Blog Editors

Recent Posts

Analyzing Tech Regulation: Shapiro's Critique and Policy Recommendations

UPCOMING EVENT: Automated Decision-Making Technology and Artificial Intelligence

Free Speech and Trademark Law Clash in Vidal v. Elster

Using Technical Solutions to Address Issues in Privacy Law: A Talk by Professor Zubair Shafiq

An Introduction to Venture Capital

Archive

Apple's Slide to Unlock Patent and the Issue of Patent Continuations

Posted By Dominick Severance, Jan 22, 2013

Apple’s “slide-to-unlock” patent originally covered a user moving an unlock image along a predefined path to a predefined location on the screen to unlock a device. The USPTO granted Apple this patent in 2010. Apple, however, was not done with the patent and sought an immediate continuation before the patent issued. US patent law allows owners to file a continuation patent application before a patent issues - the continuation, in practice, allows a patent owner to go after broader patent coverage than the original patent at a later point.

In late October, 2012, Apple sought its third continuation of the “slide-to-unlock” patent. This latest continuation broadens the patent to cover the continuous movement of an unlock image to unlock a device. If granted, the patent would no longer be limited by Apple’s prior requirement that the image move from a predefined path to a predefined location.

Android, Apple’s largest competitor in the mobile OS market, currently has a default unlock method consisting of the user dragging an icon outside a circle displayed in the center of the screen. Although Android’s current default unlocking method has been in place for a while, it does not count as prior art to invalidate Apple’s broader “slide-to-unlock” patent. Should the USPTO award Apple the latest version of the “slide-to-unlock” patent, Apple would have a patent that potentially covers Android’s current default unlocking method.

Apple’s request for continuation of the “slide-to-unlock” patent illustrates the main issue of continued patents: continued patents allow the patent owner to broaden a patent over time in the face of what would otherwise be obvious prior art. In fact, the patent owner can wait to see what method competitors’ use and then file a patent continuation for that method with an ultimate goal of litigation or licensing. An example of this is the case of the controversial inventor Jerome Lemelson. In 1963, Lemelson received a patent for a machine vision/barcode scanner. Lemelson proceeded to file continuations based on the original patent for the next several decades. With each continuation the patent grew broader, incorporating innovations that had developed in the marketplace since the last continuation. Lemelson then used this very broad patent to pressure major corporations to license with him to the tune of almost $1.5 billion in licensing fees over the course of his life.

In 2003, Mark Lemley looked at every patent issued from 1976 through 2000 and found that patent owners filed continuations in 23% of all patent applications. In 2007, the USPTO sought to implement rules that would have dramatically affected the availability of continuation applications. In 2008, a federal district judge granted a permanent injunction preventing the USPTO from implementing the rules. The judge argued that the USPTO does not have the authority to make substantive changes like the rules it sought to implement regarding patent continuations. Since then, neither the USPTO nor Congress have sought changes to patent continuations. Thus, in the case of Apple’s “slide-to-unlock” patent, it is up to Apple’s competitors to challenge the patent before the USPTO and/or in federal court to prevent Apple from receiving a broader patent than it currently has.

Source (theverge.com): http://mobile.theverge.com/2012/10/10/3479550/apple-expands-patent-coverage-on-slide-to-unlock-feature

Source (Techdirt): http://www.techdirt.com/blog/wireless/articles/20111101/02382716580/real-issue-with-apples-slide-to-unlock-patent-double-patenting-bogus-continuations.shtml

Source (Mark Lemley via SSRN): http://papers.ssrn.com/sol3/papers.cfm?abstract_id=462404

Source (Ropesgray): www.ropesgray.com/.../Breaking_the_Bar_Code.pdf

Source (SBNation): http://assets.sbnation.com/assets/1522863/US8286103B2.pdf

Source (90 J. Pat. & Trademark Off. Soc'y 423)