Last December, the United States Patent and Trademark Office (USPTO) issued a first Office action tentatively rejecting all claims of the "Steve Jobs patent", U.S. Patent No. 7,479,949 on a "touch screen device, method, and graphical user interface for determining commands by applying heuristics", which has been referred to by many people, including Apple's own lawyers, as "the Steve Jobs patent". First Office actions are of some, but actually rather limited, relevance.
As we speak, the Steve Jobs patent is even stronger than it was before someone (presumably Samsung and Google) challenged it anonymously. On September 4, 2013, the USPTO issued a reexamination certificate confirming the patentability of all 20 claims because the prior art neither anticipated this invention nor renders it obvious (click on the image to enlarge or read the text below the image):
US 7,479,949 C2
ISSUED UNDER 35 U.S.C. 307
NO AMENDMENTS HAVE BEEN MADE TO
AS A RESULT OF REEXAMINATION, IT HAS BEEN DETERMINED THAT:
The patentability of claims 1-20 is confirmed.
This outcome is a major strategic win for Apple, a massive setback for Samsung and Google, and a potential threat to other Android device makers.
The Steve Jobs patent is one of two patents Samsung must now work around to avoid a U.S. import ban ordered in August that took effect last week. Apple is also asserting this patent against Google's Motorola Mobility in a lawsuit that I believe will soon be remanded by the Federal Circuit to the Northern District of Illinois.
In June Apple already fended off a reexamination threat to another key multi-touch patent, the so-called rubber-banding (or, as I like to call it, overscroll bounce) patent. Three claims of the '381 patent were confirmed by the USPTO, including the one Apple successfully asserted against Samsung at last year's California trial and in other jurisdictions around the globe.
Samsung has argued on multiple occasions, and will presumably do so on various future occasions, that cases should be stayed or decisions reversed because of first and "final" (but not truly final) USPTO decisions. Among other things it also attempted to derail next month's limited damages retrial in California because of reexaminations of Apple's rubber-banding and pinch-to-zoom API patents. Apple explained to a court that even if those challenges succeeded, the processes would take until at least mid-2017 or longer if Apple exhausts (as it will do in the case of strategic patents) all appeals -- and the only way these processes can be concluded ahead of time is if Apple wins and a patent is confirmed.
Last year, not long after the first Apple v. Samsung trial in California, Google's executive chairman Eric Schmidt said the following in Korea:
"With respect to Apple patents, the best thing we can tell there are plenty of prior arts and I don't want to go beyond that."
The correct plural term would be "prior art references". But apart from terminology, the problem is that the prior art dug up by Google so far is apparently not strong enough to defeat Apple's key multi-touch patents. Otherwise these reexamination proceedings would result in the complete invalidation of the challenged patents. And the hurdle for invalidation is actually lower in reexamination (preponderance of the evidence) than in district court (clear and convincing evidence), where it represents an additional hurdle that factual determinations are left to juries, which tend to be inventor-friendly (good luck if you want to try to convince a jury that Steve Jobs was not an innovator...). The legal standard is even higher if a prior art reference was considered by the original examiner or in reexamination. With respect to such prior art references, a patent enjoys an enhanced presumption of validity.
In August the Federal Circuit sided with Apple on a couple of other multi-touch patents asserted against Motorola Mobility (at the ITC), and with respect to a key multi-touch hardware patent, Circuit Judge Reyna wrote the following:
"The Smartphone has defined modern life. Be it in the workplace, the home, airports, or entertainment venues across America, individuals are tethered to their handheld devices. Not long ago, users primarily spoke into these devices. Today, fingers tapping, grazing, pinching, or scrolling the screen is a ubiquitous image that reflects how we conduct business, work, play, and live. The asserted patent in this case is an invention that has propelled not just technology, but also dramatically altered how humans across the globe interact and communicate. It marks true innovation."
The above can also be said of the Steve Jobs touchscreen heuristics patent.
The situation on the patent front is becoming increasingly uncomfortable for Google, Samsung, and the Android ecosystem at large. More and more strategic Apple patents are confirmed by the patent office and the appeals court, and it appears inevitable that Android device makers pay Apple royalties and agree to "anti-cloning" provisions of the kind HTC accepted. For some time the Android camp thought that standard-essential patents were the answer, but it turns out that they are not. Patent enforcement takes time, especially in the U.S., but Apple has already made enormous headway, particularly in recent months. Let there be no doubt: Apple is on the winning track against Samsung and Google (at least in the U.S.).
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