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Key claim in Apple's 'rubber-banding' patent still found invalid in final Patent Office action

post #1 of 18
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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.

Rubber Banding Patent
Illustration of Apple's "rubber-banding" patent. | Source: USPTO


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.

post #2 of 18
Inevitable.
post #3 of 18
This patent should have held up. Sucks.
post #4 of 18
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?
post #5 of 18

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.

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post #6 of 18
Quote:
Originally Posted by EricTheHalfBee View Post


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.

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.
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post #7 of 18
Quote:
Originally Posted by rob53 View Post

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?

 

Was it supposed to be valid just because it was Apple's, or do you actually understand the ins and outs of patents?

post #8 of 18
Quote:
Originally Posted by EricTheHalfBee View Post

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.

 

 

Hey, at some point, they'll have to sue themselves!  lol.gif

post #9 of 18
No one who works with patents would pay any attention to this development. Nothing has been invalidated -- we're in the middle of yet another re-examination. Each time another examiner gets involved, the arguments start again and some examiners get stuck on points that other examiners find non-issues. That's why this is a back and forth process, with several opportunities to appeal to higher authority. And even in the most extreme situation, Apple is always free to add a limitation from a dependent claim into the broad claim, making it slightly less broad, and the whole process starts over from scratch.
post #10 of 18
Quote:
Originally Posted by NormM View Post

No one who works with patents would pay any attention to this development. Nothing has been invalidated -- we're in the middle of yet another re-examination. Each time another examiner gets involved, the arguments start again and some examiners get stuck on points that other examiners find non-issues. That's why this is a back and forth process, with several opportunities to appeal to higher authority. And even in the most extreme situation, Apple is always free to add a limitation from a dependent claim into the broad claim, making it slightly less broad, and the whole process starts over from scratch.

This is a final office action so it's certainly something to pay attention to. The USPTO Central Reexamination board might reconsider after they get Apple's response. . .
...or they may not. If not then Apple would have to request an appeal with the Patent Trial and Appeal Board to keep any hopes for Claim 19 alive.

Adding a limitation from a broader claim at this point as you suggest would still dispose of the current finding of infringement which was dependent on the specifics of Claim 19. That's absolutely something Apple wants to avoid as they may not get a guilty finding if it's heard again.

Pretty sure I have that right anyway. Please correct me if it's not accurate.
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post #11 of 18
Quote:
Originally Posted by rob53 View Post

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?

Non of Samsung's patent is worth copying.  Why spend the resource to invalidate them?  Resource is better spent on more R&D of cool things.1smoking.gif

post #12 of 18
Quote:
Originally Posted by stike vomit View Post

Inevitable.

 

Quote:
Originally Posted by kozchris View Post

This patent should have held up. Sucks.

It was neither inevitable nor guaranteed to be upheld. Details matter. It's also too early to declare an end to this. There are more steps to ensue. Process matters.

post #13 of 18
Quote:
Originally Posted by Gatorguy View Post


This is a final office action so it's certainly something to pay attention to. The USPTO Central Reexamination board might reconsider after they get Apple's response. . .
...or they may not. If not then Apple would have to request an appeal with the Patent Trial and Appeal Board to keep any hopes for Claim 19 alive.

Adding a limitation from a broader claim at this point as you suggest would still dispose of the current finding of infringement which was dependent on the specifics of Claim 19. That's absolutely something Apple wants to avoid as they may not get a guilty finding if it's heard again.

Pretty sure I have that right anyway. Please correct me if it's not accurate.

The fact that this is a final office action doesn't mean much.  Apple has the right to continue prosecution by paying a $1200 RCE fee. I've seen cases where the applicant has filed 3-4 RCEs before it gets allowed or is appealed.  Also, there are a fair amount of bone-headed examiners.  Unless you read the rejection and make a decision yourself, you don't have any idea whether Apple is in a good or a bad position.  Even then, a creative attorney may come up with a way to define the claims that overcomes the rejection and still obtains good patent protection.  It isn't over until its over.  

 

I've prosecuted hundreds of patent applications (mostly in materials chemistry).  Getting a final rejection is not that uncommon.  The software examiners tend to be the worst examiners. It wouldn't surprise me if well over 50% of software cases get one or more final rejections.   

post #14 of 18
Quote:
Originally Posted by ash471 View Post

The fact that this is a final office action doesn't mean much.  Apple has the right to continue prosecution by paying a $1200 RCE fee. I've seen cases where the applicant has filed 3-4 RCEs before it gets allowed or is appealed.  Also, there are a fair amount of bone-headed examiners.  Unless you read the rejection and make a decision yourself, you don't have any idea whether Apple is in a good or a bad position.  Even then, a creative attorney may come up with a way to define the claims that overcomes the rejection and still obtains good patent protection.  It isn't over until its over.  

I've prosecuted hundreds of patent applications (mostly in materials chemistry).  Getting a final rejection is not that uncommon.  The software examiners tend to be the worst examiners. It wouldn't surprise me if well over 50% of software cases get one or more final rejections.   

I was hoping you might comment.

Wouldn't any change in Claim 19 require a new trial to determine whether there's infringement? That was the only claim from the "rubber-band" patent that Apple said Sammy infringed on. None of the others mattered as they weren't asserted in the lawsuit. Whether the patent itself survives isn't a question. It all comes down to that specific claim in the patent as far as Apple's lawsuit is concerned.
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post #15 of 18
Quote:
Originally Posted by Gatorguy View Post


I was hoping you might comment.

