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Apple's Claim 19 of '381 Patent Rejected by USPTO in Final Office Action: Impact on Apple v. Samsung Damages Can Be Huge ~pj | 191 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here
Authored by: ukjaybrat on Tuesday, April 02 2013 @ 12:29 PM EDT
Correction in title please.

---
IANAL

[ Reply to This | # ]

Newspicks Thread
Authored by: ukjaybrat on Tuesday, April 02 2013 @ 12:33 PM EDT
Include a link to article, please.

---
IANAL

[ Reply to This | # ]

Comes here
Authored by: ukjaybrat on Tuesday, April 02 2013 @ 12:34 PM EDT
Comes goes here.

---
IANAL

[ Reply to This | # ]

Off Topic Thread
Authored by: ukjaybrat on Tuesday, April 02 2013 @ 12:36 PM EDT
On topic posts will not be tolerated !!! ;)

---
IANAL

[ Reply to This | # ]

Don't read too much into the word "Final".
Authored by: Anonymous on Tuesday, April 02 2013 @ 12:53 PM EDT
1) The action can be appealed.
2) The finality might be premature.
3) The claims can be amended and a Request for Continued Examination can be
filed.
4) The applicant can submit persuasive arguments pointing out errors in the
final rejections.
5) A continuation with different claims can be filed.

Its best to look at the substance of the rejections before declaring a
"final rejection" huge.

I haven't done a study, but I think I'd bet that a large fraction of issued
patents have a "final rejection" in their file history.

[ Reply to This | # ]

Apple's '381 Patent Rejected by USPTO in Final Office Action: Impact on Apple v. Samsung Damages Huge ~pj
Authored by: tyche on Tuesday, April 02 2013 @ 12:53 PM EDT
What are the chances of Samsung recouping some of the costs of the trial - legal
fees and court costs at least - if Apple finally loses on the whole thing?

Craig
Tyche

---
"The Truth shall Make Ye Fret"
"TRUTH", Terry Pratchett

[ Reply to This | # ]

Apple's '381 Patent Rejected by USPTO in Final Office Action: Impact on Apple v. Samsung Damages Huge ~pj
Authored by: macliam on Tuesday, April 02 2013 @ 01:03 PM EDT

The Lira patent used as prior art to invalidate Apple's bounce-back patent is a European patent, available from Espacenet here.

The page is headed:

Original document: WO03081458 (A1) ― 2003-10-02

Espacenet appears to be part of the website of the European Patent Office (EPO).

[ Reply to This | # ]

There is not such recent final Office Action in PAIR under the patent number
Authored by: Anonymous on Tuesday, April 02 2013 @ 01:07 PM EDT
Does anyone have the serial number assigned to the re-exam?

[ Reply to This | # ]

Inaccurate Title: Apple's '381 Patent Rejected by USPTO in Final Office Action:
Authored by: Anonymous on Tuesday, April 02 2013 @ 02:06 PM EDT
Claims 14, 17 and 18 were found patentable and/or confirmed. Therefore, the
Patent was not "rejected". At a minimum it was allowed in part and
rejected in part.

In any event, prosecution is not over. The applicant gets to ebut the examiners
reasoning in a response or amendment after final.

[ Reply to This | # ]

Claims 17 & 18 stand?
Authored by: Anonymous on Tuesday, April 02 2013 @ 03:26 PM EDT
How can Claims 17 and 18 still stand? According to Rejection D, they should
have been invalidated, as falling in the range of claims 15 - 20.

[ Reply to This | # ]

Invalidating claim 1
Authored by: macliam on Tuesday, April 02 2013 @ 05:01 PM EDT

I hope you will excuse me for pointing this out. The patent may well be “stupid”. But, it took a lot of effort on the part of the examiner, and on the part of those who submitted the Lira reference to invalidate these claims! And then the examiner had to sustain the rejection against vociferous objections from Apple. Credit needs to be given where credit is due. Claim 1 of the Apple reads as follows:

1. A computer-implemented method, comprising:

at a device with a touch screen display:

displaying a first portion of an electronic document;

detecting a movement of an object on or near the touch screen display;

in response to detecting the movement, translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion;

in response to an edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display:

displaying an area beyond the edge of the document, and

displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion; and

in response to detecting that the object is no longer on or near the touch screen display, translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion.

