 2 (found in claim 1) relate to and which are still in play relate to he distinction between a diagonal movement ("two-dimensional" meaning that there's a movement in the X as well as the Y direction) and a vertical scrolling swipe based on an initial angle.
The remaining scope of this patent for purposes of this litigation is still a serious threat to Motorola's Android-based devices.
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