United States Court of Appeals 

for the Federal Circuit ______________________ 

APPLE INC.,

Appellant,

v.

 INTERNATIONAL TRADE COMMISSION,

Appellee,

AND

 MOTOROLA MOBILITY, INC.,

Intervenor.

______________________ 

2012-1338 

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-750. 

______________________ 

Decided: August 7, 2013 

______________________ 

E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe, LLP, of New York, New York, argued for the appellant. With him on the brief were MARK S. DAVIES, RACHEL 

M. MCKENZIE and T. VANN PEARCE, JR., of Washington, 

DC. 
2 APPLE INC. v. ITC

MEGAN M. VALENTINE, Attorney Advisor, Office of 

General Counsel, United States International Trade 

Commission, of Washington, DC, argued for appellee. 

With her on the brief were DOMINIC L. BIANCHI, Acting 

General Counsel, and ANDREA C. CASSON, Assistant 

General Counsel for Litigation. 

DAVID A. NELSON, Quinn Emanuel Urquhart & Sullivan LLP, of Chicago, Illinois, argued for intervenor. With 

him on the brief were CHARLES K. VERHOEVEN, of San 

Francisco, California. Of counsel on the brief were

EDWARD J. DEFRANCO, ALEXANDER RUDIS and MATTHEW 

A. TRAUPMAN, of New York, New York. 

______________________ 

Before MOORE, LINN, and REYNA, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge REYNA. 

MOORE, Circuit Judge.

Apple appeals from the final decision of the International Trade Commission (ITC) that the asserted claims of 

U.S. Patent No. 7,663,607 (’607 patent) are invalid and 

that Motorola does not infringe the asserted claims of 

U.S. Patent No. 7,812,828 (’828 patent). Apple challenges 

the ITC’s claim construction and its determinations of 

obviousness, anticipation, and noninfringement. For the 

following reasons, we affirm-in-part, reverse-in-part, and 

vacate-in-part the ITC’s decision and remand for further 

proceedings. 

BACKGROUND

This patent case involves smartphone touchscreens. 

The ’607 patent discloses a touch panel with a transparent capacitive sensing medium that can detect multiple 

touches at once. ’607 patent, at [57]. To achieve the 
APPLE INC. v. ITC 3

multitouch functionality, the touch panel employs a 

matrix of electrodes connected to circuits that measure 

the change in charge that occurs as a result of pressure 

applied to the screen. Id. col.5 l.27–col.6 l.7. The pressure-induced change occurs because the electrode rows 

are in a different layer than the electrode columns. Id.

col.5 l.15–col.6 l.18. When a user touches the screen, the 

pressure applied at each intersection point causes charge 

to flow between the electrodes at that node. Id. Measuring circuits connected to the electrodes scan the matrix 

and measure the displaced charge at each node. Id. By 

detecting these changes, the touch panel can determine if 

and where a user has touched the screen. Id. 

The ’607 patent also discloses how to make the 

touchscreen transparent. It teaches constructing the 

electrodes with indium tin oxide (ITO), a transparent 

material. ’607 patent, col.12 ll.35–52. But simply forming 

the electrodes from ITO may not render the matrix invisible because the ITO electrodes tend to be less transparent 

than gaps in the electrode matrix. Id. col.14 l.60–col.15 

l.23. To remedy this problem, the patent teaches the use 

of “dummy” ITO pads to fill in gaps in the matrix. Id.

col.15 ll.8–24. By inserting these pads in the matrix gaps, 

the matrix has the optical properties of a uniform sheet of 

ITO and thus becomes invisible to the user. Id.

The ’828 patent discloses a method to determine if the 

displaced charge at the nodes corresponds to a finger 

touching the screen. It teaches that the touch panel 

software “mathematically fit[s] an ellipse” around the 

nodes at which the measuring circuits have detected a 

touch. ’828 patent, figs. 13–15, col.60 l.5–16. Performing 

the “fit” allows the device to determine if pressure applied 

to the screen constitutes a finger touch as well as track 

the movement of the finger across the touchscreen. Id. at 

[57]. 
4 APPLE INC. v. ITC

Apple initiated proceedings in the ITC, alleging that 

Motorola’s smartphones and tablets infringed various 

claims of the ’607 and ’828 patents. Apple alleged that 

Motorola infringed claims 1–7 and 10 of the ’607 patent 

and claims 1, 2, 10, 11, 24–26, and 29 of the ’828 patent. 

Claim 1 of the ’607 patent is representative of the asserted touch panel claims: 

A touch panel comprising a transparent capacitive 

sensing medium configured to detect multiple 

touches or near touches that occur at a same time 

and at distinct locations . . . wherein the transparent capacitive sensing medium comprises: 

a first layer having a plurality of transparent first 

conductive lines . . . ; and 

a second layer spatially separated from the first 

layer and having a plurality of transparent second 

conductive lines . . . each of the second conductive 

lines being operatively coupled to capacitive monitoring circuitry; 

wherein the capacitive monitoring circuitry is configured to detect changes in charge coupling between the first conductive lines and the second 

conductive lines. 

’607 patent, claim 1 (emphases added). Claim 10, also 

disputed on appeal, recites a similar display arrangement 

and requires the touch panel to form a “pixilated image.” 

Claim 1 of the ’828 patent is representative of the asserted claims relating to mathematically fitting an ellipse: 

A method of processing input from a touchsensitive surface, the method comprising: 

receiving at least one proximity image representing 

a scan of a plurality of electrodes of the touchsensitive surface; 
APPLE INC. v. ITC 5

segmenting each proximity image into one or more 

pixel groups that indicate significant proximity, 

each pixel group representing proximity of a distinguishable hand part or other touch object on or 

near the touch-sensitive surface; and 

mathematically fitting an ellipse to at least one of 

the pixel groups. 

’828 patent, claim 1 (emphasis added). Motorola prevailed in the ITC proceedings. While the ITC determined 

that an article describing SmartSkin, a prior art 

touchscreen system, did not anticipate the asserted claims 

of the ’607 patent, it determined that SmartSkin rendered 

those claims obvious. The ITC also found that U.S. Patent No. 7,372,455 (Perski ’455) anticipated the ’607 

patent claims. The ITC also found that Motorola did not 

infringe the ’828 patent. It construed the term “mathematically fitting an ellipse” to require the method to 

perform “a mathematical process” whereby “an ellipse is 

actually fitted to the data.” J.A. 58–70. Finding that the 

Motorola products do not fit an ellipse to the electrode 

data, the ITC determined that those products do not 

infringe the asserted claims of the ’828 patent. 

Apple appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(6). 

DISCUSSION

I. Standard of Review 

We review the ITC’s legal determinations de novo and 

its factual findings for substantial evidence. Crocs, Inc. v. 

Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010). 