The patent used to invalidate this claim, the Lira patent, concerned a totally different method for displaying a web page, making it easier to view on a PDA (portable digital assistant) or cellphone, involving completely re-formatting the content newspaper-style into three columns when the finger, mouse, stylus was not in use, and displaying content from a particular column. On the other hand, when scrolling around, the columns would break up to allow navigation, then snap into place once scrolling has finished. The behaviour of this method of displaying the web page on the PDA or cellphone probably bears only a passing resemblance to the bounce-back feature on Apple's devices. Nevertheless the examiner had to prove that every single word and phrase of the claim reproduced above read on some behaviour of the web-page viewer existing only on paper in Lira's patent (or in some European repository), and that each and every requirement of the claim corresponded exactly to some behaviour of Lira's web page viewer as one scrolled around the HTML document. In particular the examiner had to argue that the columns produced under formatting could be treated as separate documents in their own right.

The “geeks” at Groklaw might say that the patent was ‘stupid’, but one would have to be a experienced expert at patent prosecution or patent examination to give a reasoned judgement as to whether or not the patent claim would prove to be invalid over Lira.

[ Reply to This | # ]

So will Tim Cook apologize to Samsung now?
Authored by: Gringo_ on Tuesday, April 02 2013 @ 06:27 PM EDT
..for the accusations of copying this
patent and all the pain and expense
Samsung suffered because of Apple's
false accusations?

[ Reply to This | # ]

Software Patents aren't the Problem, Patents are the Problem
Authored by: Anonymous on Tuesday, April 02 2013 @ 11:51 PM EDT

Software patents are the real problem, and Samsung's tale of woe dealing with this one, now finally overturned regarding this patent's claim 19, is just one small corner of this sad and toxic upside-down and anti-competitive patent game.

The same issues that led to this patent being issued have led to patents on:

1) Human Genes
2) Existing Seeds
3) Reactionless Spaceship Drives
4) Hyperspace Radios
5) Nitrogen Dioxide Generators

And a wide variety of other things. Oh, software is one area that is impacted, but it is hardly the only one, nor is it necessarily the worst damaged.

It is however more noticeable to the average Groklaw user.

Wayne
http://madhatter.ca

[ Reply to This | # ]

Once again, will the real invention step forward?
Authored by: Ian Al on Wednesday, April 03 2013 @ 04:34 AM EDT
Another patent containing 20 or more inventions (including the mobile phone), any of which can be independently infringed.

§112 (emboldened by me):
(a) In General.— The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
So, the law says that there is only one invention and that the invention must be distinctly pointed out by the necessary number of claims.

Infringing on one claim is not enough to infringe on the single invention, distinctly pointed out.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | # ]

Apple's Claim 19 of '381 Patent Rejected by USPTO in Final Office Action: Impact on Apple v. Samsung Damages Can Be Huge ~pj
Authored by: macliam on Wednesday, April 03 2013 @ 07:59 AM EDT

We have at issue here a single patent claim, namely claim 19 of . We also have a prior art patent application by Lira. The question that was before the court in Apple v. Samsung is whether this specific prior art reference invalidates that patent claim.

First there is the question under section 101. And whether some prior art reference teaches bounce-back as a concept in itself is of little relevance in determining whether claim 19 of the '381 patent reads on the prior art.

Looking at claim 19, the alleged prior art, must be a device with a touch screen display, one or more processors, memory and one or more programs. Thus, for example, if your prior art does not have a touch screen, but is a more traditional desktop with a mouse, then it cannot be prior art invalidating the patent under section 102. (If the alleged prior art teaches all other claim limitations, but has a mouse rather than a touch screen, you might have a case for “obviousness” under section 103. However, as pointed out by the PTO examiner, the Lira specification explicitly mentions the possibility of a device with a touch screen.) But, in questions of whether alleged prior art invalidates the patent, it simply does not matter whether the prior art teaches “bounce-back as a concept”. Because neither the courts nor the PTO assess patent claims for validity on that basis. That is not to say that, in an ideal world, courts and patent offices wouldn't or shouldn't consider such things. But, in considering the outcome of ongoing litigation, what matter is not how patent law should operate, but how the law is currently applied on the basis of the statute and a mass of current case law that determine, in very specific detail, how courts should deal with pleadings of patent infringement.

What matters, for invalidation, is not whether the prior art teaches the concept of bounce back, but whether it explicitly teaches all the specifics of the patent claim.

These include in particular the following:

instructions for displaying an area beyond an edge of the electronic document and displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion, in response to the edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display;

For the Lira reference to teach the above, there has to exist an area beyond the edge of the electronic document.

