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

Posted:
in General Discussion edited January 2014
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.

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Comments

  • Reply 1 of 58
    Hah.
  • Reply 2 of 58


    So why grant it in the first place?

  • Reply 3 of 58
    Isn't there some protection from cases like this, where you've successfully litigated a patent? It seems almost criminal to invalidate a patent like this, retroactively causing a successful lawsuit to be turned into somewhat of a humiliating "you win, no wait, you lose" type situation.
  • Reply 4 of 58


    Oh for god sakes, it seems patents are nigh on useless. What is the point in innovating when some asshole company can just copy your every move without the R&D costs. What a stupid world we appear to live in.

  • Reply 5 of 58


    The US patent office issued the patent , if anyone should be liable for damages it should be the US patent office.  Why should they be allowed to issue patents , let companies spend millions defending an issued patent and then say oh sorry we made a mistake you cant have that patent.


     


    not good enough !!!

  • Reply 6 of 58
    Appleinsider doesn't understand what "tentatively" means. It will take years & so many steps to invalidate a patent.
  • Reply 7 of 58
    Can someone with a legal background comment on this? At the time of trial, the patent was valid, and Samsung did not challenge its validity. Do the verdict regarding the claims in this patent still stand?
  • Reply 8 of 58
    mauszmausz Posts: 242member


    From my understanding the USPTO does not validate any patent request against prior art. It only needs to be specific enough etc. Any prior art should be investigated by the applicant (and thereby the applicant takes the risk). It actually states somewhere that any prior art validation will be left to ligitation

  • Reply 9 of 58
    mauszmausz Posts: 242member

    Quote:

    Originally Posted by zoffdino View Post



    Can someone with a legal background comment on this? At the time of trial, the patent was valid, and Samsung did not challenge its validity. Do the verdict regarding the claims in this patent still stand?


    Actually, the jury needed to validate the patent agains prior art as well (as brought to the case by Samsung). But that fantastic head of the jury convinced everyone that prior art was a non-issue and they just needed to determine infringement and damages.

  • Reply 10 of 58


    It is much the same as a law being overturned or later ruled unconstitutional.  You don't keep the prisoner in prison.


     


    Just because a law is passed does not mean the law is "valid".


     


    Similarly, patents can and have been invalidated-- sometimes after a lawsuit.  This is nothing new.

  • Reply 11 of 58
    So does this mean Apple is officially a patent troll?
  • Reply 12 of 58
    mac voyermac voyer Posts: 1,282member


    This is like a football team winning by a couple of touchdowns, only to read in Monday's newspaper that they lost because the Rules Committee decided that morning that all rushing touchdowns are invalid. Not only do you not win that game, but you are no longer in the playoffs, and your investment in a rushing attack was wasted. 


     


    It may be the law, and business as usual, but it still seems wrong that the organization that gave you the green light, turns around and gives you a ticket for moving forward with the patent. I would like to know on what basis it was deemed invalid? Which sifi/fantasy show did this patent in, and on the basis of such things, can any patent issued by this office mean anything? 

  • Reply 13 of 58

    Quote:

    Originally Posted by Mac Voyer View Post


    This is like a football team winning by a couple of touchdowns, only to read in Monday's newspaper that they lost because the Rules Committee decided that morning that all rushing touchdowns are invalid. Not only do you not win that game, but you are no longer in the playoffs, and your investment in a rushing attack was wasted. 


     



     


    That is completely off the mark. Patent invalidation ? changing the rules or the law

  • Reply 14 of 58
    It's more than time that USPTO starts thinking hard about the patents they grant. Ideally they should do that before they grant them. Note that the same people here that went agressive on foreign courts that did not see Samsung as "scum" suddenly seem to change their mind about the USPTO...

