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Tuesday, October 23, 2012, 02:05 am PT (05:05 am ET)

USPTO invalidates Apple's "rubber-banding" patent asserted against Samsung

It was discovered in a Monday court filing from Samsung that the U.S. Patent and Trademark Office tentatively invalidated Apple's bounce scroll, or "rubber-banding," patent, possibly putting the Apple v. Samsung jury's decision regarding the property at risk.

First reported by FOSS Patent's Florian Mueller, the filing notes that the USPTO invalidated all claims of Apple's U.S. Patent No. 7,469,381, including two rejections on claim 19 which was successfully asserted against Samsung in the companies' high-profile California trial.

From the USPTO's examination:
Rejections:

The following rejections are utilized by the Examiner below, referencing the proposed prior art listed on pages 23-85 of the Request:

Rejection A: Claims 1-6, 8-12, 16, 19, and 20 as being anticipated by Lira

Rejection B: Claims 7 and 13-15 as being obvious over Lira

Rejection D: Claims 1-5, 7-13, and 15-20 as being anticipated by Ording

Samsung points out in its statement to Judge Lucy Koh that the USPTO published the finding on its website on Oct. 22, following an ex parte examination of the patent. It was reported in May that an anonymous request to reexamine the '381 patent, along with Apple's U.S. Patent No. 7,479,949 for touchscreen heuristics. At the time, it was thought that Android maker Google lodged the request, however it could have been any number of rival companies in the business of building smartphones.

Rejection A and Rejection D are based on prior art considerations, one from PCT Publication No. WO 03/081458 on "controlling content display," by AOL/Luigi Lira, published on October 2, 2003 and U.S. Patent No. 7,786,975 on a "continuous scrolling list with acceleration," with named inventors Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay and Imran Chaudhri.

A finding of anticipation means no inventive step was found between the prior art and Apple's '381 patent claims. The company must now prove to the patent office, or the appeals court that the IP was both new and its claimed inventive step is tenable.

Judge Koh is currently hearing so-called Rule 50 motions, or those that overrule jury decisions, from Samsung and Apple. The USPTO's non-final finding may play a role in her decision regarding the devices affected by the '381 patent, and if a final Office action comes in invalidating the claims, the patent could be unenforceable.

As Mueller notes, however, Apple has a chance to persuade the patent office as more than on non-final Office action can be reached, and final Office action can be reconsidered by the Central Reexamination Division. The last decision by the division can then be appealed to the Board of Patent Appeals and Interferences, and that outcome can be appealed to the U.S. Court of Appeals for the Federal Circuit. Finally, a Federal Circuit decision can be appealed to the Supreme Court, though the matter is unlikely to reach such extremes.

As for Samsung, the Korean company already developed a workaround to the overscroll bounce patent, but if the invention were to be found invalid, it is probable that the feature would make a return to handsets sold in the U.S.