Apple has just informed Judge Lucy Koh of the United States District Court for the Northern District of California of a major breakthrough: the United States Patent and Trademark Office (USPTO) has notified Apple of its intent to issue a reexamination certificate confirming four claims of U.S. Patent No. 7,469,381, the famous rubber-banding (or, as I like to call it, "overscroll bounce") patent, including claim 19, which is the claim Apple successfully asserted at last year's trial against Samsung. Here's the key part of the header of the USPTO's notice (click on the image to enlarge):
In May 2012, an anonymous request for an ex parte reexamination of the '381 patent became discoverable. In October 2012, a first Office action tentatively rejected all claims of this patent, and about two and a half months ago a "final Office action" upheld only three of them but rejected all others, including claim 19. Samsung was always quick to file notices of these early decisions with the court. But Apple had consistently cautioned against overrating first and "final" (but not final-final) Office actions tentatively rejecting certain claims. It also pointed out that these processes can take years: even if the relevant claims of the rubber-banding patent ultimately had been invalidated, it would have taken until mid-2017 or later. But along the way there can be many reversals of fortune, and Apple now has the upper hand with respect to this patent -- and it may at some point have the upper hand with respect to other key patents it's asserting against Samsung in California and at the ITC.
Apple's notice to the court points out that this will already be the second reexamination certificate confirming claim 19 of this patent. A previous one issued on April 26, 2011, presumably in response to a reexamination request filed by Nokia (raising different invalidity contentions). As a result of this new reexamination certificate, claim 19 will enjoy an enhanced presumption of validity against the invalidity theories the patent office evaluated. Instead of invalidation in mid-2017 or later, this patent has now been confirmed in mid-2013.
Judge Koh had also denied the part of a Samsung motion for judgment as a matter of law (JMOL) in which Samsung asked the court to declare this patent invalid even though the jury did not. In a preliminary injunction ruling in late 2011 she had already found this patent claim likely to be valid (an injunction over it was denied, but only for equitable reasons).
In late April Judge Koh ordered a limited damages retrial and scheduled it for November. She denied without prejudice a Samsung motion to stay the infringement case, but said Samsung could try again later depending on what the further proceedings at the patent office may bring. The '381 patent is one of two patents being asserted in the California case and under reexamination. The other one that is being reexamined is the pinch-to-zoom API '915 patent. In late 2012 a first Office action tentatively rejected all claims of that patent, too, but rejection rates in first Office actions are extremely high. The process concerning the '915 patent is further behind. The USPTO has yet to issue a "final" Office action, and the situation surrounding the rubber-banding patent shows that "final" isn't truly final in this context. Last week I also reported on a reexamination request targeting two Apple design patents, including one that the California jury found infringed. It's unlikely that anything persuading Judge Koh to stay the case before the November damages retrial will happen with respect to the design patent. At the most there will be a first Office action, which means little. So if Samsung hopes to avoid the November retrial, its best bet now is the '915 patent, but time is not on its side. With the forthcoming reexamination certificate for the '381 patent, the likelihood of the November retrial actually taking place has increased considerably.
Apple would presumably have liked to salvage even more claims than the four claims the patent office is now going to confirm, but claim 19 is the one that matters in the dispute with Samsung, and it's now stronger than ever.
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