Apple is Forced Into Multi-Touch Settlements, Tastes its Own Medicine

Back in 2003, Elan Microelectronics Inc. (TPE:2458), a small but enterprising hardware startup had a very good idea.  What if you could control your computer not just with a touchpad, but with a touchpad that took multiple touch inputs and responded differently to different “multi touches”.

I. Close, but no MacBook

Elan used a technology called “projective capacitance” to make the idea a reality.  Projective capacitance involves using a series of wires to sense press on a screen.  Presses subtly bend the wire down towards a bottom, charged layer.  The result is that the measure capacitance fluctuates.

The company filed its patent back in Sep. 2003.

Soon it was producing perhaps the first glass multi-touch displays, and selling them to top companies like Micro-Star International Comp., Ltd. (TPE:2377).  

But it would get no contract from Apple, Inc. (AAPL) who instead hooked up with Synaptics (SYNA), a Calif.-based touchpad firm.  To Elan’s frustration, Synaptics’ new touch technology was almost identical to its own found on the MSI notebook and other laptop designs.

Synaptics introduced multi-touch on its Macbook TouchPads as early as 2006. 
[Image Source Notebook Review]
II. The iPhone Snub

And then there was the issue of a certain iconic gadget.  Apple had already been building up its own little multi-touch stable.  It had brought in TPK Holding Comp., Ltd. (TPE:3673) and Optera (a small U.S. display firm) to supply the multi-touch hardware for a secret project in 2006 [Sources: 1, 2].  To supply the software, it in 2005 bought a company called FingerWorks, which had implemented and slightly expanded on some of the multi-touch gestures published by Bill Buxton back in the 1980s.  But one player was noticeably absent from this multi-touch “dream team” — Elan.

Anyhow, that secret project would go on to create little bit of a splash — it was called the iPhone.

[Image Source: Getty Images]
Scorned yet again, Elan claims it contacted Synaptics about licensing and pointed out that it owned patents on the multi-touch technology — two important ones to be precise (U.S. Patents 5,825,352 and 7,274,353).  Soon after it would sue Synaptics.  

Around the same time it reportedly contacted Apple about the iPhone snub, giving it the same message — saying that it was fine with others producing the iPhone multi-touch screen, but that it was entitled to a piece of the pie.  Allegedly, Apple, who refused to pay up, yet again snubbed it.

It was about at that point that it finally dawned on Elan that Apple wasn’t ever going to willingly license, and that its patents on “projected capacitance” technology weren’t going to enjoy any small fraction of Apple’s billions in iPhone profits, without drastic action.

III. Vindication

In 2008, after the U.S. International Trade Commission granted a preliminary injunction against Synaptics’ imports of touchpads; Synaptic agreed to a confidential payout to Elan. 

Emboldened by its success, Elan shacked up with Android, starting to produce screens through various arrangements with device manufacturers and other firms.  That same year in April it decided to hand Apple a U.S. ITC trade complaint lawsuit [PDF] over the iPhone.  Apple wasn’t to inviting to this idea, and it sued right back, smacking Elan with claims that it infringed on U.S. Patents 7,495,659 (which covers touchpad packaging) and 6,933,929 (which covers a touchscreen implementation).

Elan’s capacitive multi-touch (left) versus Apple’s multi-touch (right). [Image Source: USPTO]
Apple soon withdrew the second patent from the claim.  To be honest, both patents essentially claimed the same thing and Apple’s was first, if a bit more ambiguous upon thorough inspection.  Apple’s ‘659 patent, filed in June 2002, described in ambiguous terms supporting hardware and software for a projected capacitance touch sensor interface, while Elan’s ‘353 patent, filed in Mar. 2003, described in slightly less ambiguous terms a design for the capacitive sensor itself, and in equally ambiguous terms the design for the supporting circuitry and software.

It’s important to note that neither company’s patent explicitly mentions “multi touch” or “multi-touch”, but both companies claimed their patents claimed ownership of the same aspect of multi-touch (the hardware side) given that it was a seemingly obvious conclusion that if you could detect one touch event via multiple changes in wire capacitance, you could detect more than one touch event by even more changes in capacitance.  Such an approach would likely require seemingly obvious additions — a finer grid of transparent wires and some basic software logic to detect, file, and send out multiple touch events from the I/O device to the CPU.

But curiously Apple backed down in its countersuit.

IV. The War of Attrition

Elan lost its first round in April of this year before a U.S. ITC judge, who ruled that Apple had not infringed on Elan’s patent — in contrast to the court’s earlier ruling against Synaptic.  In August the full panel declined to review the decision [PDF], basically ruling “game over” for Elan in terms an import ban.

But Elan still had one remaining option — the old fashioned route of suing Apple in standard federal civil court.  It was beginning to prepare for the suit, when apparently Apple finally reached out and agreed to a semi-confidential settlement.  Apple will pay Elan $5M USD in licensing fees (and possibly undisclosed court fees) plus license its multi-touch patents to Elan.  In return, Elan will license its multi-touch patents to Apple.

