The Real Issue With Apple's 'Slide-To-Unlock' Patent: Double Patenting & Bogus Continuations

from the don't-stop-'til-you-get-enough dept

Wed, Nov 2nd 2011 4:40am — Mike Masnick

Lots of folks sent in variations on the story last week that Apple was able to get a patent on the "slide to unlock" feature. Most of the submissions were outraged that this patent was granted, with many pointing to prior art from before the patent was filed. What most people missed was that this patent, 8,046,721 is actually a continuation patent from an earlier patent, 7,657,849.

The real issue here isn't just that Apple was able to patent something as simple as "slide to unlock," but how it shows the evils of double patenting and the use of continuation patents. We've pointed to problems with continuation patents in the past, in that they have been used to "submarine" legitimate inventions. You could just watch what others were doing in the space, and file a later "continuation" patent on your earlier patent, and have an earlier priority date, despite actually copying the work from others.

The M-CAM document linked above looks deeply at the patents in question, noting how the claims in Apple's original patent were completely rejected three separate times. For whatever reason, the USPTO refuses to really issue final rejections. So those desiring patents, can just keep adjusting and adjusting. The document also is left wondering how come the original claims were rejected while the final claims somehow made it through, noting that the changes seem meaningless:

As the report notes: "Evidently, restating the purpose of the patent � that one touches and drags the image continuously � makes it novel and nonobvious after three rejections."

M-CAM's analysis highlights the massive failure of the USPTO examiner here:

First, there are over eight hundred relevant patents that precede the �721 by a year, that both Apple and Mr. Gutierrez fail to cite, though 38 of these are owned by Apple themselves. The entities in this relevant space are displayed visually to the right.

In addition, we have a list of 120 related patents, with priority dates of a year before both slide-to-unlock patents, that are in the public domain (read: this technology is FREE TO USE and NOT PATENTABLE AGAIN). A sample of these can be found in Appendix A.

But we�re not done. Going back to the patents the examiner used as evidence to reject the claims of the �721 patent � the Tokkonen patent, which is owned by Nokia, and the Gauthey patent, which is owned by Asulab (the R&D division of Swatch Group) � we see that they both deal with either inputting a security code or controlling lock functions. We look at one patent that is never acknowledged by Apple (though it�s been cited by IBM, Microsoft and Nokia in their touch-screen patents), U.S. 6,209,104 which actually provides context for the innovations that the examiner thought to be relevant against Apple � patents that include but are far from limited to the patents the examiner actually considered.

In other words, this patent never should have been granted, and it used the almost always questionable "continuation" process to patent something fairly common, with lots of prior art. Good thing the patent reform bill that recently passed doesn't touch on any of this stuff.

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Filed Under: continuations, patents, slide to unlock
Companies: apple

32 Comments

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Lawrence D'Oliveiro, 2 Nov 2011 @ 4:47am

Apple Was Not The First To Patent This ...
... but it was the first to patent it with style.
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Vincent Clement (profile), 2 Nov 2011 @ 4:58am

Re: Apple Was Not The First To Patent This ...
...or with rounded corners
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Swedish Turnip (profile), 2 Nov 2011 @ 5:22am

So...
Can someone please patent the process of continuously refiling a patent, with minute changes done to it, until the examiner gives up and grants it?
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PaxSkeptica, 2 Nov 2011 @ 5:24am

Re: Subject line
Dear Mike,

I hate you.

Sincerely,
Song Stuck in Head
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John Doe, 2 Nov 2011 @ 5:33am

You are smearing Apple's name
We all know that Apple are the only real innovators in the last 30 years, just ask any Apple fanboy. So what you are doing here is smearing their good name. Take it back or you risk the wrath of Apple fanboys everywhere.
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Anonymous Coward, 2 Nov 2011 @ 6:07am

Re: So...
I think there is a hell of a lot of prior art for that.

