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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Conversant Wireless Licensing SARL v Apple Retail UK Ltd & Ors [2019] EWHC 3266 (Pat) (29 November 2019) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2019/3266.html Cite as: [2019] EWHC 3266 (Pat) |
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2019] EWHC 3266 ( Pat) | ||
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS
COURT
The Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL | ||
B e f o r e :
____________________
CONVERSANT WIRELESS LICENSING S.à.r.l |
Claimant |
|
| - and - |
||
( 1) APPLE RETAIL UK LIMITED(2) APPLE DISTRIBUTION INTERNATIONAL(3) APPLE INC. |
Defendants |
____________________
Charlotte May QC and Lindsey Lane QC (instructed by Wilmer Cutler Pickering Hale and Dorr) for the Defendants
Hearing dates: 4th, 5th, 6th, 8th November
2019
____________________
VERSION
OF JUDGMENT APPROVED
Crown Copyright ©
Mr Justice Birss :
patent
action about United Kingdom
patent
GB 2 365 712 entitled "Computing device with improved user interface for
applications".
The
patent
was granted on 30th July 2003 based on an
application
made on 27th July 2001 claiming priority from a British filing GB 0019459 on 28th July 2000. The original proprietor was Symbian Ltd. Symbian was a joint
venture
between
various
telecommunications companies including Ericsson and Nokia. The
patent
was acquired by the claimant,
Conversant,
as part of a portfolio of
patents.
Conversant
brings this
patent
infringement claim against the defendants (
Apple).
The allegation of infringement concerns aspects of the user interface in
various
models of
Apple's
iPhone, running
various
versions
of its iOS operating system. The trial focussed on the iPhone X product running iOS
11.4
and iOS
12,
and on two aspects of the user interface, called Widgets and Home Screen Quick Action Windows (HSQAWs). There is no need to consider any other products, iOS
versions
or functions (or third party apps) at this stage. That can be done on an enquiry if necessary.
Apple
online store in the EU and the US parent company for the group as a whole. There is not now any need to distinguish between these companies.
Apple
denies infringement of the
patent
and contends that the
patent
is invalid on
various
grounds. By trial the major grounds were allegations of obviousness based on two items of prior art (an extract from the book "Windows 98 for Dummies" about Microsoft's Outlook Express product and a cellular phone device called SIMON produced by IBM in
1994);
an AgrEvo-obviousness argument; and points on added matter. There was a pleaded point on insufficiency but it was not pressed.
Apple
did not raise any objection relating to the exclusions from
patentability,
sometimes called
patent
eligibility, such as those relating to programs for computers or presentations of information (Art 52 EPC).
Conversant
applied
unconditionally to amend the claims. The amendments are opposed on added matter grounds (Art
123(2)
EPC/ s76(2) of the
1977
Act).
Conversant
invited me formally to make the amendments in any event and then if, contrary to
Conversant's
case, I found the amended claims invalid on any ground, to revoke the amended claims. In other words
Conversant
invited me not to consider the opposition to the amendments distinctly.
Apple
did not object to this course. I will do it this way, although in most cases it is not wise to roll things up like this. One reason it works here is that there are no objections to the amendments based on clarity or support (Art 84 EPC/s14(5)(b), (c)) nor on extension of scope of protection (Art
123(3)
EPC/ s76(3)(b)). Notably and despite some of what was advanced in argument by
Apple,
there is no objection to the introduction of the term "smart phone" on clarity grounds.
1
and 2 as proposed to be amended. Shown as a mark up from the claims as granted, they are in this form:
1.
A
computing devicesmart phone comprising a display screen, thecomputing devicesmart phone beingableconfigured to display on the screen a main hierarchical menu system,
wherein thedevicesmart phone is alsoableconfigured to display, in addition to the main hierarchical menu system,application
summary windows for each of several different
applications,
in which each summary window serves as a summary of a particularapplication
by
virtue
of displaying a limited list of (i) several commonly used functions offered within that particular
application
and/or (ii) stored data commonly accessed by that particular
application,
wherein the smart phone is configured to, for a givenapplication:
display, in a summary window for the givenapplication,
both a limited list of several commonly used functions offered within the given
application
and stored data commonly accessed by the given
application;
display the said commonly used functions offered within the givenapplication
without opening the given
application;
display the said stored data commonly accessed by the givenapplication
without opening the given
application;
and
open the givenapplication
when an item of the said displayed commonly used functions or the said displayed stored data is selected.
2. Thecomputing devicesmart phone of Claim1
in which selecting a commonly used function listed in the summary window causes the
relatedgivenapplication
to open and that selected commonly used function to be activated.
1
succeeds, an amendment to merge claim
1
into claim 2 cures it.
Conversant
called Mr Andrew McGrath as an expert witness. He is a user interface/user experience (UI/UX) designer with extensive experience of designing the interfaces for mobile phones. His experience was sufficiently close to the priority date so that any difference in timing does not matter on the facts of this case. He was then working on mobile telephone user interfaces for a network operator Hutchison 3G UK Ltd (now known as Three or 3 or 3 Mobile) who were looking to identify mobile phones to work on their network. The fact he was not working directly for a phone maker does not matter.
1989.
He obtained an MA in Industrial Design from Manchester Metropolitan University in
1991
and then joined British Telecom's R&D department. By 2000 Mr McGrath was a Technical Design Manager leading a team of user experience designers. In that year he joined the mobile telecoms business of the Hutchison group. By the time Mr McGrath left in 2004 he was Head of User Interface. His later roles have also been focused on mobile device user experience.
Apple
called Professor Russell Beale as an expert witness. He is Professor of Human Computer Interaction at the School of Computer Science, University of Birmingham. He has extensive experience in the field of human computer interaction. Prof Beale graduated from York University in
1986
with a degree in Physics and obtained a D Phil in Computer Science at York in
1991.
He joined Birmingham University in
1991
as a lecturer and has been associated with the university ever since. From
1996
to 2000 Prof Beale worked partly at Birmingham and also did some travelling, worked at the University of Waikato in New Zealand and then was Chief Executive of aQtive Ltd, a company focussed on agent-based internet searching. From 2000-2002 Prof Beale had a leave of absence from Birmingham and worked in a series of IT based start up businesses. He returned to full time academic work at Birmingham in 2002. Prof Beale's primary work is using artificial intelligence to assist people in their interaction with computers in general. A number of his projects have involved mobile devices.
