What 🍐 vs 🍏 will be cited for? I think it’ll be this: «Das ist, mit Verlaub, Unsinn.»

Est'd reading time: 8 mins

Case No. O2020_014 | Judgment of 2 October 2023 | ‘iMessage’ | not yet final

Apple logo

Rome wasn’t built in a day. But here it is, finally: The judgment in the case that was the longest pending in the last Annual Report of the FPC. It is an infringement case between Pear and Apple about a feature of Apple’s iMessage service that began in 2020; see this Blog here for some background information. Both patents in suit have lapsed already; EP 1 838 074 B1 and EP 1 208 687 B1. It’s all about damages for past infringement, if any.

iMessage icon

Putting it simple, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the sequence of signs is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network.

Even though the whole thing was only about damages, Apple took this very seriously. Hey, iMessage was at stake! Apple took up the fight, and they did it the Draghi way. Both sides did.

Here’s a simplified timeline of the proceedings (🍐 Pear, Apple, ⚖️ Court; be prepared for some scrolling):

23 Sep 2020:

🍐 Statement of Claim (73 pages)

8 Feb 2021:

Statement of Defense (216 pages)

12 Apr 2021:

⚖️ Instruction Hearing at the FPC (no settlement reached)

14 Jul 2021:

🍐 Reply (376 pages)

2 Sep 2021:

Rejoinder («non-final»)

4 Oct 2021:

Rejoinder (re req. 1-49 and 52-54, w request for protective measures)

22 Oct 2021:

⚖️ Order of the FPC (admission of req. 50-51, unpublished)

4 Nov 2021:

Appeal to SC (re order of 22 Oct 2021)

5 Nov 2021:

⚖️ Order of the SC (no suspensive effect)

17 Nov 2021:

Giving reasons for requested protective measures

24 Nov 2021:

Rejoinder (re req. 50-51)

1 Dec 2021:

⚖️ Judgment of the SC (appeal not taken into consideration, see here)

20 Dec 2022:

🍐 Comments (re protective measures)

4 Jan 2022:

⚖️ Order of the FPC (re protective measures; see here)

24 Jan 2022:

🍐 Comments (on new factual allegations in the rejoinder of 4 Oct 2021 and 24 Nov 2021)

25 Jan 2022:

Comments (request to disregard plaintiff's submission of 24 Jan 2022)

6 Jul 2022:

⚖️ Main hearing (cancelled)

9 Jan 2023:

⚖️ Technical opinion of the judge-rapporteur

21 Feb 2023:

Comments on TO

23 Feb 2023:

🍐 Comments on TO

12 Jun 2023:

⚖️ Main hearing at the FPC

2 Oct 2023:

⚖️ Judgment of the FPC

Nov 2023:

🍐 Appeal to the SC?

On the merits

One could expect a judgment of Arnoldian length. And it indeed is, at least at the face of it. I didn’t check, but it is quite likely the longest judgment of the FPC by now: 163 pages. However, the closer you look, the more the judgment shrinks to more digestible dimension; 90+ pages are eaten up by Pear’s requests from the reply (pages 6-59) and five inter partes limited versions of EP 074 in the annex (pages 124-163; AR1 to AR5).

On the merits, there is not much to say, really. It’s a pretty straight forward assessment of added matter in the first place; see ¶¶31-50 on pages 79-94: Both EP 687 as granted and EP 074 (as granted and AR1 to AR5) failed for this reason alone. Flogging a dead horse, still further grounds for nullity are assessed in depth in the judgment:

Re novelty (¶¶55-59 on pages 98-103), the outcome is mixed: All independent claims of EP 074 (claims 1, 20 and 25) as granted and according to AR1 are anticipated by US 981. On the other hand, novelty of AR2 to AR5 is acknowledged. Likewise, novelty of all independent claims of EP 687 is acknowledged.

The judgment goes on to establish various lines of obviousness for both patents; ¶¶60-73 on pages 103-118. 

In a nutshell, Pear’s complaint was dismissed (invalidity of both patents in suit; infringment not assessed). The judgment is not (yet) final / still open for appeal to the Supreme Court.

