Patent In Apple Vs Samsung Case Found Invalid
US Patent and Trademark Office says bounce-back scrolling feature is neither new nor original
The US Patent and Trademark Office (USPTO) has ruled that Apple’s ’381 patent, which describes touchscreen interface features and was used in the $1.05 billion case against Samsung, is invalid.
According to documents discovered by patent expert Florian Mueller, all 20 claims in the patent, including the bounce-back scrolling or ‘rubber-banding’, were found to be too ‘obvious’ and not innovative enough to warrant the issue of a patent.
The decision is non-final, non-binding and it could be appealed. However, Samsung has already filed a motion with District Judge Lucy Koh, willing her to overturn the decision against it.
The reported invalidation could have implications in Apple’s cases against other Android manufacturers – namely HTC and Motorola Mobility.
Better late than never?
On 24 August, after a three-week trial and three days of deliberations, a US court ordered Samsung to pay Apple $1.05 billion in damages. The nine person jury ruled that Samsung products, including the Galaxy S II and Galaxy Tab, violated Apple patents. In the majority of cases, the jury found that Samsung’s infringement was “wilful.”
Later, Apple asked for an additional $707 million (£436m), to compensate for “damage to the iPhone’s distinctive product identity”.
However, it seems that a patent at the centre of Apple’s case, one for “list scrolling and document translation, scaling and rotation on a touchscreen display”, might have been issued by mistake.
According to Mueller, the USPTO legal speak boils down to the fact that the Office does not believe that rubber-banding was invented by Apple. This means Samsung could get the Judge to overrule the jury, and even drop the patent from the case altogether.
Samsung has already altered its software to work around the patent in question. If the decision of USPTO stands, users in the US might see the return of rubber-banding to Galaxy smartphones and tablets.
Apple has also used another claim from this patent in a case against HTC, scheduled for 27 November. If the patent is invalidated, the Silicon Valley giant may not have a leg to stand on.
Meanwhile in Europe, the same design elements served as a basis for Apple to obtain an injunction against devices made by Motorola Mobility. The European Patent Office is currently re-evaluating its treatment of Apple’s intellectual property on request of Samsung, Motorola and HTC, and could be influenced by the US. Should the EPO revoke the patent, Apple’s German injunction becomes unenforceable.
“It’s not surprising that the ’381 patent faces a serious challenge to its validity. I’ve said in a report on a Munich trial that it’s a great achievement in the realm of use interface psychology, but in a strictly technological sense it has extremely little merit, if any,” wrote Mueller on his blog.
“It’s a patent on a great idea and out-of-the-box thinking (in a patent sense, one can argue that all other scrolling operations disclosed before this one used to “teach away” from it). But it doesn’t take rocket science to make it work. Technically it’s just about drawing rectangles.”
Mueller warned that even the final decision by USPTO can still be overturned and/or appealed.
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