Apple's
submissions was that it is not accurate to say Mr McGrath was working in user interface design for mobile phones at the priority date. That is wrong for the reason I have explained.
Apple
contended that Mr McGrath was
very
well prepared. If this was a criticism, I reject it.
Apple
also contended that Mr McGrath found it difficult to answer questions put on assumptions. So he did but I did not detect there any reason to reduce the
value
of his evidence. Much of the cross-examination involved multi-layered assumptions, not always explicit.
Apple
submitted that the effect of Mr McGrath's approach in this respect was that some of his evidence was not helpful or constructive. I reject that. He was doing his best to answer the questions put to him.
Apple
also submitted Mr McGrath had an "exceptionally narrow
view"
of the relevant field and "seemed to be heavily influenced by his particular personal experience working for a mobile phone operator". That is also not a good point. Unlike Prof Beale, at least Mr McGrath was actually working on the user interface of a product within the claims at the relevant time. The issue of the width of the field will be dealt with below.
Apple
submitted Prof Beale was a model witness. In my judgment he was no more or less a model witness than Mr McGrath was.
Conversant
submitted Prof Beale fell far short of the standard the court expects of an expert witness, adopted the role of an advocate for
Apple's
case, maintained technically indefensible positions (such as a point on
applications
within the Outlook Express prior art) and was prepared to cling to an obviousness analysis when its defects were pointed out to him.
Conversant
suggested that some of the cause of this may have been the way he was instructed rather than his own fault. I reject these criticisms of Prof Beale's evidence too. Prof Beale was an enthusiastic witness who wanted to ensure the court understood his
views.
He was not an advocate for
Apple.
He did not accept
Conversant's
case on
applications
in Outlook Express but gave coherent reasons for his
view.
He maintained his opinion about obviousness because he did not accept the points put to him and gave coherent reasons why not. None of this means that I will (or will not) accept every reason given by Prof Beale, or for that matter Mr McGrath. But Prof Beale's approach to his oral evidence did not undermine the weight which I might attach to his opinions.
very
different and so they came at this case in
very
different ways. Mr McGrath's experience was that of a hands on team of product designers, focussed in particular on traditional mobile telephones. Prof Beale's experience was much wider in that it was concerned with the human computer interaction field as a whole. As an academic Prof Beale taught those who would go on to undertake design work on user interfaces such as those of mobile devices, and he also carried out his own research in the field, some of which was concerned specifically with mobile devices.
The
patent
– an introduction
patent
as granted without first defining the skilled reader of the document. The debate is really about whether the invention is about mobile phones (whatever that means) or computers in general or somewhere in between. The proposed amendments to claim
1
limit the claim from a computing device in general to a smart phone.
various
terms. The reasoning will be dealt with below. At the priority date:
i) A "mobile telephone" meant a phone which used the then current cellular telecommunications systems (GSM/2G). The art knew that 3G/UMTS technology was coming. A representative example of a mobile telephone of the time is the Nokia 3310. It was actually launched a month or so after the priority date but that makes no difference on the facts of this case:

ii) PDA stands for Personal Digital Assistant. These were handheld mobile computer devices of the time. Well known examples were the Psion Organiser and the Palm Pilot. They were not telephones in any sense and the term mobile telephone did not include them. An example of the screen of a PDA at the time (the HP Jornada) is:

iii) There were devices which were a combination of PDAs and mobile telephones. One example was the Nokia Communicator range. These Nokia Communicators had two screens. When the device was shut it looked like a large mobile phone, with a screen and keyboard similar to the Nokia 3310 above. The device could be opened and turned to "landscape". Then it was in effect a kind of PDA. The PDA interface had a small typewriter like keyboard and a second display screen roughly the same size as the device. The phone could be usedvia
the PDA interface too.
iv) The term smart phone did not have a precise meaning. It was understood to convey the idea of a phone with extra features. They could be: larger and colour screens, games, email and the ability to know the phone's location. Another related term at the time was "feature phone". A device called the Ericsson R380 was launched in1999.
It was another combination of PDA and mobile phone but with a single screen. There was a flip top keypad. When closed the flip top covered most but not all of the screen, so what was left
visible
was a conventional sized mobile phone screen. When the flip top keypad was open it exposed a larger area of the screen and a PDA style interface. I have found this was a smart phone.
patent,
which has been set out already, is wide. It refers to a "computing device" without qualification. The background section of the
patent
describes the "Field of the Invention" as follows:
"This invention relates to a computing device with an improved user interface forapplications.
The term 'computing device' refers to any kind of device which can process and display information. The invention has specific
application
to mobile telephones. The term 'mobile telephone' refers to any kind of mobile device with communications capabilities and includes radio (mobile) telephones, smart phones, communicators, PDAs and wireless information devices. It includes devices able to communicate using not only mobile radio such as GSM or UMTS, but also any other kind of wireless communications system, such as Bluetooth."
[p1 ln9-16]
(the page numbers refer to the published page numbers)
application,
the term "computing device" is as wide as one could imagine. Furthermore the term mobile telephone itself is also defined
very
widely and includes PDAs. Thus the definition in the
patent
is materially wider than the meaning the skilled person would give the term if they had not read the
patent.
The definition in the
patent
also refers to "wireless information devices", which would encompass WiFi devices which again would not necessarily be thought of as telephones in any traditional sense. The term smart phone is not defined any further in the
patent.
The skilled reader would give it the meaning I have mentioned above.
patent
is a section called Description of the Prior Art. This is expressed to be directed to problems facing designers of computer devices with small screens. For present purposes the point to note is the reference to the wide term "computing devices". I will come back to the detail below but also notable in this section is that the problems which are actually discussed there are described in the context of the tiny screen of the conventional mobile telephones of the time (see image above). I use the term "tiny" as someone writing today,
19
years later.
1.
Claim
1
as granted can be seen from the marked up
version
above. The claim is wide. It is to any computer device. It is not limited to mobile telephones (by whatever definition), nor even to devices with small screens.
