OVERVIEW:
Mirror Worlds, LLC had patents with claims directed towards storing computer files in a chronological order based on a time stamp instead of the conventional name of the computer file. By keeping track of all the documents on a computer in a chronologically ordered stream, Mirror Worlds stated that the invention enhances the quality of a user’s experience. The claims in Mirror Worlds patent required a “cursor or pointer” and to generating a glance view of a particular document in the stream without clicking on the file. Mirror Worlds sued apple under the theory of equivalents arguing that a gesture on the screen of a touchscreen device is equivalent to a “cursor or pointer.”
Under the doctrine of equivalents, “a product or process that does not literally infringe . . . the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the pat-ented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997). A patent is infringed under the doctrine of equivalents if any difference between a given limitation in the asserted claim and the corresponding element in the accused device is insubstantial. Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008). Alternatively, “an element in the accused device is equivalent to a claim limitation if it performs substantially the same function in substantially the same way to obtain substantially the same result.” Id. (citation omitted). Regardless how the equivalence test is articulated, “the doctrine of equivalents must be applied to individual limitations of the claim, not to the invention as a whole.” Warner-Jenkinson, 520 U.S. at 29.
The court held that Mirror Worlds failed to present substantial evidence to establish equivalence because the claims require a cursor and a system that responds to the sliding without clicking of the cursor over the stack generating a glance view of the document. The court noted that Mirror Worlds failed to show equivalence of the “cursor or pointer,” and therefore the court need not consider the second component.
AUSTIN PATENT ATTORNEY TAKEAWAYS:
1) In today’s world where many software patent applications may be used on mobile devices as well as laptops/desktops, it is important to realize that mobile devices do not use the traditional gesture mechanisms. Therefore, patent attorneys should draft claims broadly for gestures that may be used be an end user. For example, patent attorneys may use the language of “performing an action on a graphical user interface” instead of stating a limitation with a “pointer or clicker”.
2) On top of using a cursor, many desktop computers now also use touchpads/hot keys. Therefore, by including the language of a cursor there are easy design arounds.
3) With new voice activated commands such as “Siri” it may be important to draft claims towards actions that may be performed via voice commands, such as drafting claimed limitations as “receiving a command configured to…” This broad language would cover voice commands as well as interactions performed on a graphical user interface.