    In the meantime, I've just gotten a Nexus 7 and I'm playing with it, but I hope the iPad Mini rumor turns into glass and aluminum fast, because I also want one :D
  • Reply 15 of 58
    gatorguygatorguy Posts: 18,717member

    Quote:

    Originally Posted by Russell Brown View Post


    The US patent office issued the patent , if anyone should be liable for damages it should be the US patent office.  Why should they be allowed to issue patents , let companies spend millions defending an issued patent and then say oh sorry we made a mistake you cant have that patent.


     


    not good enough !!!



    Approx half of all patents are found invalid in whole or part when challenged either by reexamination by the PTSO or in litigation. Nothing unusual about this one meeting that fate. A recent article here at AI said that Apple knows some of what it attempts to file for may not be patentable, yet they go for it anyway. 

  • Reply 16 of 58

    Quote:

    Originally Posted by amar99 View Post



    Isn't there some protection from cases like this, where you've successfully litigated a patent? It seems almost criminal to invalidate a patent like this, retroactively causing a successful lawsuit to be turned into somewhat of a humiliating "you win, no wait, you lose" type situation.




    So you're saying that if the USPTO wronged Samsung and a court, based on the USPTO patent, in turn wronged Samsung, Apple should rightfully be allowed to wrong Samsung?


    Seems to not make much sense, at least to me.


     


    The USPTO made a mistake, a court made a decision based on that mistake, the USPTO corrects that mistake, so yes, it should be normal that you can overturn the court decision.


     


    Imagine that you have been wrongly convicted for murder based on forensics analysis, and new science developments prove you were innocent. Should you be kept in prison because "you win, no wait, you lose" is humiliating to the real criminal? I don't think so.

  • Reply 17 of 58
    Very strange. I read the other patents in question and I see nothing that describes the "rubber banding" effect or specifically the "inertial scroll". Instead the patents refer vaguely to applying acceleration or deceleration in scrolling, but is far too vague to make Apple's specific claims invalid. In addition, much of Lira and Ording is covered by prior art with other UI patents. Pretty fishy waters.
  • Reply 18 of 58

    Quote:

    Originally Posted by mausz View Post


    From my understanding the USPTO does not validate any patent request against prior art. It only needs to be specific enough etc. Any prior art should be investigated by the applicant (and thereby the applicant takes the risk). It actually states somewhere that any prior art validation will be left to ligitation



     


    That's not completely true. The USPTO examiner may find prior art on his or her own. This is necessary because Joe Public can submit an application without researching any prior art, and there will be too many patents granted that will have to be invalidated when challenged. Having said that, the typical examiner may spend at most a few days in total, and cannot be relied on to find all possible related prior art. A good patent application will mention all relevant prior art that would allow the examiner to start at a good place.


     


    Quote:

    Originally Posted by mausz View Post


    Actually, the jury needed to validate the patent agains prior art as well (as brought to the case by Samsung). But that fantastic head of the jury convinced everyone that prior art was a non-issue and they just needed to determine infringement and damages.



     


    I don't know that you can blame the head of jury for this (maybe?), although he did talk too much.


     


    The re-examination of this patent was requested by an anonymous party back in May, independent of this court case. This happens often. I recall Samsung itself mentioning that reexamination was happening during the course of the trial. The fact is that the jury of this trial did not invalidate any of the Apple or Samsung patents (~ 15 of them?). According to Florian Mueller, that is incompatible with statistical norm and therefore he foresaw this happening.


     


    There is a long way to go in this war.

  • Reply 19 of 58

    Quote:

    Originally Posted by Gatorguy View Post


    Approx half of all patents are found invalid in whole or part when challenged either by reexamination by the PTSO or in litigation. Nothing unusual about this one meeting that fate. A recent article here at AI said that Apple knows some of what it attempts to file for may not be patentable, yet they go for it anyway. 





    Half? Is it that high? Do you have a credible reference for this?  Thanks.

  • Reply 20 of 58
    Gatorguy's right. Simply googling "Half of all patents are invalid" gives you several results from .edu links
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