1
and 3 of the
patent
are:

application
summary window referred to in the claim is shown in Fig 3. For the priority date (July 2000), these screens are a bit larger than the conventional tiny screen of the mobile telephones on the market. They were the sort of screen which those in the art knew was coming in the not too distant future and was being considered by designers at the time. That
applies
to either party's formulation of the skilled person.
"As explained above, the present invention is particularly useful for mobile telephones because of their user interface constraints. However, it may also be used in environments outside of mobile telephony. For example, desktop and laptop PCs may also benefit from the present invention. The present invention may therefore be used in any computing environment, including both keyboard and keyboard-less devices."
[p8 ln21-26]
patent
attorneys working for the inventor's employer) recognised that it might have a much wider potential
application,
to computing devices in general. So the
patent
is written in the way it is. However today it does not suit the
patentee
to maintain such a wide claim. Hence the amendment to bring the whole thing back to where it started – ideally to mobile telephones. However even then there is a problem because in a fit of enthusiasm, the term mobile telephone itself was given a
very
wide definition in the specification. So the
patentee
has used the rather
vague
term "smart phone", aiming as it does to catch the well known
Apple
smart phone product, the iPhone.
The person skilled in the art
Conversant
contends that the person is a user interface designer for, and specifically for, mobile phones, by which they mean "true" mobile phones rather than things within the scope of the definition in the
patent.
Apple
contends that the skilled person is a user interface designer with knowledge and experience of computing devices more generally, including other mobile devices. Note the term "mobile devices" in
Apple's
formulation is a wide one. It includes things which are not phones such as PDAs with no phone function.
Apple
says, not unreasonably, look at the
patent
as a whole – it is not limited to mobile telephones. The field of the invention is broad.
Conversant
says, not unreasonably, although the
patent
refers to a broad range of computing devices, look at the claim as proposed to be amended, it is limited to smart phones.
Apple's
case was much wider and
Conversant's
narrower. I infer from the evidence as a whole that a group working on a smart phone like the Ericsson R380 may well have included two sub-groups, one focussed on the phone interface and the other on the PDA interface but even if that was so, they will have worked
very
closely together.
various
legal questions can be answered. Nevertheless the court will always have regard to the reality of the position at the time (Schlumberger
v
EMGS [2010] EWCA Civ 819).
Apple's
case seems to involve a point of principle that the way to identify the skilled person as a matter of law is to look at the field the
patent
itself locates the invention in and posit a person in that field as the relevant person. The problem with that approach is that one could end up in this case with a person working in the field of (say) PDAs, even though they are no longer within the claims. The point is wrong because a
patent
is taken to be directed to those with a practical interest in its subject matter (Catnic
v
Hill & Smith [
1982]
RPC
183).
Its subject matter is the invention, and the invention is what is defined in the claims (s125 of the Act). It follows that while it will be unusual, there is nothing wrong in principle for the effect of a claim amendment to mean that the notional person skilled in the art relevant to an amended claim may be different from the one
applicable
to the unamended claim.
applying
these principles to the facts of this case, for the purpose of assessing the claims as proposed to be amended, the skilled person is someone with a practical interest in smart phones.
Conversant's
formulation, while closer to the mark, is also wrong. The team is one working on smart phones not merely on mobile phones.
Conversant's
case), at the risk of repetition I find that such a team would include both members with the kind of narrow experience supported by Mr McGrath and also members with the wider HCI experience supported by Prof Beale. The UI/UX field relating to mobile telephones was a new and specialist field at the time as Mr McGrath said, but the work was not only done by Mr McGrath's type of person but also by people with the wider HCI experience Prof Beale described, possibly having studied the subject at university in the kind of course run by the Professor. Their experience will include concepts taken from desktop computers, PDAs and other fields. Whether it is a team concerned with smart phones or only true mobile phones, the notional skilled team will include members with both kinds of experience.
Common general knowledge
vast
collection of 994 guidelines published by the US Airforce
15
years before the priority date. Mr McGrath's evidence was that the skilled person by his definition, would never have heard of them. I find they were not common general knowledge of the relevant skilled team. The farthest I am prepared to go is that the member of the skilled team with Prof Beale's wider HCI background might dimly remember the existence of this tome but that is all. They would not regard it as a source relevant to their work in the skilled team.
Apple
submitted that the fact the MITRE guidelines were referred to in a (single) ETSI document from
1992
(which was not itself a standard) was relevant evidence. It was not.
very
few of them which were directly relevant.
various
books, journals or the proceedings of any conferences or workshops.
applications
on the device. Nevertheless part of the common general knowledge was that more were coming. Devices with this form factor had a specific set of design constraints: small screen; limited input means; a need to be easy to use "on the go" and in particular with one hand; and a manufacturer's user interface paradigm.
Apple
suggested this latter point was a purely commercial matter and therefore irrelevant. I disagree. This was a real aspect of user interface design. No doubt it existed largely for commercial reasons but it was a tangible, practical characteristic of the devices.
various
reasons, including the then quality of touch screen technology, a stylus was better. They could have a small keyboard. They could have soft keys (as could true mobile telephones). A soft key is a key beside the screen whose function can be programmed in software so that in one context it does one thing while in other circumstances it does something else. PDAs were like portable computers and had office functions.
applied
from this
very
different paradigm. I accept that but not entirely. It goes too far. The truth is a matter of degree. The idea
applies
most to the difference between the user interface on a desktop computer and the one on a true mobile telephone. The handheld use of the mobile phone "on the go" and its tiny screen made it a
very
different interface from a desktop. The point was much less relevant to the difference between desktops and PDAs. It is true that a PDA is not designed for use "on the go" but that is only one factor.
applicable
to all form factors. Some notifications were driven by the computer and indicated that an event had occurred, others could be summoned by the user, such as a pop up window from the status indicator in the task bar of a desktop computer.

View"
to
view
the highlighted data (faxes) or could tap the oval key beside "Cancel" to close the notification.
view,
it is presented without opening the
application
to which the stored data relates (e.g. the fax app or the mail app). By presenting the information without opening the
application,
the user is given information which relates to that
application
without having to "cognitively commit" to the
application.
The image also illustrates the use of soft keys. All of this, individually and in combination in a window, was common general knowledge.
