Project 3: Patent opinion option assignment (2015)

The main project 3 page can be found here. The main project 3/patent option page, including scoring criteria, can be found here.

MEMORANDUM

THOMAS, THOMAS, AND THOMAS PLLP

A Pretend Limited Liability Partnership

FROM:             Ira Steven Nathenson, “Managing Partner,” T³ PLLP

TO:                  Spring 2015 “Associate” Class

RE:                  Patent opinion option

DATE:             April 4, 2015

Note to public: this assignment is created for teaching purposes. No actual affiliation with Apple or other entities exists beyond the fact that the professor is a frequent and enthusiastic consumer of Apple products, patentable or not.

Background

Our client, Apple, has come to us again for advice. This time the topic regards Apple’s famous and extremely valuable “slide-to-unlock” patents. Apple has used these patents successfully in licensing and in litigation. We are asked to confidentially advise Apple on issues regarding validity and infringement of just one of its slide-to-unlock patents.

The slide-to-unlock patents

Apple actually owns a number of issued patents and pending applications for its famous slide-to-unlock technology. Here are just some of them:

• U.S. Patent No. 7,657,849 (the ‘849 patent): Google page  and PDF of patent
• Continuation U.S. Patent No. 8,046,721 (the ‘721 patent): Google page and PDF of patent
• Continuation U.S. Patent No. 8,209,637 (the ‘637 patent): Google page and PDF of patent
• Continuation U.S. Patent No. 8,286,103 (the ‘103 patent): Google page and PDF of patent

Three of the patents noted above are “continuation” patents that rely on one or more patents, including the earlier ‘849 patent. For information on continuation patents, see Patent term for a continuation patent and this explanation.

The patent we will be analyzing is the one in green, the ‘721 patent. Moreover, we will only be addressing claim 1 of the ‘721 patent. See below for details.

Prior art: existing patents and technology

As noted, here, reports have criticized Apple’s slide-to-unlock patent as being invalid due to an old cell phone, the Neonode N1m. Also, it has come to our attention that Neonode in fact filed a patent application in 2002 for arguably similar slide-to-unlock technology, a patent that issued ten years later, in 2012. The Neonode patent has issued as U.S. patent No. 8,095,879 (the ‘879 patent). Could the Neonode N1m or the Neonode patent render Apple’s slide-to-unlock patent (as articulated in claim 1 of Apple’s ‘721 patent) invalid for lack of novelty or for obviousness under (pre-AIA) sections 102 or 103 of the Patent Act? Even worse, might Apple’s use of claim 1 of the ‘721 patent create liability to Neonode for patent infringement under section 271 of the Patent Act)?

There’s more. As they say, when it rains, it pours. Recently, the U.S. Supreme Court has tightened subject matter eligibility for patent protection. See Alice Corp. v. CLS Bank Int’l and other recent cases. As you may know, Apple has been involved in patent litigation with Samsung. Well, after Alice was decided, Samsung jumped on the anti-Apple bandwagon and argued in a post-trial motion that claim 8 of the ‘721 patent (same ‘721 patent, but different claim) was invalid under Alice. Apple dodged a bullet with that one when the district court held that Samsung waived that argument by waiting too long to raise it. But what if another court reaches this issue? Could Apple’s slide-to-unlock patent be held to be ineligible subject matter under section 101 of the Patent Act?

Suffice it to say that Apple is deeply concerned. That is why it has retained T-Cubed. 

Your assignment

Review. Your goal is to write about issues regarding claim 1 of the ‘721 patent. In preparation, carefully review Apple’s ‘721 patent (the entire patent), Neonode’s ‘879 patent (the entire patent), the materials/video on the Neonode N1m, and the other materials found in this memo and found here. (Important: you may, but need not, examine other patents.)

Write. Draft an opinion letter/memorandum addressed to Apple CEO Tim Cook, with copy to me. You can find guidance on drafting opinion letters here.  Your opinion letter/memo should address the following questions regarding claim 1 of Apple’s ‘721 patent:

1. Claim construction. What is the meaning of claim 1 of the ‘721 patent? Relevant interpretative materials include the specification (drawings and written description), the language of claim 1, dictionaries, and your judgment. Be careful that your pre-existing knowledge of the iPhone does not cloud your thinking. What matters is not what is done on the iPhone: what matters is what the patent claims. For guidance on claim construction, see David V. Radack, Reading and Understanding Patent Claims.
2. Subject matter/101. What kind of patent is claim 1? Is it valid subject matter under section 101 and the relevant Supreme Cases, including but not limited to Alice?
3. Novelty/102. In light of the prior art noted above, is claim 1 rendered invalid as anticipated under Section 102 of the Patent Act and relevant caselaw?
4. Nonobviousness/103. In light of the prior art noted above, is claim 1 rendered invalid as obvious under Section 103 of the Patent Act and relevant caselaw?
5. Infringement/271. By practicing claim 1 of its ‘721 patent, would Apple infringe the Neonode ‘879 patent?
6. Overall conclusion. Can Apple enforce claim 1 of the ‘721 patent against others? If Apple practices claim 1, will it be liable to Neonode? What do you recommend to Apple?

Assumptions & instructions

• Enablement, best mode, utility: You need not address enablement, best mode, or utility.
• Focus on ‘721 patent, claim 1: Even though Apple has a number of other claims and patents related to its slide-to-unlock technology, the only Apple claim at issue is claim 1 of the ‘721 patent. You will, however, have to consider all of the Neonode ‘879 patent (and the prior art of the Neonode N1m).
• Relevant law for 102 and 103: Because the ‘721 patent was filed before the effective date of the America Invents Act, the relevant law is pre-AIA, which means that you should be using the pre-AIA versions of sections 102 and 103.
• Prior art: The only prior art you need to consider is the prior art noted in the assigned materials (namely, the Neonode N1m and ‘879 patent). Do not go searching for other prior art. Do not discuss other prior art.
• Be comprehensive: Even if you conclude that the patent is invalid for one reason, analyze all the issues noted above.
• Confidentiality: As always, you may discuss this matter or get input from other members of the 2015 T-Cubed associate class. You may not seek help from anyone outside.
• Invention dates (added 4/17): as instructed in class on April 15, treat the following dates as the dates of invention (as constructive “reduction to practice”): for the Neonode ‘879 patent, use the date of filing; however, because the Apple ‘721 patent is a continuation of Apple’s earlier-filed ‘849 patent, use the filing date of the ‘849 patent.