Claim construction is a matter of law, which we review de

novo. Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 

1378 (Fed. Cir. 2005). Obviousness is a question of law 

based on underlying facts. Crocs, 598 F.3d at 1308. We 

review the ITC’s obviousness determination without 

deference and its factual findings for substantial evidence. 
6 APPLE INC. v. ITC

Id. Whether a prior art reference anticipates the claims is 

a question of fact, reviewed for substantial evidence. 

Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1342 

(Fed. Cir. 2010). 

II. Anticipation of the ’607 Patent: Perski ’455 

The ALJ found that Perski ’455 anticipates the asserted claims of the ’607 patent. He found that Perski 

’455 was § 102(e) prior art despite Apple’s allegation of 

conception prior to the filing date of the application that 

issued as Perski ’455. The ALJ found that the provisional 

application to which Perski ’455 claims priority, U.S. 

Provisional Patent Application No. 60/446,808 (Perski 

’808), provides written description support for the disclosure in Perski ’455. After resolving the priority issue 

against Apple, the ALJ determined that Perski ’455 

anticipates the ’607 patent claims. The ALJ found that 

Perski ’455 discloses a touchscreen that can detect multiple touches at the same time. The ITC declined to review 

these findings. 

Apple argues that the ITC anticipation findings were 

in error. It contends that Perski ’455 is not prior art 

because (1) Perski ’808 does not disclose any way to 

determine whether multiple fingers touch the screen; and 

(2) Perski ’808 does not specifically incorporate by reference the “front end” and “digital unit” aspects of U.S. 

Provisional Patent Application 60/406,662 (Morag) that 

the ALJ used to find claim 10 anticipated. 

Even if Perski ’455 is prior art, Apple argues that the 

reference does not disclose “detect[ing] multiple touches 

or near touches that occur at a same time and at distinct 

locations.” It contends that the algorithm disclosed in 

Perski ’455 cannot detect multiple touches that occur at 

the same time because it requires too much processing—

the algorithm requires at least n*m steps to accurately 

scan all the nodes in a sensor matrix containing m rows 

and n columns. Apple asserts that Motorola also failed to 
APPLE INC. v. ITC 7

present any evidence that the matrix disclosed in Perski 

’455 can accurately detect multiple touches at the same 

time because a single large touch can cause an output 

signal to be detected on more than one conductor line. 

The ITC and Motorola respond that Perski ’455 is prior art to the ’607 patent. They argue that Perski ’808 

discloses the same sensor matrix and multitouch detection algorithms as Perski ’455. Regarding claim 10, 

Motorola argues that Perski ’808 specifically incorporates 

the relevant portions of Morag. 

The ITC and Motorola argue that Perski ’455 discloses 

all of the limitations of the ’607 patent claims. They 

argue that Perski ’455 discloses a sensor that can detect 

multiple touches at the same time. They contend that the 

claims do not require a particular speed or accuracy in 

detecting the multiple touches, and regardless, Perski 

’455 discloses both “simple” and “faster” detection algorithms. Lastly, Motorola asserts that Perski ’808 discloses the exact scanning method that the ’607 patent 

discloses to “detect multiple touches or near touches that 

occur at a same time and at distinct locations.” 

As an initial matter, we agree with the ITC and 

Motorola that substantial evidence supports the ITC’s 

determination that the disclosure in Perski ’808 provides 

adequate written support for Perski ’455. Perski ’808 

provides the same multitouch scanning algorithms as 

Perski ’455. Both disclose a sensor matrix that senses a 

touch by scanning the nodes of the matrix. Both disclose 

a “simple and direct approach” in which the circuitry 

scans each node of the matrix, which requires at least 

n*m steps for a sensor matrix that contains n columns 

and m rows. Each reference also discloses the same 

“faster approach.” Specifically, each discloses scanning 

the nodes affiliated with a group of lines on one axis, 

which requires between two steps and n+m steps depending on the number of lines in the group. This faster 
8 APPLE INC. v. ITC

approach, however, is not as accurate when detecting 

multiple touches that occur simultaneously at specific 

locations. To remedy this problem, both references disclose the “optimal approach” of combining the two methods to achieve the right balance of speed and accuracy. 

Thus, substantial evidence supports the ITC’s finding 

that Perski ’808 provides written support for Perski ’455.1

We agree with Apple, however, that Perski ’808 fails 

to incorporate by reference Morag.2 For a prior art reference to anticipate a claim, the reference must disclose 

each claim limitation in a single document. Advanced 

Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 

(Fed. Cir. 2000). The prior art document, however, may 

incorporate subject matter by reference to another docu-

 

1 The dissent contends that Perski ’808 does not 

provide adequate written support for Perski ’455 because 

Perski ’808 discloses multi-touch detection only as a 

“goal,” whereas Perski ’455 “enables” the detection of 

multiple touches. Dissent at 8–9. This is incorrect. 

Perski ’808 explains that the disclosed scanning algorithms are “able to detect more than one finger touch at 

the same time.” J.A. 16152. It discloses that the 

touchscreen detector is “capable of detecting multiple 

finger touches simultaneously.” J.A. 16151. Moreover, 

Perski ’808 expressly states that “[t]he present invention . 

. . enable[s] multiple and simultaneous finger inputs 

directly on the display.” J.A. 16149. Nothing in the 

record supports the dissent’s view that the scanning 

algorithms in Perski ’808 could not detect multiple touches simultaneously. Indeed, the “faster approach” described in Perski ’808 is virtually identical to the scanning 

algorithm disclosed in the ’607 patent. 

2 Contrary to arguments by Motorola and the ITC, 

Apple raised this argument in its petition for ITC review 

and thus preserved it for appeal. 
APPLE INC. v. ITC 9

ment such that the incorporated material becomes part of 

the host document for the purposes of anticipation. Id. 

“To incorporate material by reference, the host document 

must identify with detailed particularity what specific 

material it incorporates and clearly indicate where that 

material is found in the various documents.” Id. at 1282–

83. Whether and to what extent a host document incorporates material by reference is a question of law, subject to 

de novo review. Id. at 1283. 

Here, Perski ’808 only makes a passing reference to 

Morag as a “method similar” for detecting the presence of 

a stylus. J.A. 16149. It does not affirmatively incorporate 

any information. Perski ’808 does not even refer to the 

particular functionality in Morag that detects the presence of a stylus, let alone the process that outputs touch 

event information to form a pixilated image, as required 

by claim 10. Thus, Perski ’808’s reference to Morag falls 

short of identifying with detailed particularity the material that discloses the “pixilated image” limitation in 

claim 10. Because Perski ’808 does not incorporate by 

reference the anticipatory subject matter from Morag, the 

ITC’s finding that Perski ’455 anticipates claim 10 of the 

’607 patent lacks substantial evidence. 