Apple
submitted that this shows stored data and commonly used functions being presented together. One needs to take care with that. Of course the notification window does present functions to the user but they are really choices related to the notification itself – like
viewing
the data referred to or cancelling the notification – rather than functions offered because they are commonly used inside a particular
application
(like "create new mail" would be). Of course, one can also "
View"
mail in a mail
application.

Apple
also referred to an image from the Simon prior art but it was not common general knowledge at all.
Apple
also referred to the "Today" screen from the HP Jornada PDA. The device was common general knowledge but I am not convinced the particular lay out of its Today screen was.
Apple
submitted that displaying data and functions was common general knowledge. That is too broad. The common general knowledge included the idea of displaying data in a pop up type notification such as a window. Summoning or being presented with the notification did not involve opening the
application
to which the data related from the user's point of
view.
With the data, there would be functions presented associated with the notification itself. I do not accept that the common general knowledge included the idea of displaying a window for an
application
which contained both a commonly used function (or functions) offered within that
application,
and also stored data related to that
application.
application
opens. However when the user puts the cursor on an icon and clicks the right button, a small pop up menu of common functions appears. That is what Prof Beale referred to as a contextual menu. There were numerous
variations
embodying the same concept. But to call it simply a contextual menu leads to confusion. I will call this the idea of a user summoned shortcut menu. This idea was part of the common general knowledge of the skilled team. With an eye on the issues in this case, it is notable that this user summoned shortcut menu idea did not present data, only functions. On the other hand, like the notifications, it did allow a user to see the options without opening the
application.
It was an alternative to opening the
application
by whatever normal means the system presented.
Conversant
pointed out that
Apple
had not presented any examples of pop ups on a tiny mobile phone screen at or before the priority date. There was an effort by counsel for
Apple
to cross-examine on an abandoned prior art reference called Frederiksen but that was plainly not common general knowledge. I am sure the skilled team would know that pop up menus had not been implemented on true mobile phones so far. That was because of the tiny screen size. However the skilled team would be well aware of the concept and would know it was something available to employ as screens were becoming larger. The idea of a pop up either covering the whole screen or leaving part of the previous context
visible
were common general knowledge.
applications
grew, the complexity of such menu systems would increase.
applications
such as a calendar and email.
Apple
did not agree the actual planned devices were common general knowledge because the companies' plans were not publicly known. I agree that specific details of devices were not public at the relevant time but the broad concepts set out above were well known and public. While accepting that "consumer stuff" would be looked at, Prof Beale emphasised email as something which was important at the time. I agree. All of this was common general knowledge.
application
on a smart phone at the priority date would be interested in how that had been done on other small devices. That would include mobile telephones. As an illustration of the general point, Mr McGrath flew to Japan to learn about a contemporary device called the iMode from the major company DoCoMo, which was new and successful at the time. However the skilled team would not only be interested in the user interface in true mobile telephones. Their interest would be much more general than that.
The
patent
patent
above. The "Description of the Prior Art" section summarises the problems addressed by the invention as follows:
"One of the problems facing the designers of computing devices with small screens is how to allow the user to navigate quickly and efficiently to access data and activate a desired function. Computing devices with small screens tend to need data and functionality divided into many layers orviews:
for example, the small display size of mobile telephones has conventionally meant that several hierarchies of functions have to be offered to a user. "
[p1 ln19-24]
patent
describes the idea that the interface can be thought of as having many layers and that, when a mobile telephone includes several different
applications
the user interface can be complex and hard to learn, especially for new users. An example is given for a "contacts"
application
(see fig
1
above), as follows:
"the user normally has to first of all locate, then start/open the requiredapplication
and then may need to navigate to the required function (e.g. create a new contact entry) or cause the required stored data (e.g. display names beginning with the letter `A') to be displayed. This process can seem slow, complex and difficult to learn, particularly to novice users"
[p1 ln 29 – p2 ln2]
patent
describes, whereas with conventional user interfaces a user may need to scroll around and switch
views
many times to find the right data or function, an effective user interface would enable users to "readily and rapidly" access the right data or function.
application
summary window" displayed in addition to the main hierarchical menu system. The
application
summary window provides a limited list of several commonly used functions within that
application
and/or stored data commonly accessed for it. An example of the
application
summary window can be seen comparing figures
1
and 3 above. The messages
application
is one of the
applications
in the main hierarchical menu system (see fig
1).
The
application
summary window for that
application
is shown in fig 3. It displays data (3 unread emails etc.) and commonly used functions (e.g. create message). The
patent
describes this as a 'snap-shot'
view
of an
application
which brings together a limited list of functions and can also display commonly accessed stored data. The
patent
explains that the user is then able to directly select that data or function and that this will cause the
application
to open so that the user is then presented with a screen in which the data or function of interest is prominent. Accordingly:
"This saves the user from navigating to the requiredapplication,
opening it up, and then navigating within that
application
to enable the data of interest to be seen or a function of interest to be activated."
patent
describes all this in more detail. Of some significance is the first paragraph in that section which refers to the advantage of "ease and speed" of navigation particularly on small screen devices and draws a comparison between a user being able to get to the summary window in just two steps, which is "far faster and easier" than conventional navigation approaches and which means that only three steps may be needed from start up to reaching the required data/function.
various
ways of causing the
application
summary window to appear are discussed including allowing the highlight on the main hierarchical menu to rest for a certain amount of time on the name of an
application
(e.g.
1.2
seconds), or by
voice
activation, a soft key, a "right scroll" or "right cursor" key or a press and hold function. At page 6 ways of dismissing the
application
summary window are mentioned including a time out or using a scroll command in the opposite sense to the one which called up the window in the first place.
varying
the content of the summary depending on what the user has been doing before they open the
application
summary window.
Claim construction
1
as proposed to be amended is set out above. There are a few points of construction but before getting to those the general outline of the claim can be understood.
various
things in certain circumstances. However it will still be a device within the claim even when the device is switched off.
application
summary windows in addition to the main hierarchical menu system. The "
application
summary windows" are plural because there must be at least two available to be displayed, one each for different
applications.
They do not have to be displayed together but the device has to be configured so that each could be displayed in appropriate circumstances. The third thing the device is configured to do is perform four defined tasks for a given
application.
An "
application"
is a coherent set of functions and data from the user's point of
view.
