Between 1 AM and 2 AM local time on Sunday, Samsung's counsel in the intellectual property dispute with Apple notified the court of a "final" Office action by the United States Patent and Trademark Office (USPTO) rejecting all claims of Apple's pinch-to-zoom API patent, U.S. Patent No. 7,844,915 on "application programming interfaces for scrolling operations", including its claim 8, which one federal jury found infringed by numerous Android-based Samsung devices about a year ago and with respect to which another jury will have to redetermine damages in November 2013 for a dozen of those products (the retrial is about 13 products, 12 of which were found to infringe this patent).
Samsung claims to have a workaround in place for the '915 patent that makes no difference to end users but steers clears of infringement, which Apple disputes.
Based on Apple's damages claims, the pinch-to-zoom API patent is the most valuable multitouch software patent at issue in the first Apple v. Samsung litigation in the Northern District of California, but most of the damages in that case relate to design patents. Also, I believe that the patents at issue in the second Apple v. Samsung case in San Jose, scheduled to go to trial next spring, are, on average, considerably more valuable than the ones asserted in the first case.
Here's the cover page of the "final" Office action (this post continues below the document):
13-07-26 Cover Page Final USPTO Action Rejecting Apple's '915 Pinch-To-zoom API Patent
I put "final" in quotes and said "not really final" in the headline because one can easily get confused by the terminology in U.S. patent reexaminations. Most of the time that you hear about "final" in connection with a reexamination, the way to look at it is a famous Churchill quote: "Victory is never final, defeat is never fatal, courage is all that matters." And courage is not in short supply at Apple and Samsung.
In this case, the "final" Office action is merely the second decision in a process that would take years (until mid-2017 or later) unless Apple successfully defends the patent before all appeals have been exhausted. The first Office action concerning this patent came down in December. Thereafter, Apple had its first opportunity to respond, and now, after the "final" Office action, it has another two months to argue that the patent is valid. The asserted claim of another patent-in-suit in the same litigation, claim 19 of the '381 ("rubber-banding" or "overscoll bounce") patent, was had the same procedural status in April only to be affirmed in June. I can't predict whether the same will happen to the asserted claim of the '915 pinch-to-zoom API patent. I wouldn't underestimate the hurdle Apple faces now. The "final" Office action finds claim 8 of the '915 patent anticipated by one prior art reference and obvious over the combination of two others, as you can see in the detailed version of the final Office action, which I uploaded to Scribd.
The "final" Office action does not meet the criteria laid out by Judge Koh in April when she denied Samsung's motion for a stay without prejudice, allowing a new motion only if an asserted claim is found invalid after the USPTO's Central Reexamination Division is done with it (at which point Apple can appeal the decision to the USPTO's Patent Trial and Appeals Board (PTAB), and subsequently to different courts. Judge Koh didn't say that she would necessarily order a stay in that case, but at least she would be willing to consider. The rubber-banding patent would have been Samsung's best shot, but its relevant claim was affirmed. For the pinch-to-zoom API patent time is not on Samsung's side. But Samsung has two other initiatives going to delay the limited damages retrial, one relating to Apple's damages theories and one concerning an alleged narrowing (in the reexamination proceedings) of the scope of the rubber-banding patent. If Judge Koh felt that at least one those motions might have merit but represents a close call, then the fact that the asserted claim of the '915 patent remains under reexamination pressure could play a role in her decision-making. But it's still not too likely that the November retrial will be postponed, even though Samsung definitely leaves no stone unturned in its tireless efforts to prevent Apple from obtaining remedies.
If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.
Share with other professionals via LinkedIn: