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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 http://www.bgr.com/2012/08/24/apple-samsung- 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 http://www.guardian.co.uk/technology/2012/aug/22/jurors-samsung-apple-questions (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 himself...so 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.

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