Unfortunately, if nobody has actually filed a patent for it the USPTO wouldn't be aware of it. If there had been a patent filed on it, there is a 50/50 shot that the USPTO will be aware of it.
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fogbugzd, 2 Nov 2011 @ 6:09am

As long as there are software patents there will be bad patents. Software development is iterative and rapid. It is not compatible with a process developed to recognize Industrial Revolution style inventions of the 1800's. The Supreme Court was right in 1972 when it ruled that software is not patentable.
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AJBarnes, 2 Nov 2011 @ 6:22am

Welcome to the USA!
Here in the USA, we don't invent things anymore. We just file lawsuits.
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Mike, 2 Nov 2011 @ 6:32am

Terminal disclaimer
There is nothing "evil" about continuation practice. In this case, the later application is subject to a "terminal disclaimer" filed with the patent office on July 14, 2011 that makes the patent co-terminous with the earlier filed '849 patent. In other words: to the extent that they are non-obvious variations of the same thing, the patents expire at the same time.

In addition, while it may seem like this just adds complexity to the case, if you can prove the invalidity of the "parent", proving that the obvious variation in the subsequent patent is pretty easy.
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Anonymous Coward, 2 Nov 2011 @ 6:32am

Re: So...
Someone should do this.Sounds as stupid of a patent as some of the things you have put on the site for examples.
And lastly I am not an Apple Fan at this point.would rather never buy a thing from their Company.
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Another AC, 2 Nov 2011 @ 6:44am

Re: Terminal disclaimer
I'm sorry, how do you 'prove obviousness' (in the subsequent patent)?
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Mike, 2 Nov 2011 @ 6:56am

Re: Re: Terminal disclaimer
Terminal disclaimers are required and filed when a subsequent patent is an obvious variation on another application/patent. The only reason the patent office "allows" patent applications to issue like this is with a disclaimer.

So, if you can show that the parent is invalid (either as anticipated or obvious) in view of some other prior art, proving that the subsequent patent with the terminal disclaimer is //almost// as simple as saying: patent 1 is invalid over the prior art; patent 2 is merely an obvious variation of patent 1; therefore, patent 2 is also invalid as obvious over the same prior art.
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6, 2 Nov 2011 @ 7:10am

novices are funny
In this thread:

A novice wanna be patent examiner examines a professional's work and thinks it is lacking. Despite his own having infinite time to do his examination whereas the professional gets but a limited amount of time.

Novice examiner thinks that the patent never should have been issued because there is a lot of art related to, but not necessarily invalidating, for the claims.

Novice examiner shows why he's a ball of fail.
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6, 2 Nov 2011 @ 7:15am

Re: Re: Re: Terminal disclaimer
"So, if you can show that the parent is invalid (either as anticipated or obvious) in view of some other prior art, proving that the subsequent patent with the terminal disclaimer is //almost// as simple as saying: patent 1 is invalid over the prior art; patent 2 is merely an obvious variation of patent 1; therefore, patent 2 is also invalid as obvious over the same prior art."

No Mike. Terminal disclaimers are filed when the office ALLEGES that a subsequent APPLICATION (not patent) is an obvious variation on another application/patent OWNED/INVENTED by the same entity/person. It is just that person saying double patenting is not an issue here because I disclaim all extensions of patent term over the term of the first issued patent/app. The reason this is effective is because double patenting is only an issue because of people trying to extend their term by getting different patent term adjustments/issue dates.

This is all "advanced" patent stuff that you need not concern yourself with and is very boring.
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Swedish Turnip (profile), 2 Nov 2011 @ 7:18am

Re: Re: So...
Prior art? See my previous post which explains how to circumvent that.

Hint: It involves refiling the patent until it passes. Or you could just make a continuation patent for your lovely "Filing patents while under the influence of heavy narcotics" patent which you filed back in 1998.
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Mike, 2 Nov 2011 @ 7:47am

Re: Re: Re: Re: Terminal disclaimer
I don't think we disagree.

My point is merely two fold:
1. you have coterminous rights. You don't get the benefit of any additional time. Moreover, since the rights have to stay with the same entity, there's no jeopardy of enforcement by multiple parties.

2. I am unaware of any instance where a court has invalidated a first patent and retained the validity of the second patent. In part because the argument is usually presented exactly as I laid out. Even looking at the disclaimer filed by Apple, they don't even attempt to traverse the requirement of the terminal disclaimer.

If you had a separate argument for patentability, you would be arguing that during prosecution.
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The Infamous Joe (profile), 2 Nov 2011 @ 7:52am

Re: novices are funny
You are a woman of contradictions, miss. You somehow manage to type english sentences without understanding how to read english. It's as impressive as it is sad.
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Anonymous Coward, 2 Nov 2011 @ 7:53am

The practice of filing a string of continuation applications for "submarining" was effectively curtained by a 1995 amendment to the patent law changing the term of a patent from 17 years afer the date of issue to 20 years after the effective filing date of the original application.

