A couple of hours ago Samsung proudly informed Judge Koh of the fact that the United States Patent and Trademark Office (USPTO) has tentatively rejected, in a first Office action dated December 29 (mailing date), all 21 claims of U.S. Patent No. 7,844,915, which I consider to be essential to the pinch-to-zoom feature. In the Apple v. Samsung case that went to trial in the summer (and in which Judge Koh just denied an Apple motion for a permanent injunction), claim 8 of the '915 patent is at issue. In fact, Apple itself declared it the commercially most valuable one of the three multitouch software patents-in-suit, demanding a per-unit royalty for future (post-judgment) use of $3.10 while the other two software patents-in-suit are each valued at $2.02 per unit. While Samsung claims to have a workaround in place for this patent, there's a dispute between the parties over whether that new implementation of the same feature still infringes.
In October, the USPTO already issued a first Office action tentatively rejecting the '381 "rubber-banding" ("overscroll bounce") patent. This means that two of the three software patents-in-suit from the first Apple v. Samsung case in California have been tentatively rejected at this stage. The highest-profile tentative rejection of an Apple patent by the USPTO became known two weeks ago and affected the '949 patent, referred to by Apple's own lawyers as "the [Steve] Jobs patent", which is at issue in the ITC investigation of Apple' complaint against Samsung. A few days later Apple filed a letter with the ITC, downplaying the significance of that (or any other) first Office action.
Since the spring of 2011 I have been saying till I was blue in the face that first Office actions are non-final. But that does not mean that they are meaningless. These are ex parte reexaminations (triggered by a request, which can be and in each of these cases was filed anonymously (by a law firm not disclosing any client), for which the hurdle is (even after last year's patent reform bill) that the request must raise a substantial new questoin for patentability. While statistic have shown that some patent examiners working for the Central Reexamination Division simply issue a first Office action rejecting all challenged claims in order to have the patent holder do most of the work of vetting/rebutting the invalidity contentions, there are also cases in which all claims are affirmed right away (in an Action Closing Prosecution) or in which only some of the challenged claims are tenatively rejected. And statistical analysis, while it is valuable in some ways, is never a substitute for a case-specific analysis of the merits.
Here, some of the rejections are based on rather far-fetched theories, such as combinations of up to three prior art references. But claim 8, which is the one that matters in the first California Apple v. Samsung case, has been tentatively rejected on two different grounds: it's presently considered invalid for anticipation (non-novelty) by one prior art reference as well as obviousness (novel but not inventive) in light of a combination of two prior art references. Apple needs to overcome both invalidity theories and even a third one: even if it successfully countered the anticipation theory, it would then also have to establish non-obviousness over the prior art reference previously deemed to have anticipated the '915 patent.
The prior art references underlying the anticipation theory is U.S. Patent No, 7,724,242 on a "touch driven method and apparatus to integrate and display multiple image layers forming alternate depictions of same subject matter". It doesn't specifically claim the pinch-to-zoom gesture as far as I can see, but it doesn't have to do that in order to serve as prior art, given that the '915 patent is only about one part (though an essential one) of the internal steps required to make pinch-to-zoom work. The other two prior art references (over the combination of which the '915 patent is deemed obvious) are the publication of a Japanese patent application (Japanese Pub. No. 2000-163031A, "Nomura") and this 1991 paper, entitled "The Automatic Recognition of Gestures" and authored by Dean Harris Rubine (Carnegie Mellon University). An obviousness theory based on two prior art references requires some explanation (such as commonly a teaching, suggestion or motivation) as to why a person of ordinary skill in the art would actually consider combining knowledge from two references.
Of the three Apple multitouch software patents that have given rise to tentative rejections in the form of first Office action, I believe the '915 patent is most likely to have some surviving claims when all is said and done, but claim 8 is now under more pressure than some other claims.
Depending on how long this process goes, we will at some point also hear about procedural steps (including reconsiderations, appeals etc.) in which some of the tentative rejections are retracted. It will take time, but it will happen. There will be some back-and-forth and some roller coaster rides, and in the meantime, tentative rejections don't affect the enforceability of a patent claim. Also, next year a number of key smartphone patents will go to trial at the German Federal Patent Court, which adjudicates all nullity (invalidation) actions in that jurisdiction. In Europe, reexamination by the patent office cannot be requested at a late stage. For patents granted by the European Patent Office there's a nine-month window to file an opposition, and subsequently patents need to be challenged in court (currently on a country-by-country basis with potentially inconsistent decisions, until a unitary patent court system is put in place in a few years). Some Apple multitouch patents have already been declared invalid by a UK court (with respect to that jurisdiction).
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