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Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated
Tuesday, October 23 2012 @ 12:16 PM EDT

Apple's patent #7,469,381, the notorious rubber-band patent it's been going after Android with, has just been tentatively rejected by the USPTO on reexamination. Apple has two months, until December 15, 2012, to respond and try to save it. Here's the USPTO's communication [PDF] to Bryan Cave, the law firm that asked for the ex parte reexamination, letting them know that Claims 1-20 have been rejected because "a substantial new question of patentability was raised in the Request for ex parte reexamination filed 5-23-2012."

I believe that it's claim 19 that Apple used against Samsung. So this is a significant development, should it become final. Claim 19, according to the communication, was "anticipated by" Lira and Ording. The jury found the same patent not only valid but infringed by Samsung and based damages on it (see amended verdict form[PDF]), just a little more proof that this was a jury that goofed every which way. But it's up to the judge how to handle this new bit of news.

[Update: Samsung has already filed this news with the court in California. It's relevant to this motion [PDF], Samsung's opposition to Apple's motion [PDF] for a permanent injunction and for enhanced damages. In its opposition, Samsung writes "The Court should reject this effort to hinder competition and limit consumer choice." Amen to that. Here's the best media coverage (other than here, of course) I could find for you, by IDG's Loek Essers on InfoWorld.]

That means there is prior art. The jury at trial didn't recognize any valid prior art, if you recall. That's one of the issues that Samsung has brought to the table in post-trial motions. And now, as you can see, the USPTO does not agree with this jury. Who would?

On page 4 of the PDF, you will see a list. Lisa is PCT Publication No. WO 03/081458 by Luigi Lira. Ording is US Patent No. 7,786,975. Then under the header "Rejections", you find this:

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.

If you go to page 5 of the communication, under the heading "Rejections Over Lira", you will find this:
With respect to the following rejections over Lira, the "edge of the electronic document" has been shown to be capable of being construed as an internal edge, as opposed to being limited to the outer edge of a document as a whole. The Courts agree with the Examiner's independently formulated interpretation, as can be seen in the April 4, 2012 Order Construing Disputed Claim Terms of the '381 Patent issued by the Federal District Court for the Northern District of California in Apple v. Samsung Elecs. Co., 5:11-CV-01846-LHK, ECF No. 849 (Exhibit 7), where it was decided that "an electronic document can be embedded in another electronic document, and there for the "edge of an electronic document" is not limited to "external" edges." Under Lira, whole documents (webpages) further contain individual images and column based text portions (see page 11, line 27 through column 12, line 2 and in figure 8A), that are internal to the webpage as a whole, where bounce back is effected responsive to the window being misaligned with the column based sub-document content (see page 15 lines 18-31). Furthermore, under Lira, the column in which the display window is located over could be an outside column where when the window is moved away from the document and over an outside boundary, the bounce back could be responsive to the document as a whole, moving from the whitespace on the top, bottom, and sides of the webpage back over the webpage.
The rejection because of Ording's '975 patent is self-explanatory, under 35 USC 102:
A person shall be entitled to a patent unless --

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.

The USPTO then goes on to remind Apple of its responsibility to keep the USPTO apprised of "any litigation activity, or other prior or concurrent reexamination proceeding." And Bryan Cave is reminded it has the ability to apprise the office of any such activity or proceeding. There was an earlier request for reexamination, #90/010963, filed in April 28, 2010. Apple can submit materials to try to change the course of this reexamination, but if that isn't successful, the next action by the USPTO will be a final rejection. There are no delays granted.

This matters not only to Samsung. Not only could it be used in litigation like this one, but Samsung told the court that Apple had been contacting others, back when there was a preliminary injunction in place against the Galaxy 10.1, claiming this patent and the injunction affected them:

Further, Apple has sent letters to multiple carriers and downstream customers insisting that they are obliged by the preliminary injunction to “immediately remov[e] for sale the Galaxy Tab 10.1 from all physical and online venues under your direction or control” and further asserted that the injunction required them to "ceas[e] immediately" selling or offering to sell "the Galaxy Tab 10.1 tablet computer and any product that is no more than colorably different from it and embodies the '889 patent's design.” See Reply in Support of Motion For Stay of Preliminary injunction Pending Appeal (Case No. 2012-1506) at 8-9. That claim by Apple was and remains utterly false. See, e.g., Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 96 F.3d 1390, 1395 (Fed. Cir. 1996) (“Because the appellants were never made parties to the underlying action and thus never had an opportunity to contest the findings of liability in that case, they are not subject to being enjoined or held in contempt with respect to their independent conduct regarding the subject matter of the [underlying] case.”); Paramount Pictures Corp. v. Carol Publishing Group, Inc., 25 F. Supp. 2d 372, 374-76 (S.D.N.Y. 1998) (nonparty distributors and retailers were not subject to injunction against publisher and thus were entitled to continue sales of their existing inventory).
As you know, the preliminary injunction was lifted, but that doesn't mean a permanent one wouldn't later apply. There will argument about that on December 6th at the hearing. My point is this: Apple has been superaggressive with this patent, and if it ends up being an invalid patent after all, there will be an impact, not just on Samsung.

But Samsung, don't forget, had to go to the trouble and expense of coming up with a noninfringing way to get sort of the functionality of the rubber band patent. We learn about that in this declaration [PDF} by Yoram (Jerry) Wind, one of the newer documents we just posted the other day:

21. I understand that Samsung has been found to have incorporated touchscreen features claimed in the ’381, ’915, and ’163 patents in certain smartphones and tablets. I also understand that Samsung has developed and begun to employ non-infringing alternatives which provide customer benefits that are comparable to the features claimed in the Apple patents that Samsung was found to have infringed.

22. U.S. Patent No. 7,469,381 issued December 23, 2008 and is entitled “List Scrolling and Document Translation, Scaling, and Rotation on a Touch-Screen Display.”20 I understand that the ’381 patent relates to the “bounce back” or “rubberband” feature that indicates when a user has scrolled to the end of a document on a touchscreen display.21 When the user scrolls to the end of a document, the screen continues past the edge of the document and temporarily displays a shaded area before bouncing or “snap[ing] back” to the edge of the document.22 I further understand that this functionality has been incorporated into certain Samsung smartphones and tablets.

23. I understand that Samsung has developed a non-infringing alternative to the ’381 patent that has been implemented in several of its smartphones and tablets.23 This non-infringing alternative replaces the “rubberband” feature with a blue glow that emanates from the edge of the screen whenever the user attempts to scroll past the edge. I understand that, under the non- infringing alternative, the screen stops at the edge of the document such that no “rubberband” effect is implemented.24

20 U.S. Patent No. 7,469,381 B2.

21 Declaration Of Andries Van Dam, Ph.D. In Support Of Samsung’s Opposition To Apple’s Motion For A Permanent Injunction And For Damages Enhancements Regarding U.S. Patent No. 7,469,381, October 18, 2012 (“Van Dam Declaration”), pp. 5-6; U.S. Patent No. 7,469,381 B2, at column 21. See also, Reed, Brad. “Apple vs. Samsung: The gory details,” BGR, August 24, 2012, available at trial-verdict-samsung-loses-big/ (viewed October 9, 2012); Arthur, Charles. “Apple v Samsung: the questions the jury has to answer,” The Guardian, August 22, 2012, available at (viewed October 9, 2012).

22 Van Dam Declaration, p. 5.

23 Van Dam Declaration, pp. 6-7.

I believe this is the Van Dam Declaration [PDF] he is referring to.

So, if this turns out to be an invalid patent after all, who makes Samsung whole for all its expense creating the workaround and also for the inability to sell devices during the injunction? And how is its good name restored? You tell me. That's the court's job to try to find a solution. And it's a job for Superman. Once your reputation is smeared, it's hard to get it back. Think of the loathsome headlines about Samsung being a copycat and a willful infringer. I mean. Think about what Apple has done. Even if, in the end, Apple is able to save this patent, or some claims of it, I think the world can acknowledge that it's a stupid patent that is at least arguably invalid, and if that was the conclusion Samsung also reached when Apple threatened to sue unless they crossed Apple's palm with silver, how can anyone fairly accuse it of willful infringement?

In short, if I were Samsung, I'd be furious.

Would you like to know how to avoid this kind of inevitable harm from stupid software patents? Make sure no one can patent software. Period. Just turn back the clock, don't let the courts write patent law by passing a clear statute that software is not patentable subject matter, which it never was supposed to be, and this kind of awful harm can't happen to anyone and the toxic patent smartphone wars would be curtailed to at least a manageable level.

Do you recall the interview that CNET's Greg Sandoval did with Manuel Ilagan, the only other juror to speak to the media after the verdict other than the foreman? He talked about this very patent:

The decision was very one-sided, but Ilagan said it wasn't clear the jurors were largely in agreement until after the first day of deliberations.