The settlement is pocket change to Elan, but it could give the firm a competitive advantage over rivals in the increasingly crowded multi-touch manufacturing market.  Since it has an agreement with Apple, that means that Apple will have trouble suing any Android phone makers who use Elan’s displays [1][2][3][4] [5][6][7][8] [9][10][11][12] [13][14].

Granted it’s unclear whether Elan has gained licensing rights to some of Apple’s small stable of software multi-touch patents.  To be fair, these patents are surprisingly not as strong as they have been portrayed upon close inspection, which is probably why Apple has declined to use them in its anti-Android lawsuit crusade.

For example the most famous of the multi-touch patents is U.S. Patent 7,966,578, which was granted in 2009.  The patent does not cover pinch-to-zoom, though it does provide a single trivial iterative improvement on the 1980s software designs of Bill Buxton, who at the time consider the multi-touch gestures too obvious to patent, instead publishing his work in an academic setting.

While a number of academics and industry players at the time could claims some degree of ownership for developing multi-touch software, Bill Buxton was by far the most prominent inventor of the kinds of gesture-driven navigation we today know as “multi-touch”
[Image Source: The New York Times]
The single feature in the patent is the ability to scroll on a piece of content using one finger, and then use two fingers to move a piece of sub-content within a specific piece of content.  How this one sentence became pages and pages of verbose jargon is a compelling question.  But it’s pretty clear that this feature isn’t found almost anywhere in Android, and that if Apple ever did try to use this in litigation, that it would be at high risk of invalidation do to the obvious nature of the software algorithm involved, which could be implemented by an experienced programmer in under 15 minutes.

To head off claims that Elan is just a non-productive “patent troll” like NPR alleged Intellectual Ventures to be, the company actually is actively producing touch screens.  It just recently released a line of Windows 7 certified touch panels, and it also supplied the touchpads for ASUSTek Computer Inc.’s (TPE:2357) popular Eee PCs.  

V. Projective Capacitance — Inside the USPTO’s Web of Redundancy

Multi-touch is an interesting creature in that so many people claim to own rights to it or some redundant aspects of it, including Apple, Synaptics, Elan, and 3M Comp. (MMM).  

The issue of redundancy is extreme in the field of projected capacitance touchscreens.  For example Synaptics claims two patents on slightly different versions of the technology — U.S. Patents 5,543,588 and 7,129,935 — the first of which uses transparent wires and diamond elements in the backplane. 

3M claims yet another on its 2001-era MicroTouch design (U.S. Patent 6,819,316).  This patent uses a solid top conductive layer, with a bottom set of square electrically distinguishable square sensors.

Synaptics filed patents way back in the 1990s on projected capacitance, while 3M filed a slightly modified scheme in 2001. [Image Source: USPTO]
Together, these two companies appear to possibly have the most legitimate claim to project capacitance and hence the underlying hardware of multi-touch, but ironically neither 3M nor Synaptic has been particularly aggressive in suing people over the patents.  However, essentially minor redesign “repeats” of those early patents have been granted to companies like Elan (who uses a grid of two perpendicular sets of parallel transpare wires in the ‘353 patent) or Apple (in the ‘769 patent).  At least the U.S. Patent and Trademark Office helpfully flagged the Apple patent as A1 indicating a similar prior patent (or explicitly “Pre-grant publication available March 2001”). 

But the question remains that other than to gain increased fee collection, what gains are to be had for the USPTO to allow redesigns of essentially the same design — either a matrix bottom layer or a grid/patterned bottom layer, combined with a top layer of transparent wires or a solid plane.  What results is a game in which companies like Apple and Elan are taking the wheel and adding a new rubber tread pattern to it and then claiming to have invented the wheel.

VI. Beware Critics, This is Not the Example You’re Looking For

Further worsening the situation is the fact that no one has every really clearly told the public the difference between these early examples of projective multi-touch, and other fundamentally different methods, such as the light-driven frustrated total internal reflection (FTIR).

FTIR caused a stir when it was first demoed in tabletop form by 2006 TED multi-touch presenter Jeff Han, a New York University professor who later would patent the technology and spin off a startup Perceptive Pixel, which is still trying to shrink the tech to the more useful form factors.

As the demo is pre-iPhone, many erroneously bring it up as proof of prior art, although it’s not really anything of the sort hardware-wise.  This is unfortunate given that there are so many good prior art examples as described in the previous section.

When examples like FTIR get brought up as proof of the invalidity of Apple, et al.’s multi-patents, it just confuses the issue.  There are several fundamental unique multi-touch technologies — two of which are FTIR and projected capacitance.  With the smartphone industry focused almost solely relying on projected capacitance, it is here that scrutiny should be focused in terms of cleaning up the mess of redundant patents and resulting piles of litigation.  Doing so is pretty important given that these long dragged out legal wars gobble up taxpayer dollars in Judge fees and stifle free trade.

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