The court was not amused, I’d say

There are some hidden gems in the judgment that make pretty clear: The court was not amused. For instance, the main hearing could not be held as planned because the technical opinion of the judge-rapporteur could not be established sufficiently in advance. Why? Because of the party submissions of absurd length:

Further, it was not appreciated that the technical competence of the judge-rapporteur was only put in question after receipt of the technical opinion:

The judgment holds that this is opportunistic and belated in any event:

Still, the court assessed the technical complexity of the matter at hand. It makes me smirk to read that this technology (illustrated with the figure below) is quite understandable for a physical chemist with a doctorate. The complexity was more on the procedural side because both sides did everything to inflate things:

And, finally, this is definitely not how one wishes an argument to be perceived by a court:

Costs

The chapter on costs is noteworthy; ¶¶75-77 on pages 119-121. In the statement of claim, Pear had assumed the value in dispute as kCHF 250. In turn, Apple held in the statement of defense that this was much too low — and assumed CHF 5m. Apparently, Pear did not object in the reply but rather held:

It is not surprising that the defendant concedes that the amount in dispute is too low.

No wonder that the FPC assumed 5m as the value in dispute.

Given the outcome of the proceedings, that’s quite costly for Pear: The court fee is set at kCHF 100. In addition, Pear has to pay a compensation to Apple for legal representation (kCHF 100) and necessary expenses for the assistance of patent attorneys (yet another kCHF 100).

Presumptions re obviousness

I feel there’s a new paragraph in the presumptions on obviousness:

Presumptions are here to stay. Thus, it’s worth having a closer look. The first sentence is pretty straight forward. Fn 43 (erroneously) refers to the EPO Guidelines G-V, 5.1 (there is no G-V, 5.1). Clearly, G-VII, 5.1 is meant:

The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention.

I agree.

The second sentence of the new paragraph addresses prior art documents that contain several (discrete) embodiments. In my mind, this is inspired by the scissor catalogue situation of T 305/87 (without mentioning the decision, though). That decision was about novelty. And about a document that essentially consisted of discrete embodiments only (various scissors in a catalogue). The gist is that one cannot just pick and choose features from two distinct embodiments, scramble them together and then argue for lack of novelty. That’s common sense, I’d say.

But I wonder whether it is universally true to say that, whenever there are two or more discrete embodiments (in whatever document), only one single embodiment in isolation is a specific combination of features. That may be true for a scissor catalogue. Not so much for, e.g., a typical patent document. I believe that one has to read/understand specific embodiments of, e.g., a patent document in the context of the whole disclosure of the document. In the assessment of novelty, it is commonly accepted (I think) that the disclosure of a specific embodiment in a patent document may well be supplemented with features from the general specification, provided that the embodiment is representative of the general technical teaching of that document. Importantly, it suffices for such a combination being permissible that there are no reasons which would prevent a skilled person from such a combination. An explicit pointer for such a combination is not necessary. See e.g. T 332/87, r. 2.4 (also cited in the Case Law book in chapter I.C.4.2, 5th para.)

The same standard of disclosure should be applied when defining the specific set of features that is taken as the closest prior art in the problem-solution approach. (Else, we were in real trouble.)

Which brings me to the last sentence of the new paragraph. (Btw, the fn after the last sentence refers to O2017_007, r. 65 f. Don’t look there; it’s r. 54.) It uses the common terms directly and unambiguously — which are non-controversial per se. But I think it is important to keep in mind what that means in the context of specific embodiments in, e.g., patent documents: The general specification may well be used to supplement an embodiment with additional features taken from the general specification, provided that the embodiment is representative of the general teaching of the document. That’s sufficient to establish a direct and unambiguous dicslosure of the combination of features.

It will be interesting to see how the FPC actually applies this new paragraph in the presumptions on obviousness. It’s been uncritical in the case at hand.

✍ MW

PUBLICATION ON

BIBLIOGRAPHY

Case No. O2020_014 | Judgment of 2 October 2023 | ‘iMessage’ | not yet final

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

JUDGMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

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Pear ./. Apple: A hefty dossier is coming to a close

Est'd reading time: 4 mins

Case No. 02020_014 | Hearing  of 12 June 2023 | ‘iMessage’

reappearing …

This case pops up every now and then. It is an infringement case between Pear and Apple about a feature of Apple’s iMessage service that began in 2020; see this Blog here for some background information. Of the currently pending cases at the FPC, this one has been pending the longest — but the end ist near. Both patents in suit have lapsed already; EP 1 838 074 B1 and EP 1 208 687 B1. It’s all about damages for past infringement, if any.

