

USPTO invalidates Apple's "rubber-banding" patent asserted against Samsung - srathi
http://appleinsider.com/articles/12/10/23/uspto-invalidates-apples-rubber-banding-patent-asserted-against-samsung
Rejoice!
======
dctoedt
Some procedural observations:

1\. The rejection was signed by a primary examiner (i.e., someone who has been
at the USPTO for awhile and not a rookie) and was approved by a supervisory
primary examiner who oversees reexamination proceedings.

2\. The rejection is not final (see the unchecked box b near the top of the
first page), therefore Apple can and will try to get the examiner to withdraw
the rejection.

3\. The rejection states that the _next_ "Office action" is expected to be
final. I would guess that unless Apple can make a compelling case for
patentability OR amend claim 19 --- the only claim at issue in the _Apple v.
Samsung_ lawsuit --- to get around the prior-art rejection, the rejection of
claim 19 will be made final.

4\. If the examiner does make the rejection of claim 19 final, Apple can
appeal to a three-person board of senior USPTO officials, nearly all of whom
will be long-time patent examiners. If the board affirms the rejection, Apple
can appeal to the courts.

5\. On the merits, it's helpful to think of claim 19 as an infringement
checklist: For that claim to be infringed, _every element_ recited in _that_
claim must be present in the accused product or process [1].

(Infringement analysis treats each patent claim as a multi-part AND statement
[2]; the statement must return TRUE for infringement to exist.)

6\. Claim 19 was rejected as being "anticipated." This means that in the
examiner's view, every single element of claim 19 can be found in a single
prior-art reference --- in this case a patent publication by Lira, and,
separately, a patent issued to Ording --- and therefore the claim is
unpatentable under 35 USC 102 [3].

(If claim 19 is thought of as an AND statement, then in the examiner's view,
the AND statement returns TRUE when applied to the Lira reference, and also
when applied to the Ording patent [4], and therefore claim 19 is
unpatentable.)

7\. Perhaps importantly, the examiner's rejections over Lira and Ording were
made under subsection (b) of 35 USC 102; that is, the "effective dates" of
these two prior-art references were more than one year before the effective
filing date of the Apple patent in question. This means that Apple won't be
able to try to "swear behind" the references, that is, prove that its
invention was invented before the effective dates of the Lira and Ording
references [5].

NOTES:

[1] Infringement of a claim can exist even if one or more claim elements are
not literally present, as long as the accused product or process has a
substantial equivalent of the missing element(s). Note: The doctrine of
equivalents is tricky to assert, to prove, and to defend against. See
generally <http://en.wikipedia.org/wiki/Doctrine_of_equivalents>.

[2] See generally [http://www.oncontracts.com/how-patent-claims-work-a-
variety-...](http://www.oncontracts.com/how-patent-claims-work-a-variety-of-
different-and-statements-all-ord-together/)

[3] <http://www.law.cornell.edu/uscode/text/35/102>.

[4] See generally [http://www.oncontracts.com/patent-validity-the-claims-and-
st...](http://www.oncontracts.com/patent-validity-the-claims-and-statements-
cannot-return-true-when-applied-to-prior-art/)

[5] See <http://www.uspto.gov/web/offices/pac/mpep/s715.html> \--- scroll down
to part II.A.

~~~
sigzero
So can Apple now sue the USPTO because they successfully defended it in court
costing millions of dollars and now a YEAR later the USPTO invalidates it? I
hope so.

~~~
getsaf
If they can (and do) I fear that this will discourage the USPTO from
invalidating any other patent review cases for fear of being sued out the
yang.

If there is a plus side, this _may_ affect the passability of future patent
requests but I figure this will be less likely to occur and more likely that
the USPTO will simply stop invalidating patent review cases. For the good of
the country (world) I hope I'm wrong.

------
fpgeek
This just helps illustrate the absurdity of the US patent system. Samsung and
Apple have already been at this for over a year and a half (longer if you
count their pre-lawsuit discussions).

Now, after we've been through lawsuit filings, discovery, back-and-forth over
injunctions and a trial and gotten a verdict... The patent office turns around
and says: "On second thought, we shouldn't have issued that patent in the
first place.", which itself will be reexamined and appealed and ... adding
onto the existing pile of appeals.

I happen to think that the patent office's invalidation is correct, but even
if you don't... this is no way to run a railroad. Successful reexaminations
should be a rare, exceptional case in a properly functioning patent system.
Instead, we have case after case turning on them (Oracle v Google, the Lodys
reexamination requests, ...).

