Apple's key claim in 'rubber band' patent rejected

Could USPTO's patent invalidation change the Apple V. Samsung case post-trial?

A new statement detailing the rejection of a key patent claim has the potential to alter proceedings in the Apple V. Samsung case.


Samsung recently filed a notice with the Northern District of California court, where Judge Lucy Koh is presiding over the long battle between the South Korean firm and Apple. The tech giants have been embroiled within a high-profile case that revolves around the alleged infringement of design and function patents.

Originally, Apple was awarded $1.05 billion in damages as the court ruled Samsung infringed on a number of Apple-owned patents. However, this compensation award was later overturned by Judge Koh, who went above the jury's award and instead lowered the figure to $450.5 million.

Apple has asked to proceed with a fresh trial against 14 Samsung products, whereas Samsung wants to place the case on hold as a result of the revised decision. However, the iPad and iPhone maker also believes that allowing the case to go through the normal appeals route would only result in "a remand without a substantive decision."

As noted by FOSS Patents' Florian Mueller, these types of post-trial proceedings have also included a re-examination of U.S. Patent No. 7,469,381, which includes Apple's 'rubber band' touchscreen feature, otherwise known as the "overscroll bounce." This feature on Apple products means that the iOS interface detects when the bottom of a scrollable page has been reached, and is able to bounce back.

As requested by an anonymous party, the patent was put under scrutiny last year by the Central Reexamination Unit. The United States Patent and Trademark Office (USPTO) has rejected a number of claims on the patent as invalid, including claim 19, which has been leveraged against a number of Samsung products and was considered valid by the court's jury only two months previously.

The re-examination has resulted in confirmations of claims 14, 17 and 18, but the important claim, which has now been rejected as a "finality," could have repercussions for the trial. According to Mueller, Apple has two months to formulate a response to the claim rejection. The findings can still be reconsidered, and appeals can be made to the Patent Trial and Appeal Board (PTAB), a type of devision in USPTO, in order to prove claim 19 is valid.

This would support the jury's prior verdict.

PTAB can make the final decision in terms of USPTO's involvement, but the matter will also be considered by the Central Reexamination Unit. It could take years before an absolute, final decision is made, which is another factor Koh has to consider while hearing each sides' views on the prospect of a fresh trial.

However, as these proceedings go ahead, Samsung can also use the USPTO findings in court. As damages were originally rewarded based on products rather than patents, a new trial would become necessary if the invalidity of the patent claim is upheld -- as there's no way to predict how the financial awards would have been changed if the patent hadn't been considered.

13-04-01 Samsung Statement Re '381 (Rubber-banding) Final Office Action by Florian_Muelle_439

Patents may be a sore spot for many firms today, but they are also necessary when developing new, innovative technologies. Recently, Apple filed a new patent --  application 20130076612  -- that details a potential future design for smartphones that utilizes the 'excess' space on today's mobile gadgets. The smartphone design suggests that flexible display technology could be used to allow information to be displayed not only on a central panel, but it could also show content on sides or the back. Combined with touchscreen technology, the design would also mean future smartphones may not require buttons.

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