Having resolved that Perski ’455 is prior art for 

claims 1–7 of the ’607 patent, we conclude that substantial evidence supports the ITC’s finding that Perski ’455 

anticipates those claims. Perski ’455 discloses an embodiment in which “[a] two-dimensional sensor matrix lies in 

a transparent layer over an electronic display device” and 

a finger touch at a certain location on the matrix “increases the capacitance between the first conductor line and 

the orthogonal conductor line which happens to be at or 

closest to the touch position.” Perski ’455, col.13 ll.32–40 

(reference numerals omitted). It discloses two matrix 

scanning algorithms that are “preferably able to detect 

more than one finger touch at the same time.” Id. col.14 

ll.15–19. 
10 APPLE INC. v. ITC

As recounted above, the number of steps required to 

scan the matrix depends on the number of matrix columns and rows. The matrix disclosed in Perski ’455 has n 

columns and m rows. Perski ’455, col.13 l.65–col.14 l.4. 

Apple is correct that the slower method disclosed in 

Perski ’455 requires at least n*m steps to scan the matrix 

because it scans each node one by one. Id. col.14 ll.20–43. 

But the reference also discloses a “faster approach” that 

requires between two steps and a “maximum of n+m 

steps.” Id. col.14. ll.44–56. The faster approach scans 

groups of nodes per step, which significantly reduces the 

number of steps required to scan the matrix. Id. The 

reference also discloses a blend of the slower and faster 

approaches as the “optimal approach” to detecting multiple touches. Id. col.14 l.57–59. 

Apple fails to provide any reason why the faster or optimal approaches would be too slow or inaccurate to detect 

multiple touches or why the disclosure of Perski ’455 fails 

to enable multiple touches. To the contrary, as Motorola 

points out, the scanning algorithm disclosed in the ’607 

patent is very similar to the “faster approach” disclosed in 

Perski ’455. The ’607 patent discloses a sensing circuit 

that detects changes in capacitance at each node along n 

columns in the matrix by cycling through one row at a 

time for the m rows. ’607 patent, col.5 l.60–col.6 l.6. 

Moreover, the claims of the ’607 patent do not expressly 

contain a speed or accuracy limitation. Thus, we conclude 

that substantial evidence supports the ITC’s finding that 

Perski ’455 anticipates claims 1–7 of the ’607 patent. The 

ITC’s decision that Perski ’455 anticipates claim 10, 

however, lacks substantial evidence. 

III. Anticipation and Obviousness of the ’607 Patent: 

SmartSkin 

A. Anticipation 

Motorola argues that if we reverse the ITC’s decision 

that Perski ’455 anticipates claim 10 of the ’607 patent, 
APPLE INC. v. ITC 11

we should reverse the ITC’s decision that SmartSkin does 

not anticipate claim 10. The ALJ determined that 

SmartSkin does not disclose the use of transparent conductive lines because the reference’s statements about 

using transparent ITO conductive lines related to future 

work. The ITC declined to review the ALJ’s finding. 

Motorola argues that the ALJ erred because SmartSkin’s 

disclosure would have enabled a skilled artisan to build a 

touchscreen using transparent ITO electrodes. 

We agree with Apple and the ITC that substantial evidence supports the ITC’s finding of no anticipation. 

SmartSkin discloses an opaque surface covered with a 

grid of copper electrodes, not a transparent touchscreen 

based on ITO electrodes. In the SmartSkin system, a 

projector displays an image on the surface and circuitry 

connected to the copper electrode grid detects when a user 

touches the surface, enabling the surface to operate as a 

touch-screen. SmartSkin explains that its authors had 

developed two “working interactive surface systems based 

on this technology: a table and a tablet.” J.A. 13603. 

Figure 7 from SmartSkin shows an exemplary “table” 

system:
12 APPLE INC. v. ITC

J.A. 13599. Thus, the reference explains that the authors 

had not achieved a touchscreen employing transparent 

electrodes. 

The only discussion of transparent electrodes appears 

under the “Conclusions and Directions for Future Work” 

section, in which the authors explain that they were 

interested in future “research directions.” J.A. 13603. 

One of those directions was the use of transparent ITO 

electrodes that are “mounted in front of a flat panel 

display or a rear-projection screen.” Id. There is no 

disclosure that the authors had achieved a transparent 

touch screen and the record does not indicate that it 

would have been routine to do so. Nor is there any disclosure in SmartSkin that the matrix of ITO electrodes 

would have created the “transparent . . . layer[s]” recited 

in claim 10. Although the ITO electrodes are transparent, 

the ’607 patent explains that, when arranged in a matrix, 

“the patterned ITO can become quite visible thereby 

producing a touchscreen with undesirable optical properties.” ’607 patent, col.14 l.65–col.15 l.3. 

We do not agree with Motorola that the ITC’s determination regarding the disclosure of the SmartSkin 

reference lacks substantial evidence. Given SmartSkin’s 

limited disclosure, we decline to disturb the ITC’s finding 
APPLE INC. v. ITC 13

that Motorola failed to prove that SmartSkin anticipates 

claim 10 of the ’607 patent. 

B. Obviousness 

Despite finding that SmartSkin did not anticipate the 

’607 patent claims, the ALJ concluded that they would 

have been obvious in light of SmartSkin in combination 

with a patent application that stemmed from the 

SmartSkin project, Unexamined Japanese Patent Application No. 2002-342033A (Rekimoto). The ITC reviewed 

the ALJ’s decision and upheld it. The ITC agreed with 

the ALJ’s conclusion that SmartSkin provides a motivation to combine the use of transparent electrodes with a 

mutual capacitance sensor. The ITC also agreed with the 

ALJ’s finding that Rekimoto disclosed the limitations in 

claim 10 that are absent from SmartSkin. 

Apple argues that the ITC erred in concluding that 

SmartSkin in combination with Rekimoto rendered obvious claim 10 of the ’607 patent. Apple contends that its 

design and development story shows that a transparent 

multitouch screen would not have been obvious to those of 

skill in the art—Apple’s highly-skilled engineers had to 

extensively research and modify the copper mesh 

SmartSkin design. It asserts that objective evidence 

reinforces that the ’607 patent is not obvious. Specifically, 

Apple points to evidence that the industry praised the 

iPhone’s touchscreen; that nearly every major cellphone 

manufacturer, including Motorola, copied the iPhone’s 

touchscreen; and that the iPhone was a commercial 

success. 

Apple argues that the ITC improperly employed a 

hindsight analysis by asking whether the invention was 

different from the prior art. Second, Apple asserts that 

the ITC undervalued the ingenuity in measuring capacitance changes and hiding the ITO circuitry, both of which 

are absent in SmartSkin and Rekimoto. Third, Apple 
14 APPLE INC. v. ITC

contends that the ITC improperly ignored Apple’s objective evidence. 

The ITC and Motorola respond that claim 10 would 

have been obvious. They contend that claim 10 is not 

limited to a particular method to measure capacitance 

and does not require hiding the ITO circuitry to achieve 

complete transparency. They argue that SmartSkin and 

Rekimoto disclose every limitation of claim 10. Motorola 

argues that SmartSkin defines the same problem as the 

’607 patent—creating a multitouch surface—and provides 

the solution, including the use of transparent ITO. It 

points to emails between Apple’s engineers that 

SmartSkin “could work for multitouch input.” 

