The Apple iPhone has popularised the use of a pinch gesture using two or more fingers to increase the size of text, a photo or other data on a screen.

Is the pinch intellectual property? In other words, is it an asset for which Apple can claim a monopoly right of ownership? Some bloggers think so, but given the reality of patent litigation caution is required. This post explains why.

To rousing applause, in January 2007 Apple’s CEO, Steve Jobs, demonstrated the pinch on an iPhone. By early 2007 Apple claimed it had filed over 200 patents for iPhone. Apple’s smartphone was launched in the US on 29 June 2007.

Two years later, on 20 January 2009 Apple’s pinch-related iPhone patent application was accepted and US patent #7,479,949 was granted. Listed at the top of the list of its inventors was Mr Jobs.

"clueless_film_poster"Journalistic thought bubbles have emerging in some major IT blogs that perhaps the iPhone pinch gesture is being pinched by the recently announced Palm Pre (a competitor to the iPhone).

One meaning of “pinch” in British and Australian English usage is to snatch or steal. So is the multi-touch gesture being so pinched or are the bloggers clueless so far as patents are concerned?

On 26 January 2009 bloggers monitoring nanosecond developments in Silicon Valley reported the US patent grant to Apple. The patent specifications are 358 pages.

Working to tight deadlines it’s understandable that some news rather than magazine bloggers oversimplify the patent law position. Being a magazine-style IP blog, Lightbulb has the benefit of time for reflection.

Posts in VentureBeat and Mashable on 26 January 2009 ask whether the new Palm Pre is a stillborn device. It is yet to be made available for sale, like the iPhone it’s been announced before its release. The bloggers implied thought bubble is that a patent for Apple for multi-touch might lock out Palm and other makers of smartphones or mobile devices.

However, the bloggers are only telegraphing one of many aspects to the story of how patent battles and IP strategy are played out.

“Despite surviving examination in the PTO [US Patent and Trademarks Office], an issued patent, once it becomes the subject of litigation, has an almost fifty-fifty chance of becoming ruled invalid by a trial court.” This is the view of Prof. Goldstein, a prominent US IP academic, on page 38 of his book Intellectual Property: The Tough New Realities That Could Make Or Break Your Business (New York: Portfolio (Penguin Group), 2007).

Goldstein adds, “Only 1.5% of issued patents [in the US] become the subject of litigation; only 0.1% are litigated to trial; and courts hold about 45% of all litigated patents invalid.”

Without these Goldstein numbers posts about patents can be almost clueless. The numbers point to deeper complexity at work. They point to a need to think through multiple dimensions. “There’s two side’s to a story,” is wrong. There’s many more dimensions. It’s not just iPhone verses Palm Pre.

The Wikipedia entry for multi-touch lists numerous predecessors to Apple in the use of multi-touch as a technique for using IT.

For example, while a Microsoft video demonstrating that Windows 7 will have multi-touch was only released as late as mid-2008, there’s a Microsoft technology that goes further back.

Though unveiled in May 2007, the Microsoft Surface involved multi-touch work at Microsoft going back years. It would matter in US patent law terms if the work involved invention before the relevant date of invention for the Apple multi-touch technology. (Unusually, US patent law awards on the basis of the first to invent, not the first to file a patent application, as is the case in Australia and most of the world.)

To shed more light on the patent law implications of Microsoft technology on Apple’s patent, Lightbulb would need a thorough patent search and one or more patent attorney expert opinions.

"iphone_patent_header"The search should uncover more facts related to the history of the invention of the iPhone as recorded for example in Wired magazine.

A Wired article of a year ago (Can Apple Patent the Pinch? Experts Say It’s Possible) postulates: “The company [Apple] is thought to have secured much of its multitouch and gesturing technology by acquiring a company called FingerWorks. Its founders, Wayne Westerman [emphasis added] and John Elias, have continued working for Apple and filing multitouch patents.”

“As far back as 2004, Apple had begun filing applications for multipoint touchscreens and gestures connected to those touchscreens, including the pinch as well as other important usability features. All together, there are around 200 patents filed for the iPhone alone.”

As possible confirmation that maybe the germ of the iPhone multi-touch technique comes from outside Apple, Lightbulb notes that a Wayne Westerman is listed among the inventors of Apple’s new patent #7,479,949. Hence it may be the case that Apple bought some or critical parts of the iPhone’s multi-touch capability from outside Apple.

In patent strategy it is common to buy or license third party IP. Technology protected by IP is bought or licensed for a variety of reasons:

  • to acquire the technology and its associated IP,
  • to acquire the earlier date of invention of the technology and IP so as to use that date in a defense against claims by others,
  • to cross-licence patents to neutralise potential grounds for disputes between competitors,
  • to cross-licence patents to lock out new comers, competitors or others, or
  • to strengthen the IP legal foundation for the technology for business valuation reasons etc.

The full multi-touch story has yet to be written. It is no doubt partly locked up by confidentiality agreements.

When the story is written, it will once again illustrate that patents should be led by technology and legal strategy. There’s an academic field of study that would agree with that, it’s called technology management. It preaches that a long-view is usually appropriate for technology, intellectual property and litigation strategy. Same goes for patent costs. Despite their increasing costs and complexity, Lightbulb remains a great advocate for patents and litigation when appropriate.

UPDATE 30 January 2009: To go more into depth on the patent claims Engadget engaged Mathew Gavronski, patent attorney in the Chicago office of Michael Best & Friedrich. He has contributed to an easy to read post on Engadget on the Apple vs Palm story. The post is supported with very useful videos.


Graphic credit: Film poster for Clueless. This 1995 comedy was based on Emma by Jane Austen. It was set in a Beverly Hills high school and was the first major Hollywood film to demonstrate teenager use of mobile phones.

Noric Dilanchian