"It didn't dawn on us [that we agreed that Samsung had infringed] on the first day," Ilagan said. "We were debating heavily, especially about the patents on bounce-back and pinch-to-zoom. Apple said they owned patents, but we were debating about the prior art [about similar technology that Samsung said existed before the iPhone debuted]. [Velvin] Hogan was jury foreman. He had experience. He owned patents he took us through his experience. After that it was easier. After we debated that first patent -- what was prior art --because we had a hard time believing there was no prior art."

"In fact we skipped that one," Ilagan continued, "so we could go on faster. It was bogging us down."...

"Once you determine that Samsung violated the patents," Ilagan said, "it's easy to just go down those different [Samsung] products, because it was all the same. Like the trade dress -- once you determine Samsung violated the trade dress, the flat screen with the bezel...then you go down the products to see if it had a bezel. But we took our time. We didn't rush. We had a debate before we made a decision. Sometimes it was getting heated."

So to those who may still think that the foreman's role introducing his own "experience" with patents had no effect on the outcome, read it and weep. It's this very patent that the jurors didn't think was valid until he intervened. And the USPTO just told them that he got it wrong.


Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated | 167 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Popcorn supplies needed?
Authored by: Anonymous on Tuesday, October 23 2012 @ 12:26 PM EDT
The pot seems to be boiling over. Apple may wish it had never entered the

[ Reply to This | # ]

Corrections thread - - thnx -> thanks
Authored by: nsomos on Tuesday, October 23 2012 @ 12:29 PM EDT

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj
Authored by: Anonymous on Tuesday, October 23 2012 @ 12:31 PM EDT
this is only like 30 million dollars. most of that billion was tradedress. it
the inpact but not by much. putting a lite kevlar vest on with a 50 cal shot.
lol it
still gets ya.

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj
Authored by: Anonymous on Tuesday, October 23 2012 @ 12:37 PM EDT
has Apple kept the USPTO abreast of all litigation involving
this Patent?

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj
Authored by: MDT on Tuesday, October 23 2012 @ 12:38 PM EDT
If you go read the Arstechnica article, you find the absolutely hilariously
ironic tidbit that it's invalidated by one of Apple's own prior patents.

A 2005 patent granted in 2010, invalidates the 2007 patent granted in 2009. :)
You can't make this stuff up. :)

Oh, combined with a European AOL patent from 2008 if I remember correctly.


[ Reply to This | # ]

Authored by: Anonymous on Tuesday, October 23 2012 @ 01:22 PM EDT
Now we can download code to enable this feature on our Dorids. How can I do

[ Reply to This | # ]

"the USPTO does not agree with this jury"
Authored by: Anonymous on Tuesday, October 23 2012 @ 01:31 PM EDT

That's gotta hurt.

The USPTO ...

... the body that grants lots of patents it shouldn't be granting in the first place ...

... disagrees with the Jury that the patent is no longer valid in it's current state due to prior art.



[ Reply to This | # ]

"Apple can submit materials to try to change the course of this reexamination ..."
Authored by: webster on Tuesday, October 23 2012 @ 01:48 PM EDT

What can they possibly submit? Certainly not prior art. Did
they leave something out? How can they distinguish it from
the prior art? Velvin could help them.


[ Reply to This | # ]

Scheduling issues
Authored by: Anonymous on Tuesday, October 23 2012 @ 02:02 PM EDT
Apple seems to have been quite dead-set expediting any hearings on matters
Samsung has wanted to get moving along in the case.

Are there now any matters where the shoe goes on the other foot - things Apple
would like to have heard before the patent rejection could become final?

[ Reply to This | # ]

Hogan's Bluff,
Authored by: BJ on Tuesday, October 23 2012 @ 02:19 PM EDT
...called by the USPTO.
The irony!


[ Reply to This | # ]

unpatentable subject matter
Authored by: gibus on Tuesday, October 23 2012 @ 02:33 PM EDT
Note that the first and main reason for the rejection should have been that this patent is about abstract subject matter, namely an algorithm. I've analyzed in detail this patent, in order to show how the damage currently known in the US patent system would spread into Europe would the current patent reform (unitary patent) be adopted: How the thermonuclear patent war would explode in Europe with the unitary patent.