The ITC and Motorola argue that Apple’s secondary 

consideration evidence is not adequate to overcome the 

strong prima facie showing of obviousness. They argue 

that multiple patents cover the iPhone’s touchscreen and 

that Apple failed to prove nexus between the ‘607 patented invention and the commercial success. They contend 

that the industry praise for the iPhone related to features 

other than the multitouch screen and assert that Apple 

presented no evidence of copying. 

We are troubled by the ITC’s obviousness analysis. 

We have repeatedly held that evidence relating to all four 

Graham factors—including objective evidence of secondary considerations—must be considered before determining whether the claimed invention would have been 

obvious to one of skill in the art at the time of invention. 

Transocean Offshore Deepwater Drilling, Inc. v. Maersk 

Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); 

see also Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 

1379 (Fed. Cir. 2012) (collecting cases). Indeed, it is 

axiomatic that “[t]he establishment of a prima facie case . 

. . is not a conclusion on the ultimate issue of obviousness.” Transocean, 699 F.3d at 1348. 
APPLE INC. v. ITC 15

The ITC failed to follow this precedent. Prior to even 

mentioning the secondary considerations, the ALJ concluded that “the evidence clearly and convincingly shows 

that the ’607 patent is obvious in light of SmartSkin in 

combination with Rekimoto.” J.A. 216. That error warrants vacating the ITC’s decision. The ITC also concluded 

that claim 10 was obvious and issued its own findings 

regarding the first three Graham factors (rejecting some 

of the ALJ conclusions regarding the disclosures in the 

prior art). The ITC concluded that the ‘607 patent claims 

at issue would have been obvious in view of Smartskin in 

combination with Rekimoto. J.A. 529. The ITC, however, 

never even mentioned, much less weighed as part of the 

obviousness analysis, the secondary consideration evidence Apple presented. It stated only that it did not 

review the ALJ finding regarding secondary considerations. J.A. 523 n.7. This is not adequate under our law. 

The ultimate conclusion of obviousness is a legal conclusion to be reached after weighing all the evidence on both 

sides.3 The ITC analyzed only the disclosure of the prior 

art references and based solely on that evidence determined the claims would have been obvious. We conclude 

that the ITC’s fact findings regarding what the references 

disclose are supported by substantial evidence. And as 

the ALJ and the ITC found, the Smartskin reference is 

very close and expressly recommends as “Conclusions and 

Directions for Future Work” using transparent ITO 

electrodes to build a “transparent SmartSkin sensor.” J.A. 

13603. Indeed, the reference teaches that this transparent sensor could be integrated with “most of today’s flat 

 3 The dissent’s claim that objective evidence is the 

“best” evidence is not correct. Dissent at 14–15. In an 

individual case, it is certainly possible that objective 

evidence may outweigh the evidence that tends to establish obviousness. It is also possible that strong evidence 

under the first three Graham factors may outweigh the 

objective evidence. But there is no hierarchy of evidence. 
16 APPLE INC. v. ITC

panel displays” because those systems rely on an “active 

matrix and transparent electrodes.” Id. The ITC erred, 

however, to the extent that it did not analyze the secondary consideration evidence. 

This error was not harmless. Secondary considerations evidence can establish that “an invention appearing 

to have been obvious in light of the prior art was not” and 

may be “the most probative and cogent evidence in the 

record.” Transocean, 699 F.3d at 1349 (quoting Stratoflex, 

Inc. v. Aeroquip Corp., 713 F.3d 1530, 1538 (Fed. Cir. 

1983)). This evidence guards against the use of hindsight 

because it helps “turn back the clock and place the claims 

in the context that led to their invention.” Mintz, 679 

F.3d at 1378. Apple presented compelling secondary 

considerations evidence that may have rebutted even a 

strong showing under the first three Graham factors, and 

the ITC failed to grapple with it. 

For example, Apple presented evidence of industry 

praise by business publications. Time Magazine hailed 

the iPhone as the 2007 “Invention of the Year” in part 

because of the phone’s touchscreen and its multitouch 

capabilities. J.A. 7483–84. Bloomberg Businessweek 

issued a 2007 article entitled “Apple’s Magic Touch 

Screen,” in which it labeled the “sophisticated multipoint 

touch screen” as “[t]he most impressive feature of the new 

iPhone.” J.A. 7826. Around the same time, Wired Magazine recounted that, after Apple demonstrated the iPhone 

and its “brilliant screen,” an AT&T executive praised the 

iPhone as “the best device I have ever seen.” J.A. 8259 

(internal quotation marks omitted). The ITC failed to 

address this evidence and the record does not appear to 

contain any contrary evidence. 

Apple also presented evidence of copying. The ITC 

failed to address this evidence as well. 

Lastly, Apple presented evidence that the iPhone has 

achieved a high degree of commercial success. Apple 
APPLE INC. v. ITC 17

presented financial information that showed that the 

iPhone and related products received billions in dollars of 

revenue from 2008 to 2010. J.A. 14184. Apple also presented evidence showing a nexus between the undisputed 

commercial success of the iPhone and the patented multitouch functionality, namely evidence that Apple’s competitors copied its touchscreen and that those in the industry 

praised the iPhone’s multitouch functionality. The ITC 

did not address any of this evidence.4 

For the foregoing reasons, we vacate the ITC’s decision that claim 10 of the ’607 patent would have been 

obvious and remand the case for further proceedings. To 

be clear, we conclude that the ITC fact findings regarding 

the scope and content of the prior art (what the reference 

 4 The ITC did not weigh this evidence. After concluding that the claims were obvious, the ALJ did find 

that there was no nexus between the commercial success 

of the iPhone and the multitouch functionality that is the 

subject of the ’607 patent. J.A. 217. We conclude that 

this fact finding is not supported by substantial evidence. 

Apple’s evidence of industry copying of the multitouch 

screen and industry praise of this feature are strong 

evidence of nexus. The only contrary evidence is a cursory statement of Motorola’s technical expert. Given the 

strong record evidence of nexus, this conclusory statement 

is insufficient to support the finding of no nexus. See 

Perske v. Office of Pers. Mgmt., 25 F.3d 1014, 1020 (Fed. 

Cir. 1994) (holding that the Merit Systems Protection 

Board’s finding lacked substantial evidence because 

contrary evidence in the record “overwhelm[ed]” the 

evidence that supported the Board’s finding); Eckstrom 

Indus., Inc. v. United States, 254 F.3d 1068, 1076 (Fed. 

Cir. 2001) (holding that the Department of Commerce’s 

fact finding was not supported by substantial evidence 

because, after a “review of all of the evidence,” the “overwhelming evidence” supported a contrary finding).
18 APPLE INC. v. ITC

discloses) are supported by substantial evidence. We 

remand so the ITC can consider that evidence in conjunction with the evidence of secondary considerations and 

determine in the first instance whether claim 10 would 

have been obvious to one of skill in the art at the time of 

the invention. 

