Tuesday, September 9, 2014

Preliminary opinion of European Patent Office: Apple's rubber-banding patent invalid in Europe

Well over a year since the United States Patent and Trademark Office upheld a few claims of Apple's "rubberbanding" (or "overscroll bounceback") U.S. patent, the European version of that patent has come under massive pressure. The opposition division of the European Patent Office indicated in a document filed in July that independent claim 1 of EP2122678 does not meet the patentability requirement of novelty. Two pieces of prior art were considered "novelty destroying" (a term I've never seen in U.S. documents, where the common wording is that a prior art reference "anticipates" a claim inventioned, but it seems to be used over here):

Apple will now have to try to salvage the patent at least in an amended form. Overcoming two independent prior art references deemed to anticipate the claimed invention is not going to be easy. Even if Apple introduced amendments that are deemed novel, they may still fail to meet the non-obviousness requirement.

Fortunately for Apple, it now faces much less opposition from other parties. Originally, three companies were challenging the patent: Samsung, Motorola Mobility, and HTC. Samsung and HTC have meanwhile withdrawn their challenges as a result of an ex-U.S. ceasefire agreement (Samsung) and a worldwide settlement (HTC). Samsung was represented by Zimmermann & Partner's Dr. Joel Naegerl ("Nägerl" in German), whose track record in both shooting down and defending patents didn't previously get the publicity on this blog that it actually deserved (I mentioned it in my previous post today).

Motorola Mobility is the last opponent standing and intends to have lawyers from Quinn Emanuel appear at the mid-March opposition hearing in Munich (which I plan to attend and blog about). That fact was confirmed most recently in a letter by Apple's counsel, Withers & Rogers, transmitted on August 18, 2014. This surprised me. A few months ago, Apple and Motorola announced the withdrawal of all pending actions against each other. Usually this includes that patents are no longer challenged. But in this case, the proceedings at the EPO would have continued in any event (the EPO would have had to reevaluate the patent ex officio), and it's possible that Google disliked the idea of making it too easy for Apple to salvage the patent. Two years ago, Apple won a German injunction against Motorola Mobility over this patent. The judge who entered the injunction, Dr. Peter Guntz, later became a judge at the EPO.

During the Apple v. Samsung trial I explained why I have a lot of sympathy for the rubberbanding patent. The basic idea behind it was very unorthodox at the time. But I never found it impressive in technical terms (which I stated on this blog on multiple occasions). It's inventive in a psychological sense. But from a non-psychological, purely technical-innovation point of view I tend to agree with the EPO's preliminary opinion.

Interestingly, the EPO does believe that this patent meets the European technicity requirement for patent-eligible subject matter:

"The opposition division is of the opinion that the features of the independent claims relate to subject matter which is of a technical nature because they relate to the solution of a technical problem, that is how to inform a user of the device that the end of an electronic document has been reached, the solution being implemented with technical means like the [] user input (interaction with a touch screen display) and the subsequent translation of the electronic document on the touch screen display following the user input."

Having recently filed for a couple of patents on user interface technology myself (which are preferably implemented by means of a touchscreen and have technical depth as I'm sure people who see them, after publication, will agree), I consider this good news, and I'm sure so do countless practitioners in Europe who deal with user interface-related inventions. But subject-matter eligibility is only the first hurdle. The rubberbanding patent clearly has problems with respect to other patentability requirements.

For those interested in European case law on the patentability of computer-implemented inventions, aka "software patents", I'd like to recommend a German-language blog: Munich-based patent attorney Bastian Best's Softwarepatent-Blog. His two most recent posts describe a decision in which a technical board of appeal of the EPO deemed an invention involving the transfer of a personal activation code by means of a wire transfer patent-eligible and another decision in which a graphical programming tool was not deemed to solve a technical problem because it merely provided a visual representation of the structure of program code.

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