Putting it simple, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the word is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network.

now, what?!

From the announcement of the hearing, one may catch a glimpse of Apple’s defense: Infringement is disputed (unsurprisingly), and nullity of both patents is asserted as a plea in defense. More specifically, Apple holds that the subject-matter of the independent claims is anticipated by at least US 5,805,981, EP 851 649 A2, WO 97/17681, WO 99/37105 and the Nokia 3210 manual. Obviousness in view of the GSM technical specification 03.38, the IBM Simon manual (touted as the world’s first smartphone) and US 5,784,001 are further lines of defense.

The patents in suit refer to a mobile telephone in the independent claims. Back in the days, at the end of the last century when the patents were filed, mobile phones looked a little different than nowadays. So, what about this disclosure in the prior art:

Does this disclose a mobile telephone? Not in Pear’s view.

At the hearing, both sides accused each other of inflating and dragging out the proceedings. In the rejoinder, Pear apparently defended EP 074 in no less than 50(!) limited versions, but focused only on five of them in their pleadings. Sounds like a hefty dossier, doesn’t it? We shall see how this will be dealt with in the final judgment.

The technical opinion of the judge-rapporteur has likely been unfavorable for Pear. How else could one explain that they called his technical expertise into question?

Needless to mention that no settlement was reached at the hearing. The judgment is unlikely to be handed down before the fall of this year.

✍ Christoph RENELT / Martin WILMING

BIBLIOGRAPHY

Case No. 02020_014 | Hearing  of 12 June 2023 | ‘iMessage’

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ANNOUNCEMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

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Pear sued Apple for patent infringement: iMessage service at stake

Reading time: 5 minutes

Case No. 02020_014 | Order of 4 January 2022 | ‘iMessage’

Apple logo

We have reported about a first excursion of this docket to the Supreme Court already on this Blog here. At that time, the parties and the subject-matter at stake remained unclear. Meanwhile, the dust has settled (at least a little). The FPC has published a procedural order earlier today, finally revealing the parties. Various entities within the Apple group of companies have been sued for patent infringement. The plaintiff is Pear AG, a company that I had never heard of before.

no apple

From the subject-matter discussed in the order, I conclude that Apple’s iMessage service is at stake. The patents are not specifically mentioned in the order, but Pear is registered owner of only two patents in Switzerland, making the math easy since it was known already from the Supreme Court judgment that two patents are asserted. Pear’s two patents are EP 1 838 074 B1 and EP 1 208 687 B1. The initial applicant was Freie Erfindungskünstler® GmbH (I did not make this up!). Both patents have lapsed already, on 11 May 2020 (EP 074 is a divisional of EP 687). Accordingly, an injunction is not at stake anymore; the whole case is about damages — if the patents were valid and infringed.

In broadest sense, the patents relate to methods for the transmission of information from one mobile phone to another, wherein e.g. an emoji is not being transmitted as such between the two devices, but rather as a sequence of signs (e.g. as a descriptive word); see claim 1 of EP 687 and claim 1 of EP 074. The respective emoji associated with the word is read out from a local memory at the receiving mobile phone, thereby eliminating the need for actually transmitting the more extensive image data via the mobile network. This is my favorite example:

Sending ‘beer’ over the network instead of the extensive image data …

Now, what is the procedural order all about?

Apple had requested that an affidavit of Mr Kevin LINDEMAN shall be made available to the plaintiff only for inspection, with the obligation to not copy it, not to provide it to third parties or to use it for any other purposes than the present proceedings:

Message logo

In principle, protective measures are foreshadowed in Art. 156 CPC and Art. 68 PatA, in order to safeguard trade secrets. The FPC served the plaintiff with the affidavit, provisionally with the protective measures in place, and gave the plaintiff the opportunity to comment. The order holds that neither the position and responsibilities of Mr LINDEMAN (essentially also available on LinkedIn) nor technical informations contained in the affidavit were of sensitive nature; the latter being either self-evident for any layman or at least for any technically skilled person, or from Apple’s patent families naming Mr LINDEMAN as inventor. Including this one:

Accordingly, the provisional protective order has been lifted again.