IV. Noninfringement of ’828 Patent 

The ALJ construed the term “mathematically fitting 

an ellipse” to require the method to perform “a mathematical process” whereby “an ellipse is actually fitted to the 

data,” and, from that ellipse, “various parameters can be 

calculated.” J.A. 58–70. Based on this construction, the 

ALJ found that Motorola’s accused products did not 

infringe because they only measure data from the 

touchscreen but do not actually fit an ellipse. The ITC 

declined to review the ALJ’s noninfrinement decision. 

Apple argues that the ITC improperly limited the 

term “mathematically fitting an ellipse” to require calculation of the ellipse parameters after the ellipse has been 

“actually fitted.” It contends that the specification repeatedly explains that the method fits an ellipse by calculating the parameters of that ellipse or by using default 

parameters as a baseline—there is no prior “fitting” or 

drawing of the ellipse. Apple asserts that it is irrelevant 

that the ellipse parameters could, in theory, define other 

shapes. 

The ITC and Motorola contend that the ALJ correctly 

construed the limitation to require the software to “actually fit[]” the ellipse and then calculate the parameters of 

the ellipse. They contend that the inventors amended the 

claims during prosecution to overcome a reference that 

“obtain[ed] measured data . . . so long as the measured 

data happens to be measured from an object that ‘is in 

general ellipse-like.’” J.A. 11920–21. They argue that the 

plain language of the claim requires the software to 

“mathematically fit[]” an ellipse separate from calculating 
APPLE INC. v. ITC 19

ellipse parameters. Lastly, they argue that the specification explains that the ellipse parameters are determined 

by “fitting an ellipse.” 

We agree with Apple that the ITC erroneously construed the “mathematically fitting an ellipse” limitation. 

The plain language requires the software to “mathematically fit[]” an ellipse to the data. That process refers to 

calculating the mathematical parameters that define an 

ellipse. The dependent claims further support this interpretation. Those claims recite the step of “transmitting 

one or more ellipse parameters,” ’828 patent, claims 2, 3, 

which implies that the steps in the independent method 

claim have already calculated the ellipse parameters. 

Those claims do not imply, as Motorola contends, a separate step of calculating the ellipse parameters. 

The remainder of the intrinsic record is in accord with 

the ordinary meaning of the claim language. The specification repeatedly explains that the mathematical fitting 

process creates the parameters of the ellipse. E.g., ’828 

patent, Fig. 18, col.25 l.54–col.26 l.21. The prosecution 

history is also consistent with the plain meaning of 

“mathematically fitting an ellipse.” During prosecution, 

the applicants distinguished a prior art reference on the 

basis that the reference obtained data that happened to 

be “ellipse-like,” i.e., the prior art never mathematically 

fit the received data. J.A. 11920 (emphasis omitted). 

Those statements are consistent with the ordinary meaning of “mathematically fitting an ellipse” and do not 

suggest that we should limit the term to require the 

method to “actually fit[] [an ellipse] to the data.” The 

correct construction only requires the method to calculate 

the parameters that define an ellipse. Accordingly, we 

conclude that the ITC erred in its construction of “mathematically fitting an ellipse.” 

Having adopted Apple’s construction, we vacate the 

ITC’s decision that Motorola does not infringe the ’828 
20 APPLE INC. v. ITC

patent claims and remand the case for further proceedings. We do not accept Motorola’s invitation that we 

render judgment of noninfringment on appeal. Contrary 

to Motorola’s arguments, the ITC never found that the 

Xoom did not infringe under any construction. Nor did 

Apple concede noninfringment under any construction. 

See J.A. 133. Apple’s expert did testify that Motorola’s 

non-Xoom products did not infringe, but that testimony 

was based on his acceptance of the ITC’s construction of 

“mathematically fitting an ellipse.” J.A. 30653–55. We 

thus vacate the ITC’s decision that Motorola does not 

infringe the ’828 patent claims and remand the case to 

allow the ITC to consider in the first instance whether the 

accused products infringe under the correct construction 

of “mathematically fitting an ellipse.” 

CONCLUSION

We have considered the parties’ remaining arguments 

and find that they are without merit. For the foregoing 

reasons, we affirm-in-part, reverse-in-part, and vacate-inpart the ITC’s decision and remand for further proceedings. 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND 

VACATED-IN-PART 
United States Court of Appeals 

for the Federal Circuit ______________________ 

APPLE INC.,

Appellant,

v.

 INTERNATIONAL TRADE COMMISSION,

Appellee,

AND

 MOTOROLA MOBILITY, INC.,

Intervenor.

______________________ 

2012-1338 

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-750. 

______________________ 

REYNA, Circuit Judge, concurring-in-part and dissentingin-part. 

I. 

The Smartphone has defined modern life. Be it in the 

workplace, the home, airports, or entertainment venues 

across America, individuals are tethered to their 

handheld devices. Not long ago, users primarily spoke 

into these devices. Today, fingers tapping, grazing, 

pinching, or scrolling the screen is a ubiquitous image 

that reflects how we conduct business, work, play, and 
2 APPLE INC. v. ITC

live. The asserted patent in this case is an invention that 

has propelled not just technology, but also dramatically 

altered how humans across the globe interact and communicate. It marks true innovation. 

Today the majority invalidates seven claims in United 

States Patent No. 7,633,607 (the ’607 Patent) based on 

prior art that would not enable one of skill in the art at 

the time of the invention. In concluding that the Perski 

’455 prior art reference can be backdated to claim priority 

to the provisional application, the majority misapplies our 

requirement that the earlier disclosure comply with § 112 

¶ 1. Given the critical differences between the provisional 

and non-provisional disclosures, I would reverse the ITC’s 

finding that Perski ’455 is entitled to the Perski ’808 

priority date and remand for additional proceedings. 

On the issue of obviousness, rather than adopting the 

ITC’s determination that the SmartSkin prior art reference would have motivated one of skill in the art to combine mutual capacitance technology with transparent 

screens, I would hold as a matter of law that the asserted 

claims are not obvious. 

I join the majority in concluding that the ITC erred in 

making an obviousness determination without fully 

considering evidence pertaining to industry praise, copying, and commercial success, but I write separately to 

discuss my views as to the purpose and function of objective indicia of nonobviousness as indicators of innovation 

in the relevant field. 