Hence, the Patent Reform Act, unless it was once again going to change the 20 year standard, had no need to even address the subject of continuation practice.

Couple the above with the post-filing publication rules, and the ability to "submarine" is essentially truncated.
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Anonymous Coward, 2 Nov 2011 @ 8:07am

Most people assume that trying the same thing over and over again and expecting a different result is the definition of insanity, but Apple knows better. Keep on applying for the same bonus patent and it will eventually be granted, regardless of how many times it was rejected before. It all depends on who's desk it winds up on at the patent office.
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Tom Gallagher, 2 Nov 2011 @ 8:57am

Continuations and Disclaimers
Actually, all continuations will expire on the same day the parent patent expires (assuming maintenance fees are paid). Today terminal disclaimers are actually promises of co-ownership. If Apple sells one of those patents, the continuations become invalid.
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Anonymous Coward, 2 Nov 2011 @ 9:49am

Re: Re: Re: Re: Re: Terminal disclaimer
Saying, well sure they get first place in line to file bullshit patents but you only have to prove one of the patents invalid in court to get both patents thrown out, doesn't really help. A start up shouldn't have to set aside 99% of its capital for fighting Apple after it uses ridiculously obvious techniques that any moron outside the field would be able to come up with.
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Mike, 2 Nov 2011 @ 10:18am

Re:
As a note, that's NOT the situation here. Apple already got the patent on the earlier filed application. What they did was expanded on the earlier filed application to attempt to claim slight variations on the same thing.
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6, 2 Nov 2011 @ 10:55am

Re: Re: Re: Re: Re: Terminal disclaimer
" I am unaware of any instance where a court has invalidated a first patent and retained the validity of the second patent. "

Then you haven't been in the field that long and/or are not a patent lawyer. I'm not a patent lawyer myself and even I've seen that happen a few times. It isn't that rare.

"Even looking at the disclaimer filed by Apple, they don't even attempt to traverse the requirement of the terminal disclaimer."

This is not uncommmon at all. A terminal disclaimer can be a small sacrifice compared to having to argue, depending on the case.

"If you had a separate argument for patentability, you would be arguing that during prosecution."

I don't think you understand what double patenting is, the name can be confusing for those not taught specifically about it. In (at least one type of) double patenting the office uses your own CLAIMS in the first application/patent IN THE INSTANT CASE as "prior art" against you. This is not normal. This is a very special situation. Many times you will not have a "separate argument" for patentability because the office gets to use something as prior art that it ordinarily would not. The practice of using a terminal disclaimer is just fine, trust me.
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6, 2 Nov 2011 @ 10:58am

Re: Re: novices are funny
A man actually.

The only thing that is amazing is that people constantly criticize the PTO's work on here without even understanding w t f it really is that they're criticizing.
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Willton, 2 Nov 2011 @ 11:32am

Re: Re: Re: novices are funny
The only thing that is amazing is that people constantly criticize the PTO's work on here without even understanding w t f it really is that they're criticizing.

That should come as no surprise, 6. There's a lot of keyboard courage here to make spurious claims about people whom they do not know and legal systems they do not understand. I can assure you that if any of the commentariat here actually met an average patent examiner at the USPTO, they would find a whole new respect for patent examiners P.D.Q.
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Willton, 2 Nov 2011 @ 12:07pm

M-Cam has no idea what it's talking about
M-CAM's analysis highlights the massive failure of the USPTO examiner here

No, M-CAM's analysis highlights how poor its analysis is, if you can call it "analysis" at all. M-CAM cites a bunch of uncited prior art, but provides absolutely no explanation as to why such art is relevant to the Apple patent in question. And based on the mere titles shown in those appendices, the author is going to have to do a lot of explaining for why any of it is relevant to the "slide-to-lock" invention. Apparently the reader is supposed to take it on faith that the cited patents indeed disclose the invention claimed in the '721 Patent. I call bullsh**.

