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Apple's Patent Problems: USPTO Invalidates The Rubber Banding Patent

This article is more than 10 years old.

This is something of a problem for Apple in the never-ending patent litigation against Samsung. The USPTO has just invalidated the patent on bounce back scrolling (or as I've called it, the List Scrolling Bounce Back patent). Very well done indeed to Florian Mueller for spotting this:

The United States Patent and Trademark Office has good news for Samsung, and Samsung has already shared it with Judge Koh in a late-night filing. In a non-final Office action the USPTO has declared all 20 claims of Apple's rubber-banding patent (U.S. Patent No, 7,469,381 invalid, including claim 19, which Apple successfully asserted against Samsung in the summer trial in California. In fact, claim 19 is one of several claims to be deemed invalid for two reasons, either one of which would be sufficient on its own.

Do go and read Mueller for the full detail of this. The basic case is simply stated though.

Patents are granted for, essentially, things that are new and inventive. They must also be both: being one or the other just isn't good enough. The flip side of this is that something which is not new cannot be patented: the usual term used is "prior art". As an example (despite the fact that someone has actually been awarded a patent on the wheel) I cannot go out and patent the wheel. All someone has to do to invalidate it is to show that wheels have been in use for some time now. The parallel ruts in a Roman road might well be enough proof. (Which gives us our answer to that patent granted on the wheel. No one has bothered to challenge it as no one is ever going to try and enforce it, for it would obviously fail).

Similarly, the flip side of it being inventive is that it must be "non-obvious". If wheels already exist in green and red and purple I cannot claim a patent on a vermillion wheel. That wheels come in certain colours means that having a wheel in yet another is just obvious.

Note, again, that to gain a patent we must have both new and inventive. And as Mueller is pointing out the USPTO is claiming that this patent is neither:

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

It is neither new nor non-obvious.

Now, Apple can appeal this finding right up the chain of courts. They might win, they might lose. If they win then some parts of that judgement they won against Samsung would therefore still stand. It they lose then obviously some parts of them fail. However, this takes years to work out (the court system is not known for moving at anything other than geological speed).

What becomes interesting though is what happens in this current trial that is still being worked through (yes, we've had the jury verdict but that's not the end of it by any means). As and while the system as a whole regards Apple's patent as valid then things like bans on Samsung selling kit in the US (kit that breaches the patent of course) make sense. But as and while the system regards the Apple patent as invalid the opposite applies: there is no reason at all to ban Samsung from selling equipment. Sure, Apple might win in the end but a ban should really only apply while the system, the law, regards the patent as valid. Not while Apple tries to gain recognition of the patent though the various possible appeals.

Which is, at least I think so, the importance of this ruling. For the current sales battle is not about who gets to sell phones in the next few months, few years. Rather, we're in a technological shift: the move from feature phones to smartphones. It's one of the few times when people have the opportunity of locking people in to an infrastructure, an ecosystem, which they will then use for years or decades. A ban on Samsung, or Android, phones is not about whether someone buys an Apple or not this year. It's about whether when they replace their phone in 2020 they'll do so with 15 gazillion iOS apps or 15 gazillion Android apps already bought and paid for and in use on their old phone. Something that will obviously tip (although not entirely determine) whether they purchase another iOS or Android phone.

While Apple could ban Samsung and or Android sales as a result of this patent then Apple was winning this battle. If the ban no longer exists then, to some extent at least, whatever the final ruling then Samsung and or Android are winning. Because they're still in the fight for signing people up to the different ecosystem.

Sadly the USPTO hasn't pointed to Pong as the origin of the scrolling bounce back as one observer has claimed it is. But there's still time for that I suppose.