I join the remainder of the majority opinion, including 

treatment of arguments relating to non-infringement of 

U.S. Patent No. 7,812,828, construction of the claim term 

“mathematically fitting an ellipse,” and the reasoning 

concluding that neither SmartSkin nor Perski ’808 anticipate claim 10 of the ’607 Patent. 
APPLE INC. v. ITC 3

Apple characterizes its invention as the first transparent, full image touchscreen that accurately detects and 

responds to multiple touches at once. More precisely, the 

asserted claims of the ’607 Patent generally disclose a 

touch panel having a transparent capacitive sensing 

medium1 configured to detect multiple, co-occurring 

touches at different locations to produce signals representative of the location of the touches. The touch panel, 

embodied in the marketplace as the interactive screen of 

an iPhone or iPad, is comprised of two layers of transparent electrically-isolated conductive lines where the two 

layers are spatially separated from each other and where 

conductive lines in one layer are positioned transverse to 

the conductive lines in the other layer, creating an array 

of intersection points. The images included below illustrate that the claimed detection and response to touch 

occurs through a “mutual capacitance” circuitry measuring the change in voltage between a horizontal wire and a 

vertical wire when a finger approaches a crossing point on 

the screen. See ’607 Patent col. 9 ll. 52-62. 

 1 The claimed touchscreen sensors are made out of 

indium tin oxide (ITO). As implemented in the ’607 

Patent preferred embodiments, ITO circuitry was masked 

to the user through caulking ITO channels with clear 

insulation. ’607 Patent col. 12 l. 24 to col. 13 l. 6 and col. 

14 l. 60 to col. 17 l. 11. 

APPLE INC. v. ITC 5

and exact terms.” New Railhead Mfg., L.L.C. v. Vermeer 

Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002) (quoting 

statute). I dissent from the majority’s conclusion that 

Perski ’455 is prior art to the ’607 Patent. 

A. 

The Perski inventors initially filed a provisional patent application—Perski ’808—on February 10, 2003. The 

non-provisional Perski ’455 application was later filed on 

January 15, 2004. During the 11 months between the 

time the provisional and non-provisional applications 

were filed, the inventors continued to refine the invention, 

as reflected in the extensive revisions made in filings with 

the PTO. Those revisions clearly show that in filing for 

Perski ’455, language from the provisional was removed 

and new language was added. Apple emphasizes the 

breadth of the inventors’ revisions by constructing a 

redline2 comparing the language of the provisional application in February 2003 and the language of the nonprovisional application in January 2004: 

 2 The language in black remained unchanged between the provisional and non-provisional filings. The 

language in red represents what appeared in the February 2003 filing of the provisional application, but was 

removed in the January 2004 filing of the non-provisional 

application. The language in blue represents additions 

made in the filing of the non-provisional application. The 

blue language never appeared in the original provisional 

application. 
6 APPLE INC. v. ITC

J.A. 6857 (excerpted portion). 

Motorola argues that Perski ’455 is entitled to the 

February 2003 priority date because the Perski ’808 

provisional application provides written description 

support for the claimed invention. On this point, the 

Administrative Law Judge agreed, finding that the Perski 

’808 provisional application sufficiently disclosed the 

finger detection method and described algorithms for use 

with transparent mutual capacitance. 

Apple contends that Perski ’455 is not entitled to the 

earlier priority date because there is no clear and convincing evidence that Perski ’808 satisfied the written description requirement. Apple submits that the provisional 

application lacked enabling disclosures because it was not 

until Perski ’455 was filed in January 2004 that the 

inventors disclosed how the screen recognized multiple 

finger touches. 
APPLE INC. v. ITC 7

Apple also argues that the reference is not anticipatory because there is testimony that the ’607 Patent was 

conceived of between September 2003 and November 

2003—i.e., before the Perski ’455 application.3 See J.A. 

8728−29. The Administrative Law Judge never considered Apple’s evidence of an earlier conception date because he was satisfied that Perski ’455 was entitled to the 

earlier priority date. J.A. 182 (declining to make any 

findings on Apple’s date of invention). On appeal, Apple 

seeks review of the Administrative Law Judge’s decision 

regarding the Perski ’455 priority date and his failure to 

address the conception date for the ’607 Patent. 

B. 

In section § 119(e)(1) of the Patent Statute, a nonprovisional utility patent application may be afforded the 

priority date of a related provisional application if the two 

applications share at least one common inventor and the 

written description of the provisional application adequately supports the claims of the non-provisional application. To backdate the later application with the earlier 

priority date, the specification of the provisional application must “contain a written description of the invention” 

as defined in § 112 ¶ 1. New Railhead Mfg., L.L.C., 298 

F.3d at 1295 (discussing 35 U.S.C. § 119(e)(1) and 35 

U.S.C. § 112 ¶ 1). 

 3 To prove an earlier conception date, Apple must 

show by clear and convincing evidence that it conceived of 

the claimed subject matter before its filing date. 35 

U.S.C.A. § 102(g)(2); see also Mahurkar v. C.R. Bard, Inc., 

79 F.3d 1572, 1577 (Fed. Cir. 1996) (“[P]riority of invention goes to the first party to reduce an invention to 

practice unless the other party can show that it was the 

first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to 

practice.”). 
8 APPLE INC. v. ITC

My review of the differences between the Perski ’808 

application and the Perski ’455 application leads me to 

determine that the prior application does not “clearly 

conclude” that the Perski inventors possessed the claimed 

invention as of February 10, 2003. Trading Tech. Int’l., 

Inc. v. eSpeed, Inc., 595 F.3d 1340, 1359 (Fed. Cir. 2010) 

(quoting Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 

(Fed. Cir. 1997)). In brief, Perski ’455 should not have 

been awarded the earlier provisional application date 

because Perski ’808 does not indicate that the inventors 

knew how to detect multiple touches in February 2003. 

As filed, the provisional application discusses finger 

detection as a “goal,” with the goal being “to recognize all 

of the sensor matrix junctions that bypass signals due to 

external finger touch.” J.A. 16152. Recitation of a goal, 

however, is not sufficient if the corresponding steps are 

not disclosed. The majority credits the incomplete discussion of scanning the nodes of a matrix as satisfying the 

written description requirement without explaining how 

such a reference would put the Perski inventors in possession of the method for recognizing multiple finger 

touches and then generating the appropriate output 

signal. Maj. Op. 7. Indeed, the n*m “algorithm” discussed and heavily relied on in the majority’s rationale is 

no more than the scanning of nodes in a matrix where n 

corresponds to columns and m corresponds to rows.4 I 

cannot agree that scanning a matrix is the same as teaching detection of multiple finger touches. 

 4 The fact that a certain thing may result from a 

given set of circumstances is not sufficient to anticipate 

because ultimately the prior art “shows what it shows.” 

Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 

639−40 (Fed. Cir. 2011) (internal citations omitted). I 

conclude that “n*m,” by itself, is not an algorithm. What 

is missing are corresponding steps, such as those added 

11 months later. 
APPLE INC. v. ITC 9

In January 2004, Perski ’808 did not sufficiently explain how the multipoint detection would occur. J.A. 

16152. It was not until Perski ’455 that the inventors set 

forth a critical passage confirming that the initial goal 

had been met and “procedures for detection” were now 

“possible”: 

In fact, because it is typically necessary to 

repeat the procedure for the second axis so 

the number of steps is more typically 2*n*m 

steps. However, this method enables the detection of multiple finger touches. When an 

output signal is detected on more then [sic] 

one conductor that means more than one finger touch is present. The junctions that are 

being touched are the ones connecting the 

conductor that is currently being energized 

and the conductors which exhibit an output 

signal. 

