In the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit’s most recent decision invalidated two of Apple’s asserted patents, notwithstanding a jury verdict finding the opposite.  The two claims were directed to Apple’s mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages).  The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the “slide-to-unlock” and “spell correction” claims were obvious in view of the prior art.  In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious.  The Federal Circuit reviewed Apple’s presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court’s jury verdict.

Specifically as to each of the factors, the Federal Circuit pointed out that (1) the iPhone slide-to-unlock was not copied in its entirety, rather the only similarity was the use of a fixed starting and ending point of the slide, which are taught in the prior art; (2) praise and approval by Apple fans (who may not have been skilled in the art), during its presentation is not legally sufficient; (3) Apple’s assertion that its method is better than previous methods does not demonstrat the existence of a long-felt but unmet need; and (4) evidence that customers prefer to purchase a device with the slide-to-unlock feature does not show a nexus to the claimed invention, when the evidence does not show alternative devices consumers were comparing that device to. 

For such secondary evidence to be probative of nonobviousness, a patentee must provide evidence that demonstrates a nexus between the patented features and the particular evidence of secondary considerations.

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