Unsurprisingly, the order holds that court fees will be dealt with in the final judgment. However, the order also holds that Apple’s request for a protective order incurred ‘unnecessary costs’ for Pear to comment on it; Art. 108 CPC. Accordingly, Apple has to pay Pear a compensation of CHF 1’000,–. Apple will likely not even notice, but I find this somewhat harsh(?). Even though the request was unsuccessful on the merits, Apple may well have considered it necessary to defend a legitimate interest. Anyway, that’s a sideshow. The final judgment will be a lot more interesting. 

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 02020_014 | Order of 4 January 2022 | ‘iMessage’

Pear AG
./.
(1)
(2)
(3)
Apple Inc.
Apple Distribution International Ltd
Apple Retail Switzerland GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Peter RIGLING

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ORDER OF THE FPC

SUPREME COURT JUDGMENT

PATENTS IN SUIT

EP 1 838 074 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

EP 1 208 687 B1:

Please consult the EPO Register and Swissreg for status / bibliographic information.

INVENTOR LINDEMAN

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How close can you go?

Yet another case of potential interest for trademark aficionada. /MW

Case No. B-1176/2017 (FAC) | Decision of 10 January 2019

Apple surely is one of the most iconic brands. The look and feel of Apple is still pretty unique, in my perception. But every successful brand is challenged once in a while, and this is very likely not the first time that Apple intervenes against others using or claiming ‘their’ bite in something.

Still, this is a special one. Apple lodged a trademark opposition based on its older trademarks CH P-502’206 (which is the iconic apple with a bite); and CH 640’382 (which apparently is only the leaf thereof):

The trademark in dispute was the Swiss part of IR 1’292’997 that incorporates some elements of Apple’s trademarks:

IR 1’292’997; j (fig.)

Still, Apple’s attempt to get the trademark canceled had been unsuccessful in first instance at the IPI (order of 24 January 2017; unpublished). Apple appealed — and lost again at the FAC; decision of 10 January 2019.

In a nutshell, the FAC held that despite some visual similarities of the trademarks, there was no likelihood of confusion. First, the characteristic feature of the CH’206 trademark, i.e. the apple, is not found in the trademark in dispute. And second, even though CH’382 is identically featured as a minor part of the trademark in dispute, its overall visual appearance is different; the FAC held that the leaf is only a trivial symbol, and its distinctiveness is low.

Noteworthy, the defendant did not participate by any means in the proceedings, neither in writing nor at the hearing.

iGod

The present trademark dispute was not the first clash of the parties. The trademark owner and his brother founded a company in Italy that is named after Apple’s godfather Steve JOBS who sadly passed away in 2011 at the age of only 56: The name of the company is Steve Jobs Inc. (no kidding!).

What likely had raised even more concern in Cupertino than the mere logo and the name of the company was the registration of the logo combined with the name ‘Steve Jobs’ as an EU trademark (No. 011041861).

Apple’s opposition against the stylized trademark had been rejected by an opposition division of the EUIPO already in 2014.

And, even worse: The brothers also got an EU trademark with just the words ‘Steve Jobs’ registered (No. 011687316). I could hardly believe it, but it seems to be true: Apple never applied for a trademark ‘Steve Jobs’. The plain ‘Steve Jobs’ trademark remained unapposed.

Steve Jobs Inc. apparently started with fashion. With jeans! I cannot recall a single keynote given by Steve JOBS without his jeans …

Jeans by Steve Jobs Inc.

Steve Jobs Inc. seemingly envisages to step onto Apple’s home turf with electronics and smartphones; see this report in ‘The Telegraph’ of 29 December 2017.

I cannot help but wonder whether we will see additional action taken by Apple against Steve Jobs Inc.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. B-1176/2017 (FAC) | Decision of 10 January 2019

Apple Inc.
./.
Vincenzo BARBATO

Panel of Judges:

  • David ASCHMANN
  • Maria AMGWERD
  • Pietro ANGELI-BUSI

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Apple:

FULL TEXT DECISION

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