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USPTO confirms invalidation of Apple ‘rubber banding’ patent

updated 05:22 am EDT, Tue April 2, 2013

Apple faces new set back in patent wars with Samsung

Apple has been dealt a blow by the US Patent Office, which has reaffirmed its preliminary invalidation of Apple's much publicized 'rubber banding' patent ('381), reports FOSS Patents. The latest ruling has been labeled a 'Final Office Action' by the USPTO and was revealed in a court filing by Samsung's lawyers to Judge Lucy Koh, who is presiding over the legal battle between the two companies. Although significant, the latest ruling by the USPTO can still be appealed by Apple and the Cupertino-based company will have two months to make its case.

While the initial ruling invalidated all 20 claims made in patent '381, Apple was successful in having claims 14, 17 and 18 reinstated. The remaining 17 were once again rejected including the key 'over scroll bounce' claim. According to Florian Mueller, the latest ruling won't further influence Judge Koh's position on the damages awarded to Apple that have not previously been vacated. However, it is likely that Samsung will be hoping that the latest ruling may influence how the judge proceeds with the next steps in the ongoing patent war between the two companies.

In December, the USPTO also issued a preliminary invalidation of Apple's patent '915 and all of its 21 associated claims including 'pinch to zoom.' With both patents playing a key role in Apple's massive damages win against Samsung, the stakes are high for both Apple and Samsung in the direction that the USPTO ultimately takes on both patents. The onus is now on Apple to demonstrate the unique nature of the patents that it was previously awarded by the USPTO in the next few months.

Currently, both Apple's and Samsung's legal teams are preparing their legal cases for a retrial of $451 million in damages associated with 14 Samsung devices that a San Jose jury found infringed on Apple's intellectual property. It is likely that the definitive outcome of both patents in question will be determined before the retrial reaches the courts.

by MacNN Staff



  1. pairof9s

    Senior User

    Joined: 01-03-08

    What a crock!

    Award then rescind...what gives?! Plus it takes 7 years?! At this pt, I say join in the chaos that is patents, Apple...start ripping the heck out of Android, WinPhone, Samsung, etc. and by every means possible promote as yours!!

  1. Eldernorm

    Fresh-Faced Recruit

    Joined: 09-26-07

    sadly it does not work that way

    It seems that in America, only patents on really STUPID items get up held. If you come out with a great idea, then its open season on you. But patent air and its need by the body and you will likely win a Patent and the east texas courts will support you.

    Sad for America. Very Sad

  1. Sebastien

    Registered User

    Joined: 04-29-00

    I don't get the patent office

    First they issue the patent, then invalidate it. Can't they do their job right the *first* time? That is what they're being paid for, after all.


    Professional Poster

    Joined: 02-23-00

    The guy at the USPTO stared allowing software patents because more patents means more revenue means bigger fiefdom. Even though every software patent is just a business method and therefore actually not patent-able. But since there's no way to recover any fees if the USPTO makes a "mistake" they have an incentive to allow as many bad patents in as possible.

  1. Charles Martin

    MacNN Editor

    Joined: 08-04-01

    Sebastien: it's worse

    than you think ... first they awarded the patent, then invalidated all of it, and have now restored a portion of it, and this "final" ruling isn't final by a long shot. It will be many years (if Apple chooses to pursue it and I'm sure they will) before we actually have a declaration on the matter -- and in the end it will come from a judge rather than patent specialists who should know their jobs better.

    FWIW my reading of the patent suggests that Apple shouldn't have had claim 19 invalidated; the prior art cited isn't really like Apple's implementation at all. However, regardless of the validation -- a jury found that Samsung copied Apple's implementation, so I see no reason for the judge to change the award based on the claim significantly. The point -- which too many pundits miss -- is that Samsung "slavishly" copied Apple, not that Apple was the first to come up with a general concept.

  1. tibbs76

    Fresh-Faced Recruit

    Joined: 04-04-13

    comment title

    "However, regardless of the validation -- a jury found that Samsung copied Apple's implementation, so I see no reason for the judge to change the award based on the claim significantly. The point -- which too many pundits miss -- is that Samsung "slavishly" copied Apple, not that Apple was the first to come up with a general concept."

    Well people from USPTO are actually experts and people from the jury weren't . I find it funny people were defending USPTO when patents issued by them were used by Apple to sue competitors but now if they dare to invalidate one of Apple's patents all of the sudden they don't matter?

    Also Apple has only 2 options left : appeal with the director of USPTO and take USPTO to court but as far as USPTO assessment of the validity is concerned it is a final decision

    Also Samsung can only "slavishly" copy Apple on valid Apple patents- for anything deemed invalid this statement is utterly irrelevant

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