Tuesday, October 23, 2012

Patent office tentatively invalidates Apple's rubber-banding patent used in Samsung trial

The United States Patent and Trademark Office has good news for Samsung, and Samsung has already shared it with Judge Koh in a late-night filing. In a non-final Office action the USPTO has declared all 20 claims of Apple's rubber-banding patent (U.S. Patent No, 7,469,381 invalid, including claim 19, which Apple successfully asserted against Samsung in the summer trial in California. In fact, claim 19 is one of several claims to be deemed invalid for two reasons, either one of which would be sufficient on its own. Here's the part of the Office communication that summarizes the rejections (click on the image to enlarge or read the text below the image):


The following rejections are utilized by the Examiner below, referencing the proposed prior art listed on pages 23-85 of the Request:

Rejection A: Claims 1-6, 8-12, 16, 19, and 20 as being anticipated by Lira

Rejection B: Claims 7 and 13-15 as being obvious over Lira

Rejection D: Claims 1-5, 7-13, and 15-20 as being anticipated by Ording

[emphasis of claim 19 rejections mine]

I uploaded the entire Office communication to Scribd and will provide details on "Lira" and "Ording" further below.

Claim 19 appears on the "Rejection A" and "Rejection D" lists. Both kinds of rejections are for lack of novelty, not just obviousness (which is what "Rejection B", which does not relate to Claim 19, is about). This means that Apple would have to convince the patent office (or, possibly, the appeals court) not only that rubber-banding was new despite the earlier existence of those documents (a finding of anticipation is a determination that there was no inventive step at all) but also that its claimed inventive step is sufficient to justify the existence of the rubber-banding patent.

While this non-final decision is not binding, there is a possibility that Judge Koh will be persuaded by this to grant Samsung's Rule 50 ("overrule-the-jury") motion to the extent it relates to the '381 patent. Even if Judge Koh is hesitant to overrule the jury on this and skeptical of a non-final action, the reexamination process will continue during the Federal Circuit appellate proceedings, so if the non-final findings concerning claim 19 are affirmed in subsequent Office actions, they will have more weight. And even after the appeals process, a subsequent final rejection of the relevant patent claim would make the patent unenforceable going forward.

Samsung has already worked around this patent. As a Samsung customer I noticed a workaround in Europe about a year ago. Two days ago I commented on Samsung's claim to have worked around all three multitouch software patents the jury deemed it to infringe. It was only due to sanctions for litigation misconduct that the jury wasn't informed of those workarounds, making Samsung liable for damages even with respect to many months in which it actually wasn't infringing anymore. If this patent is ultimately invalidated, chances are that Samsung will again implement the overscroll bounce effect in its devices sold in the United States.

Samsung is not the only potential beneficiary of these developments at the patent office. An ITC judge has scheduled a preliminary ruling on Apple's second complaint against HTC for November 27. Different claims of the '381 patent are at issue in that investigation. A few months ago, Apple actually dropped claim 19 from that investigation, but the non-final Office action rejects all claims of this patent. Last month, the Munich I Regional Court granted Apple an injunction against Google subsidiary Motorola Mobility over the European equivalent of this patent. The European Patent Office, which is re-evaluating its grant of this patent in an opposition proceeding triggered by Samsung, Motorola and HTC, will certainly take note of the state of the U.S. proceedings but is free to decide differently. Should the EPO revoke the patent, Apple's German injunction becomes unenforceable. In Europe, reexaminations by the patent office are not possible unless someone files an opposition to the issuance of a new patent within nine months of its grant, which happened here.

An anonymous reexamination request was discovered in the spring

It's not surprising that the '381 patent faces a serious challenge to its validity. I've said in a report on a Munich trial that it's a great achievement in the realm of use interface psychology, but in a strictly technological sense it has extremely little merit, if any. It's a patent on a great idea and outside-of-the-box thinking (in a patent sense, one can argue that all other scrolling operations disclosed before this one used to "teach away" from it). But it doesn't take rocket science to make it work. Technically it's just about drawing rectangles.

In late May, Scott Daniels, the author of the WHDA Reexamination Alert blog, discovered some new anonymous attacks on this patent and another famous Apple patent. I reported and commented on these findings. At the time I already listed the prior art references on which that ex parte reexamination request was based. For your convenience, I will now again list the two references that resulted in these preliminary rejections:

  • "Lira":

    PCT Publication No. WO 03/081458 on "controlling content display", by AOL/Luigi Lira, published on October 2, 2003

  • "Ording":

    U.S. Patent No. 7,786,975 on a "continuous scrolling list with acceleration"; this is an Apple patent that I've never seen asserted in litigation; the named inventors are Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay and Imran Chaudhri

A few days after the Apple v. Samsung jury verdict I highlighted the single biggest issue I had with it: it would be statistically implausible for all of the asserted patents to be valid as granted. It's simply a fact that patent offices the world over, and particularly in the United States, grant large numbers of patents that don't withstand serious scrutiny. The 15 or so hours spent by a patent examiner on an application (spread out over the course of several years) mean very little. The moment of truth is when a patent gets asserted against deep-pocketed players, such as an Apple or a Samsung, who throw resources behind prior art search (and the development of invalidity theories) for a single patent that are hundreds and sometimes thousands of times greater (more hours and more expensive people) than the cost of the original examination process.

The high drop-out rate of the patents-in-suit in all these smartphone actions speaks for itself.

Apple's rubber-banding (overscroll-bounce) patent is still going to go through a lengthy proces before it may or may not be invalidated. There can be more than one non-final Office action by the Central Reexamination Division. Even a "final Office action" is not final at all. It can be reconsidered by the Central Reexamination Division itself, and the last decision by that division can be appealed to the Patent Trial and Appeal Board (PTAB), which used to be called the Board of Patent Appeals and Interferences (BPAI) until recently and is like an USPTO-internal appeals court. Remands by the PTAB to the Central Reexamination Division cause further delay. When the USPTO is done with the patent, its decision can be appealed to the United States Court of Appeals for the Federal Circuit. And theoretically, a Federal Circuit decision can be appealed to the Supreme Court, which doesn't hear many patent validity cases (but does take a look at important issues from time to time).

Apple has many patents in play against Android. It doesn't matter in a strategic sense if some of them, or even many of them, get invalidated. It just needs to enforce enough of them to ensure product differentiation. The '381 patent covers a signature element of the iOS touchscreen user interface, and Apple is going to fight hard to keep it alive. But at the end of the day it's just one of many patents-in-suit.

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