[ Reply to This | # ]

PTO and jury apply different standards
Authored by: Anonymous on Tuesday, October 23 2012 @ 02:36 PM EDT

The PTO has a lower standard to meet when invalidating a patent as compared to a jury in district court. Also, the PTO interprets claims more broadly than the district court does. I am not saying that the jury got it right, all I am saying is that the PTO finding a patent invalid that a jury found valid is not inconsistent under US patent law. That exact situation is why reexamination is so attractive as compared to invalidating patents in district court.

With respect to Samsung's reputation, why didn't they file this over 2 years ago when this case got started instead of waiting until this past May to file? I don't really feel sorry for them.

[ Reply to This | # ]

News Picks thread
Authored by: nsomos on Tuesday, October 23 2012 @ 03:05 PM EDT
It is helpful for the first comment on a news pick to
include a clickable link to the pick. Remember to post
in HTML mode and follow example in red. Don't forget,
that 'preview' is your friend.

[ Reply to This | # ]

If this turns out to be confirmed invalid
Authored by: Anonymous on Tuesday, October 23 2012 @ 03:18 PM EDT
It will be interesting to see if core android is patched
roads this functionality in.

The blue glow workaround has some nice features, but it
would be interesting to know if it was Duarte's primary
vision for Android or if it was a legally necessary

Either way I would expect it to show up in manufacturer
skins again.

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated
Authored by: Anonymous on Tuesday, October 23 2012 @ 03:46 PM EDT
Apple's other patent shouldn't hold either. The Star 7 demonstrated this over a decade earlier (look at 4:26).

[ Reply to This | # ]

Moto verdict impacted too
Authored by: Anonymous on Tuesday, October 23 2012 @ 03:51 PM EDT

Knocking out the rubberbanding, this knocks out far more as alluded to in the

[ Reply to This | # ]

Will a Rejection Stop Damages?
Authored by: Anonymous on Tuesday, October 23 2012 @ 04:16 PM EDT
For some reason, I remember reading about people who were stuck paying damages
from invalid patents. Is that normal and will Samsung get stuck with that, or
have I been reading too much news from East Texas?

[ Reply to This | # ]

Is Florian getting better??
Authored by: maroberts on Tuesday, October 23 2012 @ 04:20 PM EDT
..his latest blog seems a bit more even handed and dispassionate, and it seems
he was fairly quick to get his copy out.

I won't link to it, for obvious reasons, but any expert review would be

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated
Authored by: dio gratia on Tuesday, October 23 2012 @ 05:29 PM EDT

There's an article from August 7, 2012 The Apple patent Steve Jobs fought hard to protect, and his connection to its inventor on The Next Web that points out the importance of this patent to Steve Jobs:

NetworkWorld pored through comments made by Senior VP of iOS software Scott Forstall, where he explained the importance of Apple’s ’381, ’915 and ’163 patents, which are all currently being asserted against Samsung in a Californian District Court.

Forstall explained his delight at being able to create an iPhone that utilised pinch-to-zoom (the ’163 patent on which he is listed as an inventor), he also detailed Steve Jobs’ close connection to Apple’s ’381 patent — a technology that covers the ”rubber band” (or inertial scrolling) effect that occurs when a user attempts to scroll past the end of a displayed document or webpage.

Jobs’ affinity for the inertial scrolling has been demonstrated over the years. In 2010, he told attendees at an AllThingsD conference about the rubber band effect and how it had spurred the creation of the iPhone. The Apple co-founder was also reported to have entered negotiations with Samsung in the same year, where he identified the patents that the Korean company was allegedly infringing upon and invited them to work out a deal, prior to the lawsuits we are witnessing today.

When asked about Jobs’ negotiations, Forstall said: “I don’t remember specifics. I think it was just one of the things that Steve said, here’s something we invented. Don’t – don’t copy it. Don’t steal it.”

We also read Bas Ording is a graphical designer responsible for the Dock icon magnification in OS X, shown off at an interview at Apple, and hired by Jobs after being rejected as a candidate.

Go back to those teaching computer graphics as in Foley, vanDam, Feiner and Hughes in Computer Graphics Principles and Practice where we see very little early patenting and there is a distinction between hardware or algorithmic centralism in describing graphical display and user interface and visual effect, which the algorithmic underpinnings of is the subject of a lot of Apple patents. Extend that to user interface things like touch gestures and Apple is claiming ownership of methods of communications by describing methods of causing visual effects.

Without meaning to be mean spirited the inspiration for the iPhone can be found in those who came earlier (e.g. Lira). Nothing is 'invented' in a vacuum. And should language (signs, semiotics) be limited by patents?

