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Apple iPhone vs. Microsoft Surface – Who Wins A Patent Showdown on Gesture?

By Brian Prentice | May 13, 2009 | 6 Comments

The Future of Ownership - IP & IT Industry

Today, TechCrunch columunist MG Siegler was conjecturing on the potential of a patent lawsuit between Apple and Microsoft. This, he reasoned, could result from Microsoft using their multi-touch technology in a potential Windows Mobile 7 device which was reported today by Mary-Jo Foley.

Both Apple and Microsoft have done quite a lot to advance the state of haptic interfaces. And, as any self-respecting modern vendor would do, both have sought patents on their innovations. In the case of Apple it’s the patents they’ve filed in relationship to the gesture recognition system currently in the iPhone and iPod touch and with Microsoft it’s the surface computing technology currently associated with Microsoft Surface and soon to be seen with Windows 7.

But I’m not particularly interested in whether a courtroom battle between Apple and Microsoft is likely. Instead, I’m wondering how this would be impacted by an extension of the Bilski particular machine test.

Back in October of last year, for those of you not in the know, the Court of Appeals for the Federal Circuit ruled In re Bilski that a business method could only be patented if it was implemented on a “particular machine” or it transformed a particular article into a different state or thing.

Now there are two open questions with the Bilski decision. First, will these same tests end up being applied to software patents? Based on recent rulings by the Board of Patent Appeals and Interferences it appears things are trending in that direction. Second, does a general purpose computer constitute a particular machine? While the court dodged that question in the Bilski ruling it appears that the US Patent & Trademark Office would prefer it the answer to that questions was no.

So here’s the question I’m struggling with – is the iPhone and/or the iPod Touch a particular machine? I certainly wouldn’t classify it as a general purpose computer so I’m assuming the answer to that question is yes. Therefore, if the Bilski particular machine test applies to software it would seem that Apple’s patents would be safe.

But would the same apply to Microsoft’s multi-touch patents? While Microsoft Surface can probably be argued to be a particular machine (it is a specific-built solution requiring custom motherboards) that would clearly not be the case in relationship to the implementation of this technology in Windows 7 or even with a Windows Mobile device.

If this turns out to be the case I think the ramifications are pretty serious.

The issue here is not whether Apple is innovating and Microsoft is not. On face value both are innovating. But Apple’s business model of tightly binding their software to their own manufactured products seems to help them overcome the emerging particular machine hurdle. Microsoft, with their business model of licensing software to OEMs, appears to be more exposed to having their patents invalidated.

Like Microsoft or not, there is no denying that their business model has been instrumental in lowering software costs and driving the prevalence of personal computing. If that business model ends up making it more difficult for Microsoft to protect their growing patent portfolio it would be very interesting to see how Microsoft responds.

I am not a big fan of the Bilski ruling. But if it’s impact ends up being more acutely felt on the business models necessary to commercialize innovation than on innovation itself it, that would seem to me yet another reason to find fault with it.

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  • les says:

    Whether the Iphone is a particular machine is not important. What is important is whether any of the claims in the subject patent are interpreted to recite a particular machine.

    Since the interface in question need not be tied to a particular machine ( since it might come in handy on an ebook reader or a gps device or a camera), a claim that recited one would be overly limiting and not give the inventor the protection to which he/she is really entitled.

    Which is exactly why the decision in Bilski is ridiculous and will eventually be overturned or fixed by legislation.

  • Les – thanks for your insight. That sure sounds like a “damned if you do, damned if don’t scenario.” Either recite a particular machine and risk your invention through market dynamics or don’t recite a particular machine and risk your innovation through loss of patent protection.

    Regardless of where one stands on the issue of software and business method patents I think we can all agree that maintaining both as patentable material but with ambiguous conditions that require highly subjective interpretation by the bureaucracy is a terrible outcome.

    Thanks to Bilski that seems to be the emerging scenario.

  • Les says:

    Just as an update re: my assertion that Bilski would be overturned or fixed by legislation:

    Yesterday, the Supreme Court agreed to hear Bilski’s appeal:

  • Brian Prentice says:

    Les – yes, I saw this earlier today. This will be very interesting to follow

  • good post thanks for sharing….

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