J.A. 16610 at col. 14 ll. 35-43 (emphasis added); J.A. 6857 

(indicating through color designations that the “output 

signal” language was not present in the Perski ’808 application). 

The record reflects that the 2*n*m scanning method 

“enabling the detection of multiple finger touches” was 

absent in February 2003 and the provisional application 

was limited to the simplistic n*m method which by itself 

merely describes the existence of a grid—i.e., intersection 

lines parallel to each other. Because the disclosure in 

Perski ’808 would not convey to a skilled artisan that the 

detection of an output signal on more than one conductor 

corresponds to multiple touches, I would reverse the ITC’s 

finding that Perski ’455 is entitled to the Perski ’808 

priority date. I would thus remand for additional proceedings determining Apple’s conception date and whether, based on the newly developed record, Perski ’455 

qualifies as § 102(e) prior art. 
10 APPLE INC. v. ITC

III. 

In addressing whether the claims of the ’607 Patent 

are obvious, the majority endorses the ITC’s underlying 

findings regarding scope and content of the prior art—

leaving for another day resolution of the ultimate legal 

question of obviousness. Maj. Op. 18. I would decide the 

issue and reverse the ITC’s determination that 

SmartSkin, alone or in combination with Rekimoto ’033,5

would have motivated one of skill in the art to combine 

mutual capacitance technology with transparent screens. 

The asserted claims and the SmartSkin prior art are 

addressing two separate problems with two separate 

solutions. Prior to Apple’s invention, it was known how to 

achieve multitouch functionality on opaque surfaces and 

it was known how to achieve a transparent screen with 

single touch. But, a transparent touchscreen that accurately detected and responded to simultaneous multiple 

touches remained elusive. 

The record shows that after Steve Jobs charged Apple’s engineers with the seemingly unachievable task of 

solving the multitouch problem, Apple explored adapting 

the primitive mutual capacitance system disclosed in 

SmartSkin to a novel system operating with transparent 

electrodes. The undertaking was fraught with technical 

challenges and ultimately proved that the incomplete 

guidance of the SmartSkin prior art contradicts the ITC’s 

 5 The Administrative Law Judge based his obviousness analysis on SmartSkin in combination with Japanese 

Unexamined Patent Application Publication No. 2002-

342033A (Rekimoto ’033). The ITC disagreed with the 

Administrative Law Judge that Rekimoto ’033 disclosed a 

relevant use of transparent electrodes. J.A. 523, n.6. 

Because I would reverse the ITC’s analysis based on the 

primary prior art reference, I do not discuss the secondary 

Rekimoto ’033 reference. 
APPLE INC. v. ITC 11

finding that SmartSkin would provide one of skill in the 

art with a “reasonable expectation of success.” J.A. 523. 

SmartSkin, discussing surface-finger interactions through 

a mutual capacitance system, was focused on opaque

prototypes such as interactive tables or walls. SmartSkin 

did not share Apple’s focus of making a smaller, transparent screen interactive; rather, the grid of copper electrodes 

detected touch on two sizeable systems much larger than 

a handheld device or tablet: an 80 x 90 cm plywood table 

and a 32 x 24 cm gesture recognition pad. In my view, the 

prior art reference cannot be clear and convincing evidence of obviousness where, as here, it does not guide a 

skilled artisan towards a particular solution. Bayer v. 

Schering, 575 F.3d 1341, 1347 (Fed. Cir. 2009); see also 

Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 

1361 (Fed. Cir. 2011) (declining to find a claim obvious 

when the when prior art does not provide “indication of 

which parameters were critical” or “direction as to which 

of many possible choices is likely to be successful”). 

There is no basis to conclude that SmartSkin would 

teach a skilled artisan the foresight to realize Apple’s 

desired solution when the SmartSkin authors conceded 

that they did not know how to accomplish a multitouch 

screen with transparent electrodes. In the “Future Work” 

section, the SmartSkin authors muse that such a combination is possible, but they lacked the know-how to implement the very technology Apple sought: 

This work is still at an early stage and may 

develop in several directions. For example, 

interaction using multiple fingers and shapes 

is a very new area of human-computer interaction, and the interaction techniques described in this paper are just a few examples. 

More research is needed, in particular, focusing on careful usability evaluation. 
12 APPLE INC. v. ITC

J.A. 13603 (emphases added). In light of the clearly 

stated uncertainty expressed by the SmartSkin authors 

that they could achieve a transparent touchscreen and 

that experimentation was still necessary to pursue the 

desired result, it was error to rely on SmartSkin to 

demonstrate that Apple’s invention was a “predictable 

solution” or “an anticipated success.” Rolls-Royce, PLC v. 

United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010). 

I note with great interest that the majority, in its anticipation discussion, recognizes that the SmartSkin 

authors “had not achieved a touchscreen employing 

transparent electrodes.” Maj. Op. 12. In discussing the 

disparities between the teachings in SmartSkin and those 

in the ’607 Patent, the majority goes on to observe that 

SmartSkin provides “no disclosure that the authors had 

achieved a transparent touch screen and the record does 

not indicate that it would have been routine to do so. Nor 

is there any disclosure in SmartSkin that the matrix of 

ITO electrodes would have created the “transparent . . . 

layer[s] recited in claim 10.” Maj. Op. 12. The majority’s 

anticipation discussion supports a finding of nonobviousness by pointing out that the prior art authors did not 

know how to achieve a transparent touchscreen and 

acknowledging that the skilled artisan would have numerous design decisions to make and/or obstacles to 

overcome even after consulting the prior art. While the 

type of hope discussed in SmartSkin can be said to drive 

science, it should not without caution be embraced as an 

impediment to actual innovation. 

Obviousness is not shown when prior art gives only 

“general guidance as to the particular form of the claimed 

invention or how to achieve it.” In re Rosuvastatin Calcium Patent Litigation, 703 F.3d 511, 518 (Fed. Cir. 2012) 

(quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 

1988)). In this case, SmartSkin does not amount to clear 

and convincing evidence because the prior art references 

lack satisfactory guidance as to how to transform the 
APPLE INC. v. ITC 13

screen of a handheld device into an interactive surface 

reacting to simultaneous multiple touches of a user’s 

fingertips. Contrary to the ITC’s conclusion that the 

asserted claims amount to no more than mechanical 

rearrangement of known pieces, the evidence supports 

that Apple, after identifying a problem pervading the 

prior art, succeeded in forging through obstacles to develop the solution. Mintz v. Dietz & Watson, Inc., 679 F.3d 

1372, 1377 (Fed. Cir. 2012) (citing Graham v. John Deere 

Co., 383 U.S. 1, 36 (1966)). Because I believe that the 

record compels a legal conclusion that the asserted claims 

are not obvious, I dissent from the decision to remand the 

issue back to the ITC. 

IV. 

