Htc Europe Company Ltd (Appellant in action 2043 (the '022 Patent) v Apple Inc. (a company incorporated under the laws of the State of California) (Respondent in action 2043 (the '022 Patent)

JurisdictionEngland & Wales
JudgeLord Justice Kitchin,Lord Justice Lewison,Lord Justice Richards
Judgment Date03 May 2013
Neutral Citation[2013] EWCA Civ 451
Docket NumberCase No: A3/2012/2043 & 2044
CourtCourt of Appeal (Civil Division)
Date03 May 2013

[2013] EWCA Civ 451




The Hon Mr Justice Floyd

[2012] EWHC 1789 (Pat)

Royal Courts of Justice

Strand, London, WC2A 2LL


Lord Justice Richards

Lord Justice Lewison


Lord Justice Kitchin

Case No: A3/2012/2043 & 2044

Htc Europe Co Ltd
Appellant in action 2043 (the '022 Patent)
Apple Inc (a company incorporated under the laws of the State of California)
Respondent in action 2043 (the '022 Patent)
And Between
Apple Inc (a company incorporated under the laws of the State of California)
Appellant in action 2044 (the '948 Patent)
Htc Corporation (a company incorporated under the laws of the Republic of China)
Respondent in action 2044 (the '948 Patent)

Mr Guy Burkill QC and Mr Joe Delaney (instructed by Freshfields Bruckhaus Deringer LLP) appeared for Apple Inc

Dr Justin Turner QC (instructed by the Treasury Solicitor) appeared for the Comptroller-General of Patents

Hearing dates: 12/13 March 2013

Approved Judgment

Lord Justice Kitchin



This appeal concerns a judgment of Floyd J dated 4 July 2012 and his consequential order following the trial of four actions between HTC Europe Co Ltd and HTC Corporation (together "HTC") and Apple Inc ("Apple"). The actions involved four patents owned by Apple but on this appeal, brought with the permission of the judge, we are concerned with only two of them, namely European Patents No. 2 098 948 (the "948 patent") and No. 1 964 022 (the "022 patent").


The 948 patent relates to computer devices with touch sensitive screens which are capable of responding to more than one touch at a time. The judge found claims 1 and 2 were invalid because they related to computer programs as such. He also found claim 1 (but not claim 2) invalid for obviousness in the light of the common general knowledge. Apple appeals against both of these findings.


The 022 patent relates to ways of unlocking computer devices with touch sensitive screens. Various claims were in issue and the judge found all of them invalid, some for lack of novelty and others for obviousness. Apple appeals only against the finding that claims 5 and 17 were invalid for obviousness in the light of an earlier device referred to as the "Neonode".


Apple was also granted permission to appeal against the judge's findings of non infringement of claims 1 and 2 of the 948 patent. However, Apple and HTC have agreed to settle their differences and, as a result, HTC has not appeared on this appeal and has no interest in its outcome. The appeal against the finding of non infringement is therefore not pursued. Nevertheless, Apple wishes to establish that the claims of its patents to which I have referred are valid and, in accordance with the guidance given by this court in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] EWCA Civ 185; [2006] RPC 26 and, more recently, in Apimed Medical Honey Ltd v Brightwake Ltd [2012] EWCA Civ 5, the Comptroller was invited to consider whether he wished to appear on the appeal on the basis that his costs would be paid by Apple. The Comptroller duly indicated that he did indeed wish to appear and has been represented by Mr Justin Turner QC. As explained in Apimed, the Comptroller's role on such an appeal is to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register. With this in mind, Mr Turner has assisted us by meeting criticisms of the judge's reasoning and drawing to our attention materials relevant to the judge's conclusions, while maintaining a balanced view consistent with his position. I should also note that Apple's solicitors have properly and helpfully assisted the Comptroller to perform this important task by providing to him copies of the relevant documents.