Here's a radical idea: Maybe the patent office should work harder to not grant
patents it is likely to invalidate later.

~~~
beedogs
> The USPTO does not receive any funding from general taxation sources.
> Rather, the agency is fully funded by the fees paid by patent applicants and
> patent owners.

This is probably a big part of why the USPTO sucks. If they had the resources
to hire dozens and dozens of industry experts, and pay them aggressively
competitive wages, they could probably fix most of the problems most of us
have with the system as a whole.

~~~
dodo53
This is why I like the idea (from someone around here I think) that patent
owners should state a value of the patent when filing, and fees should be a
percent of that value. Then value of patent limits maximum damage for
infringement. So the amount of damages that can be sued for depends on the
amount of funded attention at USPTO on checking the patent is valid (and
patent owners could have the option of increasing stated value later, in which
case extra fees would be used to revalidate patent). But I guess the whole
culture that the number of patents = amount of innovation in economy = success
of USPTO would have to be battled.

~~~
jonknee
That also completely screws the little guy, which is one of the big reasons
the USPTO is said to exist.

~~~
TimGebhardt
I would also love to have 1 sq mile of land in downtown Manhattan on which to
develop a high-rise.

But I'm just a little guy. The darn property tax system is set out to screw
me.

This is really the whole reason that corporations were invented: so that
people could pool their resources together to achieve things that a single
person could not achieve. In fact, they used to just be temporary and when the
original stated project on the charter was complete then the corporation
disbanded.

If a little guy company wants to own a patent under this scheme either a) they
have to file the patent with a lower value so they can make the annual
"property tax" but that may cap their wins in the future if it's infringed on.
or b) get funding from investors to make the property tax payments. Or c) sell
or license the patent to a larger entity that could benefit from it. In the
case of (c) if it's truly as valuable as they say it is to the patent office
then they should be able to find a suitable buyer.

Flat capped taxes on things produce market inefficiencies such as you see in
the domain name arena: It costs very little to hold onto things that might be
valuable one day. If instead there was a sliding scale to renew a domain based
on it's value then you wouldn't really see domain squatters. They'd be forced
to sell their domains to someone that could make more productive use out of
the resource. Same with land and property taxes. And maybe the same for
patents? I kind of like this idea.

~~~
TimGebhardt
@andrewcooke: There is an analogous situation to property taxes though --
Rezoning a property. If you can acquire land zoned for something cheaper like
residential or agriculture and get the city to re-zone it to commercial it's
almost always worth a lot more. Overnight the property is worth a lot more and
the property taxes will jump, so you'll either need to get the money to
develop it yourself or sell it off to a developer who can do so.

And as far as the cost of entry, there are countless fields where patents
could only conceivably be filed by someone with a lot of capital: auto,
aerospace, medical, pharma, etc. There are certainly lone inventors working in
these spaces trying to file patents but it's unlikely they're working on stuff
where you need access to enormous wind tunnels or a medical testing
population.

EDIT TO ADD: And aren't we as software developers going on and on about how
software patents are worth anything? The cost of entry isn't very high at all
and therefore they'd be worthless. Patents were supposed to protect the little
guy from losing his large up-front research and development costs to the big
established guys.

~~~
randomdata
_Patents were supposed to protect the little guy from losing his large up-
front research and development costs to the big established guys._

I always understood the purpose of patents was to provide incentive to bring
trade secrets out into the documented open for the long-term benefit of
society by having a great body of knowledge that anyone can use. So
understanding of great inventions didn't disappear with the inventor. A short-
term exclusivity on using the technology was the way to provide renumeration
for being willing to share your discoveries with the public.

Rubber band scrolling is a cute, even useful, discovery, but it seems like it
could be duplicated by just about anyone without any knowledge of what would
otherwise be trade secrets. Is that worth documenting for future generations
in this way given the high social costs of taking such documentation?

~~~
TimGebhardt
Hmm, my comments don't really reflect this, but I agree with you. I think the
end result of a system like this would be that software patents would be next-
to-nothing worthless and people just wouldn't bother, except perhaps in the
cases of truly innovative works of software (I can't even think of any worth
patenting right now...).

Would Apple really file their rubber-band scrolling patent at a value of
$1bil, then pay some multiple of that per year when it's so easily avoided by
their competitors? Probably not.

And if they do then more power to them. But it would put an upper bound of the
amount of silly patents that a single large company could file and maintain
(think IBM, MSFT, Apple, etc). Right now it costs a company hardly nothing to
file all these and maintain them but they have a huge potential upside if your
competitor steps on that patent landmine.

------
tveita
The rubber-band patent was also the patent asserted to make Motorola Mobility
recall their phones in Germany. I don't know how these things work, is the
patent invalid in Europe now, or must it be investigated separately? Either
way I'm guessing this will help their appeal.

[http://www.guardian.co.uk/technology/2012/sep/14/motorola-
mo...](http://www.guardian.co.uk/technology/2012/sep/14/motorola-mobility-
recall-android-tablets-smartphones)