[ Reply to This | # ]

Off Topic Thread
Authored by: artp on Tuesday, October 23 2012 @ 06:11 PM EDT
Do not be convergent. This thread is different than the
article it is attached to.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

How to restore Samsungs reputation
Authored by: Anonymous on Tuesday, October 23 2012 @ 06:41 PM EDT
I don't know about US law, but recently a British Judge found that Samsung did not copy the Ipad and demanded Apple put adverts up to say Samsung didn't and post a notice on its (UK) website. Does a Judge in the USA have the power to request this? BBC article

[ Reply to This | # ]

Slot Machines?
Authored by: rsteinmetz70112 on Tuesday, October 23 2012 @ 06:59 PM EDT
It seems to me electronic slot machines did this rubber banding a long time ago,
emulating their mechanical predecessors. The first video slots were introduced
in 1975.

Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

Comes Goes Here
Authored by: artp on Tuesday, October 23 2012 @ 07:26 PM EDT
For those hardy souls who transcribe court documents about
Microsoft's dirty tricks from the "Comes v. MS" trial.

See link above for "Comes v. MS" for further details.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Now to invalidate M$ patents!
Authored by: Anonymous on Tuesday, October 23 2012 @ 09:35 PM EDT
This is great news! Now we only need to invalidate the
software patents that M$ is using to aggressively pursue
open-source competitors, and open source will be freed from
their shackles!

[ Reply to This | # ]

Other SW/design patents
Authored by: Anonymous on Tuesday, October 23 2012 @ 10:09 PM EDT
Are the other SW and design patents also being re-examined? Is
anyone able to find out?
Maybe the judge will ask the parties to lay open any re-
examinations they are aware of.

[ Reply to This | # ]

Unbelievable! Who's working at the PTO? Chimpanzees? (warning Prior Art discussed)
Authored by: Anonymous on Tuesday, October 23 2012 @ 10:16 PM EDT

Apple has a new patent on something this news article calls "Cover Flow", 8,296,656. Whatever that is. I can tell you what it patented. An application that has been on the Internet since at least 2002. A viewing scheme for photos that's almost a decade old or more, and this is a patent application from 2009, which is a continuation of a patent from 2006.

A patent on an application I use called Gallery. It creates a "media browser" within a screen (like a browser). here's a link to Gallery. Version 1 was out in 2005 or earlier.

Man someone needs to fire everyone in the patent office and hire some qualified people.

Here's a link to a closed bug from 2002 talking about the slideshow feature being broken in the 1.3RC version. The feature Apple claims to have invented. The first bug reported is in July of 2000, around the time the project moved to SourceForge at the time version 1.3 was in development. I just can't comprehend how Apple can honestly claim to have invented this feature.

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated
Authored by: Anonymous on Tuesday, October 23 2012 @ 10:36 PM EDT
Didn't Hogan say something about the patent office upholding the patent?

Mouse The Lucky Dog

[ Reply to This | # ]

Apple's Rubber Band Patent Tentatively Rejected on Reexamination ~pj Updated
Authored by: Anonymous on Wednesday, October 24 2012 @ 01:50 AM EDT
> Think of the loathsome headlines about Samsung being a copycat and a
willful infringer.

What I didn't get right from the start, not the least based on what I could read
on groklaw, is why Samsung didn't react much stronger to Apple. It appeared to
me that Samsung never attempted to get in the driver seat, and instead was
steam-rolled by Apple.

My impression is while Apple made one aggressive move after the other, Samsung
was sitting there like a duck. I was expecting much more aggressive behaviour
from them, too.

Maybe the needed some more aggressive lawyers from the beginning, too. That
episode where the Samsung lawyer gave the judge an earful was probably coming to

[ Reply to This | # ]

Apple lost in the Netherlands too!!
Authored by: Anonymous on Wednesday, October 24 2012 @ 07:10 AM EDT
Apple lost its patent case in the Netherlands too!!


[ Reply to This | # ]

Microsoft patent for API's to radio interface - 6,826,762
Authored by: Anonymous on Friday, October 26 2012 @ 05:10 AM EDT
Though this was an unrelated, wanted to know if anybody is aware of appeal over
this patent(6,826,762) by Microsoft.
Wondering how anyone could get a patent over API's(that mimic standard
specification as claimed in the patent itself) to access radio interface in a
cell phone!
Who can evaluate the "Good faith" over trying to enforce these kind of

[ Reply to This | # ]

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