Sorry, Mike, but you're going to have to do better than that. If the '721 Patent is truly obvious in view of the prior art and the examiner did a poor job, then you're going to sell your position better. All I see is a bunch of pieces of information with no effort to make any connections therebetween. It's time to put up or shut up.
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Roger Mercer, 2 Nov 2011 @ 2:40pm

Patents
You are confusing the meaning of prior art in some instances with earlier art. All in all, at the end of the day, you've got to start at the beginning, so to speak.

For Apple, the easy money has been made. The company shocked the phone industry. It created a device that worked in ways no one had considered. Soon everyone emulated Apple's approach, as it were. Some approaches were nearly identical. Most were worse. Some were better. But they all were touch phones with mapping, iTunes functionality, Wi-Fi, Bluetooth and other commonplace technologies.

Now Apple is just bumping along the bottom. There isn't even any reason to be cautiously optimistic. I am constructive on Samsung's ability to continue to dominate Apple.

The only thing Google did was get an early look. It then threw out almost it's whole Android effort based on Rimm's phones and created code that would make a phone work like Apple's phone. Then it started giving the code away so it could dominate phone services, especially advertising.

Nothing wrong with copying Apple. Almost everybody does it. So if Apple has failed to protect what it did with appropriate patents, it's Apple's fault, not Samsung's or HTC's.

There seems to be an equal number of buyers and sellers of Apple stock. You can bet there is lots of cash on the sidelines waiting for the outcome of the whole patent altercation. But we all better put in for a long winter. In fact, I'd be prepared to wait until hell freezes over. We may never see the end of it.

Apple now seems to be in a bottoming process. Expect better performance after the first of the year. Meanwhile, Samsung may be a little overbought.

Once you realize patents and their defenders are discrete time based probabalistic stoachastic processes, some of these lawsuits make much more sense. Maybe you aren't sure, but you'll have to take it on faith. Or maybe I should sell my position better.

We will have to take a wait-and-see approach. Meanwhile, Apple will have to show me something, as it were.
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Roger Mercer, 2 Nov 2011 @ 2:46pm

Re: Patents
As you may have guessed, the above post was intended as humor, based on some of the very funny trite or meaningless phrases that appear in some of the above posts.
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staff, 3 Nov 2011 @ 9:20am

another biased article
"continuation patents"

There is no such thing. Rather, continuations are filed on existing applications in an attempt to further prosecution which hopefully will result in a future issued patent, but there is no guarantee.

Time and again you prove you have a very limited understanding of patents and your bias against.

Masnick and his monkeys have an unreported conflict of interest-
https://www.insightcommunity.com/cases.php?n=10&pg=1

They sell blog filler and "insights" to major corporations including MS, HP, IBM etc. who just happen to be some of the world�s most frequent patent suit defendants. Obviously, he has failed to report his conflicts as any reputable reporter would. But then Masnick and his monkeys are not reporters. They are patent system saboteurs receiving funding from huge corporate infringers. They cannot be trusted and have no credibility. All they know about patents is they don�t have any.
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Gene Cavanaugh (profile), 3 Nov 2011 @ 9:16pm

Continuation patents
These are REALLY bad, and need to end - and I am an IP attorney!
Good article.
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Standa Bauman, 5 Nov 2011 @ 9:47am

Apple
The Strategy of Apple is crazy :-(
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reggie, 7 Mar 2012 @ 8:56am

The broken patent system - "first to patent"
I highly disagree with the shift to a "first to patent" focus. Many things have been seen as examples or ideas created by small businesses, inventors, science fiction writers, etc... that are now being seized upon by big business. Big business does not innovate but copies someone else's idea and is the first to patent because they have the big bucks to do so. Big business strips the rightful rights away from the true innovater in a first to patent system. The new focus has created a patent race with the most wealthy companies benefiting.

Part of this new race by large wealthy companies is to patent everything possible no matter if it is obvious, has prior art, is overly broad, or just non innovative. For example, the biggest one in the news has been Apple's "slide to unlock" patent. What is more obvious than using a graphical representation of what has been done on electronic devices for years with physical switches. It is the first thing any developer thinks of when trying to transition from physical to software or screen based models. It is inherently obvious. Yet, Apple and others have been bombarding the patent office with such patents - more of a race on who has the money to patent every obvious idea possible than true development or innovation.

Hopefuly the downfall of the patent system created by this move to a "first to patent" system will be quickly changed before it destroys competition, small business, and independent inventors.
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