USPTO Calls Apple's "Rubber Banding" Patent Invalid

The United States Patent and Trademark Office has reportedly declared all twenty claims in Apple's "rubber-banding" patent invalid in a non-final Office action. This patent was one of several used in Apple's California patent infringement lawsuit against Samsung over the summer.

The South Korean company informed Judge Koh about the invalidation in a filing late Monday night.

It's currently unknown as to who requested the re-examination of the patent, and the identity wasn't disclosed when the request was submitted during the spring. Samsung is, naturally, at the top of the suspect list, followed by HTC, which is also under attack by Apple based on the same patent. Google also has an interest given that the lawsuits center around its mobile operating system, Android.

The patent in question, "List scrolling and document translation, scaling, and rotation on a touch-screen display," describes what happens when iOS users reach the end of a scrolling list or pane, among other things. Users see the screen somewhat "bounce" as if its connected to the device with rubber bands.

However, Apple isn't the only device maker to use this animation -- Samsung's TouchWiz interface is just one other that uses it. But Samsung removed the bounce animation anyway, replacing the elasticity with a "blue glow," which flares up when the user reaches the end – similar to what Google did in Android 2.3 "Gingerbread" (though it was more a pumpkin color). But the workaround couldn't be submitted as evidence to the jury due to sanctions for litigation misconduct, thus Samsung was made liable for damages.

As it stands now, the patent in question hasn't been fully deemed as invalid by the USPTO – the new declaration is merely a "first-glance verdict" sparked by the re-examination request.

"Apple's rubber-banding (overscroll-bounce) patent is still going to go through a lengthy process before it may or may not be invalidated," said IP analyst Florian Mueller. "There can be more than one non-final Office action. Even a 'final Office action' is not final at all."

Mueller points out that Apple has many patents in play against Android, and it doesn't matter if one or several patents are rendered invalid – the company just needs enough to ensure product differentiation. However, this particular patent is a signature element of iOS, and Apple is expected to appeal against the USPTO decision at all costs.

Meanwhile, as Mueller stated, the patent itself will go through a lengthy process to determine if its truly invalid or not.

"It can be reconsidered by the Central Reexamination Division itself, and the last decision by that division can be appealed to the Board of Patent Appeals and Interferences (BPAI), which is like an USPTO-internal appeals court," he said. "Remands by the BPAI to the Central Reexamination Division cause further delay."

Once the USPTO is done with it, the decision can be appealed to the United States Court of Appeals for the Federal Circuit. What's more, a Federal Circuit decision can be appealed to the Supreme Court which really doesn't deal will many patent validity cases.

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