Slide to Unlock Image Patent-eligible but Not Inventive - BGH Entsperrbild

In the case X ZR 110/13 "Entsperrbild", the BGH had do decide on a patent relating to the unlocking of a mobile phone. The key feature is that an icon (unlock image - the arrow on grey background in the figure on the rhs) is moved together with the finger when executing the unlock gesture.

The Bundespatentgericht had disregarded the icon in the assessment of inventive step and judged that it did not contribute to the solution of a technical problem.

The BGH did not agree. According to the headnote, features relating to the conveying of information in a patent claim need to be subject to a special treatment (unofficial translation by the author of this note):

1. Statements relating to the conveying of certain information contents and hence aim at having impact onto the human imagination or intellectual power are, as such, disregarded in the assessment of inventive step. Statements relating to information which shall be conveyed according to the technical teaching of the invention are apt to support the patentability in view of inventive step only insofar as they determine or at least influence the solution of a technical problem by technical means.
2. Information-related features of a patent claim are to be examined as to whether the information to be conveyed is, at the same time, an embodiment of a means for a technical solution, which must not already be indicated as such elsewhere in the patent claim. In such a case, the means for the technical solution as to be considered in the assessment of inventive step.

The interesting piece here is the not already indicated elsewhere portion. The BGH bases its analysis on a fairness argument. According to the senate, "it would not be justified to exclude the technical effects of the conveying of information from the assessment of inventive step only because these are claimed, in the patent claim, merely in the form of the presentation of certain information."

I presume this can be interpreted as follows: In the case at issue, the unlock image was supposed to solve the technical problem of providing optical feedback to the user. Had the patentee claimed "means for providing optical feedback" covering both tangible technical means as well as the presentation of certain information, this broader "means for providing optical feedback" would have had been clearly considered in the assessment of inventive step. The Fact that the patentee claims a narrower, more specific solution, it would not be justified to exclude this from the assessment of inventive step. If, however, the broader "means" is already claimed elsewhere (and therefore contributes to inventive step), the additional information-related features would not entail any further technical contribution and can be disregarded.

In the case at issue, the feature of using a "movable" image for providing optical feedback was, in contrast to the analysis of the Bundespatentgericht, considered to be an information-related feature contributing to solution of a technical problem relevant for inventive step.

This finding was clearly a progress in our case-law but a phyrric victory for Apple: The feature was considered but found to be obvious over the art.