updated 02:09 am EDT, Fri September 27, 2013
Jobs himself showed off technology months ahead of patent application
In a nearly-perfect example of how strange and convoluted patent law can become, an Apple patent on the "bounceback" effect when scrolling -- part of the family of patents known as "rubber-banding" technologies -- has been ruled invalid in Germany because Jobs demonstrated the effect during the iPhone announcement from January 2007, five months before the company applied for the patent. The law in Europe classifies this as "prior art" even though it is from the same company.
Patent laws in the United States say that an inventor has a 12-month "grace period" to file a patent document after coming up with the idea. European law doesn't have this provision, reports AppleInsider, meaning that the video -- presented by counsel for Google in a patent dispute case against Samsung -- is legally considered "a pre-filing disclosure" and thus "prior art" that weighs against Apple's own claims of the validity of the patent. Apple's lawyers were nonetheless able to get the same judge to rule that the technique was novel compared to prior art from other companies, including AOL and Microsoft.
The absurdity of a company undermining its own patent by showing it publicly before filing for a patent has cost Apple some of its ammunition against rivals, at least in Germany. The court invalidated the patent for a "portable electronic device for photo management" (EP2059868) that uses the bounce-back implementation -- rejecting arguments from Apple attorneys that the European patent was "colorably different" from the technology shown on stage.
The ruling is not a total loss for Apple, but a serious setback. Luckily the company also has a German "utility patent" of more limited life that covers the same bounce-back effect. For those patents, there is a grace period of six months -- meaning the Jobs video can't be used to invalidate it. However, utility patents are "second-class" in nature compared to full patents, and also expire after 10 years. The fact that the judge ruled that the AOL and MS prior art didn't invalidate the European bounce-back patent may even work out to Apple's advantage in some scenarios -- for example, restarting a claim against Samsung for infringement, and possibly suing other infringing companies until the utility patent expires in 2017.
The fact that the only German-ruled "valid" prior art nullifying the European patent is a video from the same company that invented and patented the technology is also not likely to hold much sway in non-European courts, and may eventually be overturned in a different EU court if rival companies attempt to challenge Apple's patent. Samsung has asked the German Patent Office to invalidate the patent outright, but the GPO hasn't yet responded. The ruling from the German court was the basis of a stay in the case of Apple's claims of infringement of that particular patent against Samsung and Google's Motorola Mobility.
A YouTube video (seen below) shows Jobs demonstrating the effect as part of the photo-gallery feature of the original iPhone (first seen at about the 33:40 mark). Apple has used this specific bounce-back patent in successful actions against Samsung in the Netherlands, and against Motorola Mobility in Germany, both in 2012. Both companies have attempted other avenues to get the patent invalided -- in effect admitting that they were infringing it -- and the first Samsung ruling was stayed while the nullity hearing took place.
Apple will almost certainly appeal the Bundesgerichtshof (Federal Court) ruling on the photo-gallery patent, reports patent analyst Florian Mueller, but in the meantime may use its partial victory -- the exoneration of the AOL and MS prior art as not invalidating the patent, and the ruling that the photo-gallery patent overall represented a novel invention -- to bolster its current cases against Samsung and Google in European courts for the next few years. If Apple can win on appeal or at least save the bounce-back portion of the photo-gallery patent, it can ask to have the stayed Samsung lawsuit reinstated.