The user's point of
view
is an important aspect. Identifying something as an
application
is not done by delving into the specifics of how software is coded or how processes run in an operating system or stay resident in computer memory.
application
summary window is defined as serving as a summary of a particular
application.
It must display a limited list of either several (more than one) commonly used functions within that
application
or stored data commonly accessed for that function or both.
application
summary windows are in addition to the main hierarchical menu in the sense that they exist as an alternative to the "normal" way of accessing the
application
through the main hierarchical menu.
application.
The first task is to display both some functions and stored data for that
application.
Thus read as a whole the claim does not cover a case in which the phone has available numerous
application
summary windows for different
applications
if each of them only ever displays either data alone or functions alone. On the other hand, if at least one of the
application
summary windows does display both, the device will be within the claim even if all the other
application
summary windows do not do this. The plurality of
application
summary windows demanded by the claim does not
apply
to the requirement to display both data and function.
application.
Like "
application"
itself, the concept of opening an
application
is understood from a user's perspective and does not refer to the details of how the computer works.
application
when the user selects one of the displayed functions or data.
Apple
contends its absence from claim
1
is added matter.
Conversant
does not agree but as a fall back
Conversant
submits if claim
1
is to be revoked for this added matter then the invalidity is cured by joining claim 2 into claim
1.
I will address the added matter point below but I can say at this stage that
Conversant
is right that the amendment to claim 2 would cure it in any event.
i) smart phone
ii) main hierarchical menu system
iii) … display, in addition to ...
Smart phone
Conversant,
supported by Mr McGrath's evidence, submitted that while the term smart phone did not have a commonly accepted meaning at the priority date, the term did have currency for those working in the mobile telephone field as referring to a more advanced form of the "Roadmap" model. It had a mobile phone form factor and more advanced characteristics that were anticipated at the priority date including: 3G, GPS for location tracking, relatively bigger screens with better resolution, colour, cameras and, going forward, cameras with better resolution, Bluetooth, improved internet (browsing), improved games, MP3 players, improved access to email,
video
and
video
messaging.
Conversant's
case is that this is what the skilled reader would understand the
patentee
to have used the words in the
patent
to mean. It did not include devices with touchscreens because the ones which were available (on PDAs) were poor and unreliable.
Apple,
supported by Prof Beale, agreed that the term did not have a precise meaning but submitted that at the priority date, a smart phone was understood by the skilled person to be a device capable of good connectivity for both
voice
and data, and of having computer like features but with the form factor of a mobile phone, PDA or Pocket PC. It did not include the ability to customise the phone with additional
applications
like the modern-day smart phone. To that extent the definition has changed between then and now.
patent
specification at this stage, the skilled team at the priority date presented with the Ericsson R380, which describes itself as a smart phone, would have no difficulty with that description. They would not think it was wrong or inappropriate. It is a smart phone because it is more than a normal phone. It has a number of extra features, including a calendar, contacts and email. The fact it can offer a PDA-like interface does not mean it is not a smart phone. Nor is the fact that it could be seen as rather office oriented, as opposed to oriented for the mass consumer market. To the skilled person at the priority date (by any definition of that person) the term "smart phone" did include the future feature phones/smart phones referred to by Mr McGrath which the skilled person would be aware of in general terms but it was not limited to that definition. It included devices like the Ericsson R380.
1
which is the extended definition of mobile telephone.
Conversant
contended that the items in this list would be understood as distinct and therefore mutually exclusive so that, for example, a device could not be both a communicator and a smart phone. I do not agree. The skilled reader would not think the
patentee
was seeking to use language in this way. The members of the list are part of a deliberately expansive definition of mobile telephone. Until
Conversant
made the claim amendment the individual items had no other significance. A smart phone is self evidently also a "radio (mobile) telephone". The skilled team whose reaction to the Ericsson R380 was as I have described it above would not have a different reaction to the term smart phone in the
patent.
Conversant's
narrow case on the meaning of smart phone. It is not limited to devices which only had even the slightly larger but still small screens of Mr McGrath. By the priority date it referred to a hand held device and so had the form factor of a true mobile or PDA. It had to be able to be used as a phone with mobile (i.e. cellular) capability. The screen could be any size, such as at least the size of the flip open screen in the Ericsson R380. I do not accept Mr McGrath's evidence about the size of smart phone screens. Mr McGrath also used the expression "phone first". I do not accept that concept as a limitation to smart phone. As long as it has a phone function, the device could properly be called a smart phone.
Main hierarchical menu system
Apple,
supported by Prof Beale, contended that a menu was a list of textual items. So a menu of available
applications
would be a text list of those
applications
– messages, mail, contacts etc. The user indicates which item they want by selecting it from the list such as by highlighting the item in some way and pressing a key, tapping on the screen or moving a mouse, to indicate the selection.
Apple
and the Professor accepted that a main hierarchical menu system by the priority date could include pictograms giving a
visual
indication of the meaning of the item in the menu but they did not accept that a scheme like the iPhone, in which the available
applications
are presented to the user by a group of icons on a screen, was a menu.
Apple
accepts as a main hierarchical menu and what it does not can be seen from the two images below. Each shows the display at the point at which the user is presented with a choice of
applications
to select and open. On the left is a mobile phone from at or close to the priority date and on the right is the home screen of the
Apple
iPhone:

Philips Azalis 238
Apple
iPhone
visually
represent the individual
application.
In the Philips Azalis there is text above a soft key in the middle ("Wap") which is the name of the
application
pointed to by the arrow. In the iPhone there is text under the pictogram.
Apple
accepts that the Philips has a main hierarchical menu but argues that the iPhone does not. The reason is because of the nature of the icons in the
Apple
screen.
application
it represents. So an icon can be moved, deleted, selected with other icons and perhaps renamed. These properties or most of them are true for the icons in the iPhone but are not true for the mere pictograms in the Philips phone. On the other hand, in the WIMP paradigm a menu is a text based list on which the individual items can be selected. There is a spectrum between menus and icons but they do not overlap. This is Prof Beale's evidence.
patent.