Accordingly, the issues which arise on the appeal are whether the judge fell into error in concluding that:

(i) claims 1 and 2 of the 948 patent are invalid because they relate to computer programs as such and so claim excluded subject matter;

(ii) claim 1 of the 948 patent is invalid for obviousness in the light of the common general knowledge;

(iii) claims 5 and 17 of the 022 patent are invalid for obviousness in the light of the Neonode.

The 948 patent


The 948 patent is entitled "Touch Event Model" and has a priority date of 4 March 2008. There was no dispute that it is addressed to a notional skilled but uninventive team working in industry in the development of system software of a graphical user interface ("GUI") for a multi-touch device. As the judge held, the team would be concerned with the development of products rather than academic research and would include someone with expertise in software engineering and someone with experience of implementing GUIs.


Each side therefore called an expert witness to assist the judge as to the knowledge and attitudes of such a team. I must say a little about them because the judge's findings on the issue of obviousness were founded on the evidence they gave. Apple called Dr Brad Karp, a Reader in Computer Systems and Networks and Head of the Networks Research Group in the Department of Computer Science at University College London. The judge rejected an attack on Dr Karp's objectivity, noting that he was a cautious witness who chose his words with care. The judge also accepted that Dr Karp was a knowledgeable computer scientist. The judge considered, however, that Dr Karp's expertise lay primarily in the field of computer networks; he had never been involved in writing system software for a GUI and his experience of GUIs and their toolkits was simply as a user. As a result, he was not well equipped to assist the court as to the thinking of a team concerned with writing system software for a GUI.


HTC called Dr Daniel Wigdor who is an assistant professor of computer science at the University of Toronto, and an affiliate of the School of Applied Science and Engineering at Harvard University. Between 2005 and 2010 he worked first at Mitsubishi Electric Research Laboratories ("MERL") and later at Microsoft. His responsibilities at both companies included the development of multi-touch devices. Apple sought to characterise Dr Wigdor as being unduly creative and a member of the research community. They also suggested that the judge should approach Dr Wigdor's evidence concerning the common general knowledge with caution. The judge accepted that he should approach all the evidence of common general knowledge, including that given by Dr Wigdor, with caution but nevertheless considered that Dr Wigdor had endeavoured to consider what would have been known to the uninventive skilled team and overall found him to be a frank and very helpful witness.

The technical background and common general knowledge


The judge set out the technical background and the common general knowledge at [22], [31]-[34] and Appendix 1. For the purposes of this appeal, the following matters are of particular relevance.


Computer software is commonly structured in layers. The lowest software layer is the operating system or OS which interacts directly with the hardware, for example, by reading external inputs and producing external outputs through hardware elements such as a touch pad or screen. Device drivers make up the bottom layer of the OS, closest to the hardware, and are responsible for directly reading and modifying the hardware's state.


Above the OS are the run-time libraries. These consist of reusable software routines that implement the functionality required by applications, for example by performing mathematical computations and setting timers. The OS and the run-time libraries are often called the system software.


Above the system software sit the applications which carry out tasks for the user, such as web browsing or reading and writing e-mails. Some application programs may be written by the manufacturer of the device, but often they are created by third parties.


There is a defined interface between the system software and the application software called the application programming interface or API. This enables the application software developers to assemble and use a set of user interface elements called UI elements, such as buttons, check boxes and scroll bars, which together form the user interface (UI) toolkit. These are of great importance because they ease the task of application software developers, as the judge explained at [32]:

"32. A general goal of operating system designers is to ease the task of application software developers. The success of an operating system is likely to be driven by the scale of its adoption by application developers as well as end users. This can be done by providing features within the system on which application developers can build, reducing the amount of software which they have to write. The decisions taken by system developers as to what facilities to include in the system software have an impact on the cost of development of the application software. Thus the provision of a "button", a UI element, in the system software can allow the application developer to incorporate it by reference in the application, without the need to provide program code as to how it should look or how it should respond to input from the user."


I must also say a word about inputs to the computer. These may be effected by a variety of means such as a keyboard or a mouse. The processing of an input into a signal or "event" begins in the OS, where a device driver is notified by the hardware...

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