Have you seen how the examiner shows that the Lira reference teaches this? The Lira reference teaches taking an HTML page such as the old AOL portal, and breaking it up into two or more columns, like a newspaper page. In the diagrams, the page content is typically represented in three columns. Let us therefore suppose that there are three columns on the reformatted webpage. Now the PTO examiner (and apparently Judge Koh, independently) adopted a claim construct that allowed each of the three columns of the webpage to be considered as a document in its own right. Therefore, if you are taking the center column as a document in its own right, then everything in the right-hand column lies in the area beyond the edge of the electronic document. But that is not all, because the examiner has to explain exactly why the third portion is smaller than the first portion which he duly does.

The examiner has to defend his construction of the term electronic document so as to apply the term electric document to just the central column of an HTML page against a vigorous response from Apple. This he does in section II.A of the Final Rejection, from page 35 onwards.

The PTO examiner has also to demonstrate in detail the following claim limitation:

instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in response to detecting that the object is no longer on or near the touch screen display.

The PTO examiner explains in detail how the Lira reference teaches all these steps and claim limitations, in couple of paragraphs of the Final Rejection, on pages 9 and 10.

Obviously there are Groklaw members who believe that, for prior art to invalidate a bounce-back patent, it is suffience that the prior art document explain the concept of bounce-back. And that, if the subject-matter of the patent can be implemented in 15 minutes or so, then the subject matter is “obvious” and that patent is invalid under the law as currently applied. But if anyone can countenance, for a second or so, that the requirements of patent law are not necessarily what their gut-instinct suggests they are, then maybe such people can ask themselves, why is the PTO examiner going through all the above rigmarole, when all it takes to invalidate a patent is to show that, once the invention has been made, a programmer can implement the invention in 15 minutes or so? Also ask why is there no discussion of coding details, or assessment of whether the invention is easy or difficult to implement? Because maybe if people were to ask themselves such questions, it might occur to them that maybe there is more going on here than meets the eye.

___

The meaning of “statutory obviousness” under section 102 is a big story in its own right. The meaning of “obviousness” in patent law is determined by the wording of Section 102 of Title 35 of the USC, and by decades of case law that includes, in particular, the Supreme Court cases of Graham v. John Deere and KSR v. Teleflex. An invention is not “obvious” because a programmer can implement it in 15 minutes or so. Would that it were! (The patent law associations drafted the statute.)

Standard disclaimer: IANAL.

___

One of the co-editors of Groklaw may be an authority on patent law. But he makes postings very rarely indeed these days! It would clearly benefit Groklaw if it carried more postings written by lawyers with real understanding of the law as applied, which explain how the peripheral claiming system works, what the requirements are to demonstrate that alleged prior art invalidates a patent claim, or that a device or method infringes a patent claim. Because what seems of come over loud and clear is that people here know what terms like infringement and prior art mean as the law is currently applied today in the courts and at the PTO. And any suggestion that the law may be more complicated and subtle, and things are not as simple as they might appear, seems to be met with a torrent of abuse and disdainful comment that seems to suggest that all those involved in Groklaw have a detailed understanding of all the subtleties and nuances of Patent Law and regard any suggestion that there is anything in the cases being followed, and the cases collected, that might suggest that the law in its application is more complex than one might at first think is to insult the collective intelligence of Groklaw. And I suggest, with respect, that this is a pity. Because if there were rational discussion as to how the the current law is applied in determining questions of prior art, infringement, and statutory obviousness under section 102 (and in particular how to combine prior art references to establish “obviousness”, then members of Groklaw would understand better what to look for an assessing potential prior art and assessing whether it could be used, by itself, or in common with other prior art references in order to invalidate patents. Therefore I believe that rational discussion of the current law would be useful on Groklaw. But there appears to be an intention that no such discussion should take place, and that the editorial direction of Groklaw perhaps inadvertently fosters an inadequate and arguably misleading understanding of what current patent law requires, based on people's gut instinct of what the law ought to be, rather than on what the law actually is, as currently applied by the courts and the PTO. And, regretfully, perpetuating misconceptions on how the law is applied might not fully serve the interests of the community who read Groklaw on a regular basis.

[ Reply to This | # ]

Apple's Claim 19 of '381 Patent Rejected by USPTO in Final Office Action: Impact on Apple v. Samsung Damages Can Be Huge ~pj
Authored by: Anonymous on Wednesday, April 03 2013 @ 08:59 AM EDT
My issue with patterns like this, is there is no novelty!
The concept of alerting the user that they are about to
scroll beyond the screen is nothing new it's been around on
Pc's for years - making this happen on a devise with a touch
screen in many cases would only require the code to be
recompiled, if the application listened for standard X
events.

It's just plain irrational that you can write S/W that works
on a PC under Linux with a standard screen and mouse and
then not be able to cross-compile and run the same programme
on a smart phone or tablet because of pattern like this.

[ Reply to This | # ]

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