The reader would not think the
patentee
used the term "menu" to invoke the WIMP paradigm at all. The reader would understand that the main hierarchical menu system was simply the means by which the user is to be presented with the relevant options and would be expected to navigate around it by selecting items from the menu. They would not think it had to be limited to text. It could include pictograms with no text at all and it would still be a main hierarchical menus system even if the pictograms were "icons" or "objects" as strictly so called within the WIMP paradigm.
… display, in addition to ...
visible
in some way when the
application
summary window appears. The language does not involve any terms of art. The
patent
depicts the
application
summary window in figures 2 and 3. Figure 3 is above. Figure 2 is:

application
summary window open with one item of the main hierarchical menu above and below it (in this case Launcher and Phone) preserves context for the user.
application
as filed.
Apple
contends that their inclusion adds matter if the claim is not limited to the case in which the main hierarchical menu and
application
summary window are both
visible
in some way when the
application
summary window opens. I do not agree. I find that the claim language, as
Conversant
contends, is not limited to a case in which the main hierarchical menu and
application
summary window are both
visible.
It would cover a case in which the
application
summary window appeared without the main hierarchical menu being
visible.
However I do not agree there is any added matter. True it is that the
application
only discloses examples in which the two appear together. It certainly never positively teaches that the
application
summary window could appear without the main hierarchical menu, but neither does the
patent.
The claim covers such an eventuality but does not disclose it (AP Racing
v
Alcon [2014] EWCA Civ 40, referring to AC Edwards
v
Acme [
1992]
RPC
131).
The fact that in the circumstances the user's context was not preserved does not matter. The claim does not require the user's context to be preserved in this way. Nor can there be any intermediate generalisation since no feature has been taken out of the context in which it was disclosed at all. Moreover the only matters of context relied on by
Apple
were: (a) "mobile telephone" – but given the wide definition that does not make a difference; and (b) "drop down" menus – but the
application
as filed as a whole is clearly more general than that and is not suggesting menus have to be drop down menus.
Added matter
application"
and (ii) the point about opening and not activating.
for a given
application
Apple
submits as follows:
"250. There is also no teaching in theApplication
as Filed that, for a given
application,
the device must display in the summary window both a limited list of commonly used functions and stored data. However, this is what the proposed amended claim
1
now requires. The
Application
as Filed made clear that an
application
summary window could display common functions within an
application
and/or data stored in that
application.
In other words, there was a choice: a summary window could display functions or data or both. The proposed amended claim maintains that choice in defining summary windows generally, but adds a further requirement that, the device (the smart phone) must be configured to display at least one summary window with both functions and data. There is no teaching in the
Application
as Filed that the device should be configured in this way. That is new technical information about the invention that the skilled reader learns for the first time from the proposed amendments. This is a further reason why the
Patent
as proposed to be amended is bad for added matter."
application
as filed disclosed the idea that an
application
summary window should display functions and/or data. In other words functions alone, data alone or both functions and data. As a matter of disclosure all three options are taught. Claim
1
as filed expressly referred to the
application
summary window as comprising (i) functions and/or (ii) data. No new information is disclosed in new amended claim
1.
The three options are the same but the claim has now been limited to the case in which at least one of the
application
summary windows is "and". That is all. (The
application
never said they all had to be the same.)
opening and not activating
1
as proposed to be amended end with opening the
application.
This could be when a user has selected a function. The claim does not say that the function itself has to be activated. That comes in claim 2. This is not a covers as opposed to discloses case. As written the amended claims clearly do disclose the idea of opening the
application
when a function is selected without necessarily activating the function. If it is not disclosed in the
application,
as
Apple
contend it is not, then it would be added matter.
Conversant
refer to two passages in the
application.
The two passages are as follows:
"Preferably, where the summary window for a givenapplication
shows data or a function of interest, the user can directly select that data or function; this causes the
application
to open and the user to be presented with a screen in which the data or function of interest is prominent. This saves the user from navigating to the required
application,
opening it up, and then navigating within that
application
to enable the data of interest to be seen or a function of interest to be activated."
[p3 ln15-21] my emphasis
"… When an item in the App Snapshot is selected (e.g. by being highlighted and then selected using a conventional selection technique such as pressing a right cursor), the device displays the relevant data in theapplication
details
view,
or displays the relevant screen offering the relevant functionality. The required
application
may be automatically opened when the item in the App Snapshot is selected. The App Snapshot can therefore display data from an
application
and functions of that
application
without actually opening the
application
up: only once a user has selected an item in the App Snapshot associated with a given
application
does that
application
have to be opened. For example, when `Create Messages' in an App Snapshot is selected, then the messaging
application
is opened up; that
application
does not however have to be opened up prior to that stage."
[p5 ln19] my emphasis
Conversant.
These passages disclose the idea of opening the
application
when a function is selected without necessarily activating the function itself. There is no added matter.
Infringement
Apple
admitted that the iPhone is a smart phone within claim
1.
They were right to do so.
Apple
infringes under s60(
1)
of the
1977
Act.
![]() |
![]() |
![]() |
| Screen A | Screen B | Screen C |
application
called Notes. Normally to make an
application
open the user taps lightly on the relevant icon appearing on the home screen. In this case the Widgets have appeared because instead of tapping lightly on the Notes icon, the user pressed their finger onto the Notes icon gently but a bit more firmly and for a longer period of time. This calls up the Widgets. In this example functions are shown in the top Widget and data in the bottom one. The firmer finger press is called a "3D Touch" in
Apple
parlance.
application.
This has arisen because the user went from the home screen to a Search screen. The Search screen resides notionally left of the home screen and so a user reaches it by swiping appropriately with their finger on the home screen to notionally push the home screen away to the side. When that happens Widgets can appear along with the Search function. The user can tell the phone which Widgets they wish to see here by adjusting the settings.
![]() |
![]() |
![]() |
| Screen D | Screen E | Screen F |
application
(shown not blurred to the bottom right of the window). In Screen E the
application
was Notes and two windows have appeared. It may be the right way to characterise this screen is as showing a widget which appears with an HSQAW but it does not matter. In Screen F the home screen was a small group of commonly used
applications
suggested to the user by the phone using a function called "Siri Suggestions". The Messages icon was pressed.
1.
The main hierarchical menu system is the set of icons on the home screen from which the user can select which
application
they wish to open. The
application
summary windows are the windows described above. The fact that the main hierarchical menu system (home screen) is not always
visible
when these windows appear does not take
Apple
out of the claim.