Wouldn't any change in Claim 19 require a new trial to determine whether there's infringement? That was the only claim from the "rubber-band" patent that Apple said Sammy infringed on. None of the others mattered as they weren't asserted in the lawsuit. Whether the patent itself survives isn't a question. It all comes down to that specific claim in the patent as far as Apple's lawsuit is concerned.

 

Sorry if this is harsh, but your statement about disposing of the "current finding of infringement" is seriously messed up. There is no such thing as infringement in the patent office and the patent office does not conduct a "trial."  Infringement is something a competitor does once the patent is issued by the patent office.  The patent office "allows" or "rejects" claims.  "Infringement" and "invalidity" are issues raised by litigants in federal court and they are decided by federal judges.  

 

For those that practice patent law, the difference between a "patent examiner" and a "judge" is like the difference between a basketball player and a referee.  Yes they both participate in the same game, but it seems inconceivable to mix up their roles.

 

Don't feel too bad about the error. The title of the article is screwed up too. It says the 'rubber banding' patent is "still held invalid".  I've said this many times on this website....THE PATENT OFFICE DOES NOT INVALIDATE PATENT CLAIMS. If you read the office action I'm sure it says something like......"Claim 1 is rejected under 35 U.S.C. 103(c) as unpatentable over US Patent 1,234,567 bla bla bla.  

 

The reason this distinction is important is because an applicant can amend a claim to get it allowed.  That doesn't mean that the claim was "invalid".  It just means the Examiner wouldn't allow it.  A good patent attorney will work with the examiner to figure out what the examiner will allow and get that issued in a first patent. If they think the Examiner wouldn't give them everything they deserve, the applicant will file a continuation application and fight over the broader language.   

 

Maybe a dollar figure will help people understand how much work goes into a rejection vs an invalidity proceeding.  For a small entity, the patent office charges $535 to file an application ($1070 for large entity).  That filing fee buys you a non-final and a final rejection.   The median cost of an invalidity proceeding is probably in the millions.  The difference in cost should help you understand just how much weight I would put on a rejection from the patent office vs. an court's determination of invalidity.   


Edited by ash471 - 4/3/13 at 12:37pm
post #16 of 18
Quote:
Originally Posted by ash471 View Post

Sorry if this is harsh, but your statement about disposing of the "current finding of infringement" is seriously messed up. There is no such thing as infringement in the patent office and the patent office does not conduct a "trial."  Infringement is something a competitor does once the patent is issued by the patent office.  The patent office "allows" or "rejects" claims.  "Infringement" and "invalidity" are issues raised by litigants in federal court and they are decided by federal judges.    

 

I'm pretty sure he was asking your opinion about the effect of a later patent claim change on a previous outside trial.

post #17 of 18
Quote:
Originally Posted by KDarling View Post

I'm pretty sure he was asking your opinion about the effect of a later patent claim change on a previous outside trial.

Yes sir, that's exactly what I was asking. I've no idea why he thought I was referring to anything else.

EDIT: Ash, to be exceedingly specific so as to avoid confusion about what I'd like to know. Apple asserted only claim 19 of the '381 patent. no others. That particular claim is still rejected after the final office finding. I don't believe Apple will be successful in getting that claim resurrected as is.

IF that's the case and Apple narrows or re-words that particular claim to satisfy the USPTO would there need to be a new Federal Court trial on patent infringement or can Judge Koh decide if infringement still exists as a matter of law?
Edited by Gatorguy - 4/3/13 at 1:12pm
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post #18 of 18
Quote:
Originally Posted by Gatorguy View Post


Yes sir, that's exactly what I was asking. I've no idea why he thought I was referring to anything else.

EDIT: Ash, to be exceedingly specific so as to avoid confusion about what I'd like to know. Apple asserted only claim 19 of the '381 patent. no others. That particular claim is still rejected after the final office finding. I don't believe Apple will be successful in getting that claim resurrected as is.

IF that's the case and Apple narrows or re-words that particular claim to satisfy the USPTO would there need to be a new Federal Court trial on patent infringement or can Judge Koh decide if infringement still exists as a matter of law?

Sorry, the AI article discusses "invalidation" in the patent office and I thought your question about "trial" was in reference to the USPTO proceeding.  (I don't read things very carefully when I'm not being paid to do it). =)

 

You are actually asking a very technical question.   What you want to know is whether a proceeding in the patent office after a trial will nullify or otherwise affect the judge's decision.  My best recollection is that the answer is no, so long as the court proceeding is over.  I think the law is not clear what happens if the patent office cancels claims while a case is on appeal.

 

The reason the patent office decision doesn't affect a court decision has to do with constitutional separation of powers between branches of government. Once a judge makes an order (judicial branch), the patent office (executive branch) does not have the authority to change the judge's decision.  Therefore, if a court issues a judgment that a patent is valid and infringed, the court order stays that way no matter what happens at the patent office.  It may even be the case that a defendant is paying a royalty or damages pursuant to the judgement even though the claims have been cancelled in a re-exam proceeding.  (I believe that is the outcome, but I'm not a litigator and I've never personally represented a client with such an outcome).

 

Also note that a claim is valid and enforceable until the re-exam certificate is issued.   The way re-exam works is that the patent stays as is until the end of the re-exam proceeding.  If the claims are amended or cancelled in re-exam, the patent office issues a "re-exam certificate."  Obviously there is no re-exam certificate yet in the Apple case because the proceedings are not over.  And like I said, a final office action doesn't mean much.  

 

It gets even more complicated.  What usually happens is the defendant (e.g., Samsung) will ask to stay the case pending the outcome of the re-exam.  I'm not sure if cancellation in the re-exam affects a stayed case.  I assume it probably does.  However, I'm not a litigator.   

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