Mikey Campbell
In a statement filed by Samsung to the Apple v. Samsung court on Monday, the Korean company noted that the U.S. Patent and Trademark Office ruled claim 19 of Apple's "rubber-banding" patent was invalid in a final Office action, a finding that could change the direction of the post-trial proceedings.
The USPTO invalidated Apple's U.S. Patent No. 7,469,381 in October of last year, including rejections on claim 19, which was successfully leveraged against a number of Samsung products in the companies' high-profile California trial.
Apple's so-called "rubber-banding" or scroll bounce-back patent deals with the iOS user interface feature that lets users know when they have reached the bottom of a scrollable page. An ex parte examination was requested for the property in May, with the USPTO's first Office action in October finding two cases of prior art against the patent.
As noted by FOSS Patents' Florian Mueller, Apple has made some headway since the initial action, as the USPTO's Central Reexamination Unit confirmed claims 14, 17 and 18 of the '381 patent. However, the remaining 17 claims, including the important claim-in-suit in the Apple v. Samsung court trial, were once more rejected.
Mueller says Apple and the anonymous challenger that filed the ex parte request have two months in which to respond to the final rejection. The word "final" sounds more definitive than it really is, he writes, pointing out the Central Reexamination Unit sometimes reconsiders these findings. If the USPTO doesn't, an appeal can also be lodged to the Patent Trial and Appeal Board, which will make its own final decision.
If all else fails, Apple can then take the PTAB's decision up to the U.S. Court of Appeal for the Federal Circuit. Mueller believes it will be years before a resolution is found regarding the validity of Apple's patent. To prove that claim 19 is valid, the Cupertino company must prove to the patent office, or the appeals court, that the IP was both new and its claimed inventive step in regard to the prior art is tenable.
Samsung could be bringing the final Office action development to the court in a bid to curry favor with Apple v. Samsung presiding Judge Lucy Koh as the post-trial processdings continue. Apple wants to hold a new trial for damages related to 14 Samsung products, while the Asian tech giant is seeking a partial final judgment so that it can appeal the ruling with the Federal Circuit. If the invalidation of claim 19 is carried in the Federal Circuit, a completely new trial for all products at issue would be needed because the jury awarded damages per-product, not per-patent.
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17 Comments
Inevitable.
This patent should have held up. Sucks.
This patent was supposed to be a real patent. If it finally goes down, what patent is actually safe? At this point, Apple should start going after any patent Samsung is using, fighting to declare it invalid. Even standards patents should be free game since most of those probably had prior art and weren't really inventive. We're getting close to not having any valid software patents. What's next, no patents on anything?
It's not over yet. There are still 2 more (if I remember correctly) stages for Apple to go through to appeal this.
A few months ago people thought the patent was 100% invalid. Now Apple has three claims valid and will have to do more work to prove other claims valid as well.
The real interesting part is one of the two patents which show prior art actually belongs to Apple. Getting a new patent claim denied because of another patent you own. Oh the irony.
[quote name="EricTheHalfBee" url="/t/156762/key-claim-in-apples-rubber-banding-patent-still-found-invalid-in-final-patent-office-action#post_2303697"] The real interesting part is one of the two patents which show prior art actually belongs to Apple. Getting a new patent claim denied because of another patent you own. Oh the irony. [/quote] The prior Apple patent makes claim 19 of the "rubber-band" patent anticipated, which will be much harder to overcome than a finding of obvious. After reading a couple different opinion pieces on this I don't believe there's much chance of Claim 19 being resurrected and that's the specific one that Apple is trying to assert. The other patent claims are much less important and perhaps not even infringed. So essentially if Claim19 isn't allowed then Samsung would not be infringing even if the patent itself otherwise survives.