Obviousness
1
has been construed above. In terms of an inventive concept, the heart of it is the idea of making available
application
summary windows in a smart phone. The
application
summary windows have the
various
characteristics defined above. They present, as Mr McGrath put it, the "best of the app". One point of some importance is that the claim does require at least one
application
summary window to display both function and data.
applications
which will have to be made available on smart phones as compared to traditional mobile telephones. This was a current problem at the time for real skilled teams and no hindsight is involved in posing it.
Conversant
about what the skilled person is doing when they read the cited prior art. The law is clear that the document is read with interest (e.g. Dr Reddy's
v
Eli Lilly [2008] EWCA 2345 (
Pat)
Floyd LJ at paragraph 70). Having read it with interest the invention may be obvious and if so the
patent
is invalid.
Conversant's
point was that they detected in
Apple's
cross-examination that a point was put that the skilled person is actually told that they must read the document with interest, but that would be wrong in law. Whether
Apple
did put it that way does not matter. I agree with
Conversant
that that would not be the right approach in law. The skilled person when they read the cited prior art is not being told or being given a hint that a solution to a problem might be found in that document. Otherwise there is a real risk of injecting hindsight into the analysis.
various
points can still be examined, and may or may not be accepted or
applied
to the skilled person as defined in this judgment.
Windows 98 for Dummies – Outlook Express
1999.
The book as a whole is about 300 pages long. The relevant pages are in Chapter
13
about using Windows 98
applications
at p274-284, i.e. a passage 6 pages long. It is legitimate to rely on an extract from a book, rather than imagining the skilled person reading the whole book, as long as the extract is coherent. The coherent section here starts at p275 under the heading "Managing E-mail with Outlook Express".
view
of the skilled person reading these pages with interest, they would understand that they were reading a description of how to manage email on a desktop computer. Despite the
very
significant differences between the user interface of desktop computers as opposed to smart phones, the skilled person would not dismiss it without further ado just because they were focussed on smart phones. They would be aware that Microsoft's Windows 98 was a well known operating system for desktop computers. They might well know Outlook Express itself, as an email
application
Microsoft made available bundled with Windows.
13-5
and
13-7.
The first is Fig
13-5
as follows:

applications
in the middle. One block is marked Paint Shop Pro. The block marked Outlook Express is shown as if it is a button which has been pushed inwards because that is the window which is presented. The rest of the screen is taken up by the Outlook Express window screen. This is the screen a user gets when they open the
application
(unless they have previously ticked the box near the bottom to tell Outlook Express to start by going straight to the email inbox). It has a title at the top (Outlook Express), then a menu running horizontally just underneath (File, Edit etc.) and then underneath that there is a group of four buttons to click on, with text and a
visual
indication of the functions they perform. Down the left is a graphic representing
various
folders and under that a block for contacts. Most of the screen is taken up with a page entitled Outlook Express with the user's name and then three sections are below – Email, Newsgroups and Contacts. On the right is a box for "tip of the day".
13-7,
which is the screen focussed on by
Apple.
The figure in the book just shows the Outlook Express window and not the task bar but it is clear that that is just for convenience in the book. It is:

13-5
too) is that here a combination of current data and commonly used functions are presented together to the user in a kind of
application
summary. So under the heading "E-mail" there is data: "
1
unread Mail message", and there is a commonly used function: "Create a new Mail message". The user can go straight to the unread mail or to create a new mail message by clicking on the underlined text. This is "in addition to" using the main menu system.
Apple
submitted, supported by Prof Beale, that in terms of claim
1
what is presented here is three
applications
– E-mail, Newsgroups and Contacts – as well as
application
summary information for each
application.
It is true that these three functions are themselves coherent subsets of functions and data within that
application
but the crucial thing is the user's point of
view.
Focussing on fig
13-7
alone potentially leads to trouble because that presents as if the only thing the user will see is a window entitled Outlook Express. However in fact, even though it may well dominate, for the user that window always exists on a desktop arrangement in which it is clear from the user's point of
view
that the
application
is Outlook Express. Prof Beale accepted that this desktop arrangement was well-known to the skilled person and accepted that the blocks on the bottom also indicate that Outlook Express is an
application.
The professor effectively described the court's task as an exercise about drawing a box around certain things to decide if they amount to an
application.
I accept that but I do not accept Prof Beale's opinion about where to draw these notional boxes in this case. From the user's perspective the
application
(in terms of the
patent
claim) is Outlook Express.
application
summary window which displays both stored data and several commonly used functions. Outlook Express has its own main hierarchical menu system, for which this is an alternative, although that main hierarchical menu is not really the main hierarchical menu of the device. When this
application
summary window is displayed, the
application
(Outlook Express) is already open, unlike claim
1.
applications
to be added to the smart phone. One of the
applications
they are likely to want to consider putting on a smart phone is email. Nevertheless, having read these pages with interest the skilled team would be left thinking they had seen an interface developed for a completely different world from the one they are considering. Outlook Express is for the user interface on a desktop computer. It is as far as one could be from the user interface of a smart phone. They would know that email had been implemented on mobile devices including PDAs. Even though those are not phones, they are at least mobile devices and have a form factor relevant to the smart phone project. They would be regarded as of much more relevance to the problems the team had to solve. PDAs had email but they did not have an interface which looked like this part of Outlook Express. The skilled team would also know of the failure of the Windows CE, which was an attempt to squeeze the Windows desktop user interface onto a PDA.
The Simon cellular phone device
1994.
The device was produced by the computer company IBM and the phone company Bell South. To someone at the priority date the device was a rather brick-like unit. It was built like a telephone hand set and had a stylus based touch screen. There was no separate physical keypad. The unit itself can be understood from the following picture taken from the manual:

applications
on a smart phone, they would see that here was an effort to do exactly that. The manual describes Simon in the following way:
"Your Simon is a cellular phone with personal organization and communication capabilities."

applications
are presented to the user.
applications
is Mail. The skilled team would look at them all but it is not hindsight to focus on Mail since that is one of the functions the team would be interested in. From the main menu screen, selecting the Mail
application
leads to the following screens. First presented is the one on the left. The user can navigate accordingly. The screens are:

application
with both commonly used functions and stored data together. The functions include "Send and Receive" and "Create Mail" and the stored data includes "3 Received Messages" etc.
application,
it is the way to access the mail
application.