In finding that the ITC erred in assessing whether 

the asserted claims were obvious, the majority focuses on 

the objective evidence of nonobviousness, often referred to 

as “secondary considerations.” See Graham, 383 U.S. at 

36. The majority correctly points to the ITC’s failure to 

follow precedent and reach an obviousness conclusion 

after weighing all evidence on both sides. Maj. Op. 15. I 

agree with the majority that the ITC erred in not analyzing objective evidence of industry praise, copying, and 

commercial success. I write separately on this issue to 

express my view that an invention’s recognition in the 

related industry and its success in the marketplace, along 

with the other Graham factors, could constitute strong 

evidence of innovation which could negate an obviousness 

finding. 

Objective evidence of secondary considerations of patentability are essential components of our obviousness 

inquiry. Power Integrations, Inc. v. Fairchild Semiconductor Int’l., Inc., 711 F.3d 1348, 1356 (Fed. Cir. 2013) 

(citing In re Cyclobenzaprine Hydrochloride ExtendedRelease Capsule Patent Litigation, 676 F.3d 1063, 1076–

79 (Fed. Cir. 2012)). This is especially true in this modern 
14 APPLE INC. v. ITC

day of nanotechnology where what may be viewed as a 

mere incremental step could constitute a great leap in 

innovation. In order to protect against the prejudice of 

hindsight bias, courts make factual findings as to factors 

such as copying, long felt but unsolved need, failure of 

others, commercial success, unexpected results created by 

the claimed invention, unexpected properties of the 

claimed invention, licenses showing industry respect for 

the invention, and skepticism of skilled artisans before 

the invention. Power Integrations, 711 F.3d at 1356 

(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) 

(collecting cases)). I emphasize that objective evidence of 

nonobviousness, such as that gleaned from the patented 

product’s role in the marketplace, is the indicia of the 

innovation principle upon which rests our system of 

patents. A major problem I detect in conclusions reached 

under § 103 is that objective evidence of nonobviousness 

is too often treated as “secondary considerations.” In my 

view, objective evidence of nonobviousness is objective 

indicia of innovation. We must not lose sight that a 

patent, presumed valid, commemorates an inventor’s 

achievement that entitles her to full and equal consideration of all evidence before a conclusion on the issue of 

obviousness is reached. 

Our patent laws are designed to foster optimal incentives for innovation, yet too often the genius of an invention is dismissed by combination of known elements 

viewed through glasses of hindsight. Our cases highlight 

that inventive contribution often “lies in defining the 

problem in a new revelatory way.” Mintz, 679 F.3d 

at1377; Uniroyal, Inc. v. Rudkin–Wiley Corp., 837 F.2d 

1044, 1051 (Fed. Cir. 1988) (“That which may be made 

clear and thus ‘obvious’ to a court, with the invention fully 

diagrammed and aided by experts in the field, may have 

been a breakthrough of substantial dimension when first 

unveiled.”). I encourage courts handling patent infringement matters to treat evidence corresponding to the 
APPLE INC. v. ITC 15

factors identified in Graham as strong, if not the best, 

evidence of innovation—i.e., the manner in which the 

industry and the marketplace responded to the disclosure 

in a patent. 

Here, the ITC succumbed to the bias of hindsight as 

the record bears significant objective evidence that Apple’s patent was innovative. As a result, the Administrative Law Judge and the ITC were “misled by improper 

‘combination’ notions.”6 Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 (Fed. Cir. 

1986). 

As the majority aptly points out, Time Magazine

named the iPhone the 2007 “Invention of the Year,” and 

the publication heralded the touchscreen as a “powerful 

illusion that you’re physically handling data with your 

fingers.” J.A. 7483. Similar sentiments were expressed 

in Bloomberg Business Week, with an article titled “Apple’s Magic Touch Screen” that specifically refers to 

Apple’s patent application and describes the screen’s 

capability “to react to as many as 15 simultaneous touches” as “impressive.” J.A. 7826. These examples—as well 

as the many others in the record—offer effusive praise 

relating to the patented invention. Such praise of innovation by the relevant industry weighs against invalidating 

a patent as obvious. Power-One, Inc. v. Artesyn Tech. Inc., 

599 F.3d 1343, 1352 (Fed. Cir. 2010). 

Evidence of innovation is also found in the testimony 

and emails demonstrating that Apple’s competitors were 

copying the claimed technology. See Maj. Op. 17. The 

 6 The Administrative Law Judge recognized the patented product’s marketplace success but found, among 

other things, that industry praise, attempts to copy, and 

commercial success could not overcome the combination of 

SmartSkin and Rekimoto ’033. J.A. 216−17. The ITC 

adopted the Administrative Law Judge’s reasoning. 
16 APPLE INC. v. ITC

reported success of the patented feature suggests that 

Apple’s competitors were compelled to ride Apple’s coat 

tails by expending significant effort to determine how the 

patentee’s product worked and then altering their own 

products to conform to the reverse engineered feature. 

Power Integrations, 711 F.3d at 1369; Akamai Tech. Inc. 

v. Cable & Wireless Internet Services, Inc., 344 F.3d 1186, 

1196 (Fed. Cir. 2003). The ITC failed to address the 

extent to which copying supports Apple’s contention that 

the claimed touchscreen was integral to its market dominance. These efforts to copy Apple’s claimed technology 

also weigh against a conclusion of obviousness. See Crocs, 

Inc. v. ITC, 598 F.3d 1294, 1311 (Fed. Cir. 2010) (“Copying may indeed be another form of flattering praise for 

inventive features.”). 

The evidence in this record is a prime example of why 

we have repeatedly cautioned against assigning inadequate priority to “secondary considerations.” While I 

agree with the majority’s analysis, I discern the record to 

contain significant objective indicia of innovation, which 

in my view, is “the most probative evidence of nonobviousness.” Custom Accessories, 807 F.3d at 960. 

* * * 

Based on the extensive record in this case, I believe 

Apple overcame significant complexities to produce a 

touchscreen with desirable optical properties that accurately detected multiple simultaneous touches. Ultimately, it was Apple—not the prior art inventors—who 

identified the problem, disclosed the steps explaining how 

the problem was solved, and then created a marketplace 

for its contribution. By incorporating the invention in the 

patented products of the iPhone and iPad, Apple’s efforts 

endowed users around the world with better access to 

information, more efficient communication, and unparalleled convenience to organize life on the mobile. 
APPLE INC. v. ITC 17

For the foregoing reasons, I would reverse the finding 

that Perski ’808 provides adequate written description 

support for Perski ’455 and remand the anticipation case 

for additional proceedings as to Apple’s conception date, 

and whether, based on that date, Perski ’455 qualified as 

§ 102(e) prior art. I also would recognize Apple’s technical 

advances over the SmartSkin reference and find evidence 

of industry praise, copying, and commercial success 

dispositive indicators that Apple’s claims were innovative 

and nonobvious. Accordingly, I respectfully dissent.