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USPTO: 'Steve Jobs' iPhone patent may be invalid

updated 05:20 pm EST, Fri December 7, 2012

Preliminary ruling first step to possibly invalidate the patent

In a ruling issued Monday and made public today, the United States Patent and Trademark Office (USPTO) has issued a preliminary ruling declaring a key Apple iPhone patent invalid. All 20 claims of US Patent Number 7,479,949, also known as "The Steve Jobs Patent" covering a "touch screen device, method, and graphical user interface for determining commands by applying heuristics" have been rejected.

Apple has used the '949 patent against both Samsung and Motorola. In a case earlier this year, Judge Richard Posner decreed large parts of the patent invalid against Motorola. In 2010, a reexamination request filed with the USPTO was denied on this patent, but another request this year resulted in the re-examination and this initial, non-binding, conclusion of the notice. This declaration has no immediate bearing on current cases, or cases already tried, such as from the Apple versus Samsung patent trial, but may be a big factor in appeals, depending on the expected multi-year length of the USPTO review process.

Patent analyst Florian Mueller notes that "many patent claims that are rejected at this stage do ultimately survive. There are many steps inside the USPTO, followed by a potential appeal to the Federal Circuit (and in a few cases even the Supreme Court). Some people say that first Office actions are partial because they are based only on submissions made by those challenging the patent, and many examiners like to take a tough position early on in order to enable and require the patentee to present the strongest arguments in favor of validity."

He also believes that it is a serious matter for Apple, and the fact that the entirety of the patent has been rejected makes the ruling harder for Apple to defend the patent in front of the USPTO. The current ruling is not binding, and will go through several more reviews before a final judgement is declared, but the new notice may embolden Apple's opponents in various court fights in the meantime.

by MacNN Staff



  1. Bobfozz

    Fresh-Faced Recruit

    Joined: 07-28-08

    Unbelievable... after all this time?
    Samsung will love this, gives them the green light to keep doing what they've always done. Have these people at the USPO ever invented anything themselves? But it's OK for trolls in Texas to have patents on property they "own" but do not use or develop? What the heck is going on?

  1. cfenby

    Fresh-Faced Recruit

    Joined: 11-05-12

    As the US slips into third world status, this shouldn't be all that surprising and will become increasingly commonplace, as it is in Nigeria. It is quite common for judges to be bought in these situations and companies outside the US have developed this as their modus operandi, especially from the specific base which the opponents operate. Otherwise, how would a company which has never had an original or high-quality product be so successful? Clearly, this ruling defies common sense and indicates that the source is not based on objectivity. The anonymous judges are undoubtedly enjoying the benefits of their false ruling and the rewards of their wealthy benefactors.

  1. slapppy

    Fresh-Faced Recruit

    Joined: 03-23-08

    Amazing. More proof that USA is going down the tubes. It's own government can't even protect patents from home grown companies. Stupid!

  1. Charles Martin

    MacNN Editor

    Joined: 08-04-01

    You guys need to read the whole article. This is a PRELIMINARY finding, it's not binding -- and there's a years-long process to go. There's a CHANCE it could be found invalid. Nothing's invalid yet.

  1. Bobfozz

    Fresh-Faced Recruit

    Joined: 07-28-08

    I did read the article. My terrible bemusement is that this would EVEN come up! If it takes years (in some cases) to clarify then no one is safe and thus apparently (due to the lengthy time) the judges were most likely NOT bought. This came through the USPTO didn't it, not judges? Sure it's possible that what Jobs came up with was, in hindsight, not considered innovative at all--but if that is the case, why didn't anyone else think of it until HE DID?

  1. chatman

    Fresh-Faced Recruit

    Joined: 10-28-12

    A patent may be presumed valid, but that doesn't mean that the USPTO doesn't make mistakes when issuing patents. Fortunately, there's a mechanism for correcting that.

    Patents are supposed to be novel at the time they are applied for, and novelty is determined by a single examiner looking at whatever articles and references he/she can find, and any references submitted by the applicant (in this case, Apple). If a patent is later litigated, the companies being sued have the ability and incentive to mine the prior art to find references that neither the hurried examiner, or the self-interested applicant, submitted for review. Sometimes, they can even show that the applicant deliberately withheld references it knew would invalidate the patent, though that didn't happen here.

    If the Court and the USPTO looked at the references and decided that the patent was likely invalid, it seems to me that there was some pretty important prior art that was never seen by the person who examined the patent. Judge Posner is no fool and the USPTO as a whole has pretty strong institutional competence.


    Professional Poster

    Joined: 02-23-00

    Are you kidding? Half of the patents coming out of the USPTO are junk. The concept of novel has become simple a test of the examiners patience. THe problem is the USPTO gets a filing fee and annual fees for every patent. Its in there interest to pass patents not invalidate them. Also when a patent is struck down as invalid later there is no refunds etc back to the company.

  1. jmonty12

    Fresh-Faced Recruit

    Joined: 06-02-03

    Maybe the USPTO should have to pay claims for patents that are later found to be invalid. This is getting ridiculous!

  1. Jon Thompson

    Fresh-Faced Recruit

    Joined: 12-09-12

    Disclaimer 1, my first patent (a software patent) is going through the process now. I've had many people look at my invention, and everyone that I've talked to agrees it is novel.
    Disclaimer 2, I am not an attorney, much less a patent attorney. Please do not convey this as legal advice. I am reporting on my own experiences going through the application process.

    First, the rejection is nothing new. My lawyer indicated that I should expect rejection on the first round through the office, otherwise, my claims weren't large enough to fit within the hole left by other patents. The goal is to get a rejection on the first round, whittle it down, then amend the application.

    Second, my lawyer indicated that he and I have the onus of reporting any and all examples of prior art found, and that it's in my best interest to do so, as carving out around known prior art makes my application stronger, albeit narrower.

  1. blahblahbber


    Joined: 02-01-05

    Like I've said before, crApple will not see $700 USD again.

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