Simon does not have any other windows which could be said to be an
application
summary window and so the plurality aspect of claim
1
is not satisfied.
Is the invention obvious?
application.
Conversant
made the point that the functions shown were apposite to what was shown at that level. So they were, but that does not alter the analysis.
Apple
sought to rely on Outlook Express above was because that too presented data and functions together but it did so in a
very
different context. With Simon however, here is the
very
context the skilled team is interested in, and the function/data combination would be understood by a UI/UX person as being presented in order to address the limitations of the interface. The fact that the underlying technology of Simon was old does not matter because what is interesting is the user interface. Identifying it here is not a backwards looking exercise.
application.
application.
The skilled team's device would retain its ordinary main hierarchical menu system in order to access the
application
in the conventional manner. The size of screen they were considering on a smart phone could be comparable to the one in Simon although it would be more likely to be quite a bit smaller, but even in that case the idea would still be obvious. Also, an interest in wanting to be able to use the device "on the go" does not make it any less obvious.
view
of the experience and knowledge of that person and I have not accepted that. The skilled team I have identified had a much wider knowledge and experience than Mr McGrath's person. I have not accepted Prof Beale's definition either, but as I have explained already, none of this means the evidence as a whole does not allow the court to come to a conclusion.
Conversant
referred to what it called a long pause Prof Beale gave when he was asked why the skilled person would "suddenly start thinking about shortcuts". I recall that passage. In my judgment it was not an indication that Prof Beale was stumped. It was a careful witness who appreciated the question was an important one and was giving his considered opinion.
Conversant
also submitted his answer did not make sense. I disagree. The professor gave his answer in his own terms but, put in terms of
patent
law, his answer was that things like short cuts were part of the common general knowledge. I accept that.
Conversant
also took a point on paragraph
169
of the Professor's first report but I do not accept that the distinction drawn by
Conversant
undermines the force of the evidence as a whole.
apply
to the Mail
application
but to other
applications
too. The fact it was only disclosed for the Mail
application
in Simon does not make it inventive to
apply
the idea to multiple other
applications
too. I reject
Conversant's
case that this involves any sleight of hand or hindsight. The key is the genuine interest the skilled person would have in the first Mail screen.
1
(and claim 2 for that matter). There is no other independently
valid
claim and the
patent
therefore is invalid.
Conversant
took a point about the fact that Prof Beale did not seem to have
visualised
the end point of what he thought was obvious until asked about it in cross-examination. That was a weakness of his approach to Outlook Express but I do not agree the same point
applies
to Simon because of the similarity in form factor. At most Simon has a PDA form factor, but that was within the ambit of the skilled team's thinking.
Conversant
also asked the rhetorical question – if it was obvious why was it not done before? If this invention was a ground breaking idea which revolutionised the industry and solved a long standing problem then there might be something in the rhetoric, but it is not. It is a worthwhile idea, but it is one which was obvious over an item of prior art which was not itself common general knowledge. The rhetorical question does not help.
Conversant
accepted, rightly, that if claim
1
was obvious, no other claim was independently
valid.
Agr Evo-obviousness
patent
discloses this contribution, that it is a contribution made by the claimed invention and that it supports the claim as it stands.
patent
refers to the number of steps in a hierarchical menu is not a way of working out whether there is a technical contribution. No doubt it is possible to infringe badly and set things up so that one can reach the data or function in fewer clicks using the main hierarchical menu. However the way the main hierarchical menu is set up is up to the designer. There is no need for the claim to limit the number of steps the user must take to reach the data or functions concerned.
Apple
emphasised that Mr McGrath accepted a point made by Prof Beale that it was possible to put the invention into practice in a way in which it will not always reduce the number of steps the user has to take to arrive at the data or function, as compared to the number they had to take in the prior art. That is also not relevant. It does not alter the fact that the invention presents an improved user interface because it provides a way of setting up an alternative route for the user to use, as well as the main hierarchical menu, which is capable of being a better, quicker and/or easier method. That is an advantage.
Apple
submitted that claim
1
was not limited to a situation where, once the
application
was opened, the user is presented with a screen where the data of interest is prominent or the function of interest has been activated. Therefore the user will be required to take further steps in that case. I suppose that is so but again it is of no relevance. The claim does have to include this limitation to be commensurate with the technical contribution. This is not a claim consisting of a chemical formula covering millions of discrete chemical compounds, which may or may not have the biological function on which the invention rests. This claim describes the essential features of the invention in a way the skilled person can understand as fairly supported by the disclosure. It would be possible for the skilled person to put it into practice in a way which does not work
very
well, but that is not the test.
Apple
that if it makes a contribution at all, then it is only in the context of Mr McGrath's "true" mobile phones. It is correct that Mr McGrath said that the problem identified in the
patent
is only interesting on a small screen with limited input means. However Prof Beale's evidence on obviousness over the prior art was that the step he regarded as obvious was worth taking irrespective of screen size. I accept that aspect of Prof Beale's evidence (which is not the same thing as saying it was obvious).
Conclusion
Apple's
iPhone product would infringe the
patent
if the
patent
was
valid,
but it is not. The
patent
is invalid because the claims are obvious over the Simon prior art. All the other invalidity arguments advanced by
Apple
do not succeed.
Postscript
Conversant
submitted that:
"with our Englishv
Emery Reimbold & Strick [2002] EWCA Civ 605 obligation in mind, we wish to draw to the Court's attention that when dealing with the case of obviousness over the SIMON manual, the Court has not dealt with our arguments that (a) without hindsight, the skilled person had no reason or motivation to take that screen out of the carefully designed SIMON menu system in which it sits; (b) taking the 'mode of presentation' in the top menu of the SIMON Mail app outside the app (i.e. without opening the app) would be counterintuitive; (c) the whole analysis was driven by hindsight; and in particular (d) the final step of
applying
this 'mode of presentation' to each app is pure hindsight (notwithstanding §
157),
a point supported by what actually happened in PDA user interfaces: the multiple notification box (as illustrated in §52 of the draft Judgment)."
v Emery point.