~~~
jeremyjh
Makes no difference in the EU.

------
saurik
So, one of the patents that was claimed to invalidate this patent is another
patent from Apple; does that patent not have any of the same ramifications? (I
guess the key claim was #19, and that was also invalidated by the other prior
patent?)

> ...U.S. Patent No. 7,786,975 on a "continuous scrolling list with
> acceleration," with named inventors Bas Ording, Scott Forstall, Greg
> Christie, Stephen O. Lemay and Imran Chaudhri.

Assignee: Apple Inc. (Cupertino, CA) Filed: December 23, 2005

~~~
makomk
Why should the courts let them have another bite at the apple, though? Apple
ought to have known that one of their patents was likely to invalidate the one
they'd sued over because they wrote and filed both of them. In fact, in a
sensible world the courts ought to take a closer look at why they were trying
to patent something for which they themselves had prior art.

------
neya
This is seriously good news for everyone. What this means to me as a start-up
guy is that I can tomorrow start a phone company based on an Open Source OS
like Android and still not worry about getting sued for trivial BS patents
like these. I hope more of such patents are invalidated.

~~~
DigitalJack
The patent is still being "prosecuted" by the USPTO. The actions aren't final
on this patent yet.

~~~
neya
Thanks, the title is kind of misleading then.

------
SethMurphy
What if when prior art was found for a patent, the real inventor got the
patent, free, starting from the date of the invention, not the filing. This
would both reward and protect the innovator and punish the copy cat.

NOTE: Let us assume a patent is not obvious and too general, which many seem
to be.

------
JimmaDaRustla
Today was a good day.

------
xntrk
It seems like maybe they should have looked at this before when the issued the
patent, or maybe just maybe before they Apple Vs. Samsung lawsuit about this
patent….

------
sigzero
"tentatively"

That doesn't sound like a sure thing to me.

~~~
josteink
Indeed. And until it gets overturned completely, you'll still need a team of
lawyers ten times the size of your engineering department before you are
allowed to innovate.

At least if you operate within US borders. Guess how sexy that is looking
these days?

(1 billion dollar sexy, if anyone was wondering)

------
thomaslutz
They should invalidate all patents which are "obvious", let everybody move on
to making great products and not waste all those resources in the courtrooms.

------
brianchu
The original blog post that broke the story is here:
[http://www.fosspatents.com/2012/10/patent-office-
tentatively...](http://www.fosspatents.com/2012/10/patent-office-tentatively-
invalidates.html)

------
chucknelson
I should have been a lawyer.

------
Shooti
Good news for Android scrolling if this sticks. This is probably whats keeping
Google from implementing the "glass tilt" effect from the stock 4.0/4.1 home
screen system wide.

~~~
cremnob
Or they could just do their own thing.

~~~
felipeko
I'd argue that Apple is the one needing to do its own thing now. Their patent
is being invalidated, that means that what they though it was original is not.

~~~
dangrossman
The prior art is also an Apple patent. The judge found that there was no
"inventive step" between the prior patent and the new one. That doesn't mean
Apple didn't "do its own thing", just that its incremental improvement was not
worthy of a new patent.

~~~
felipeko
Oh yes, i read that now. I (kinda) apologize to the parent post.

------
xntrk
It seems like maybe they should have looked at this before when the issued the
patent, or maybe just maybe before the Apple Vs. Samsung lawsuit about this
patent….

------
ankitaggarwal
Sad. This is not a generic patent. It only seemed obvious now. Its not
something that will stop innovation (as people scream about). A scrollbar
implemented without rubber-band effect will do just fine. And why was this
never implemented before anyways.

There is all this hype that "Apple is Bad because they sued Samsung". But
considering everything, they had no other choice legally. They had to make a
case on some grounds, and these 5-6 patents were the only patents they can sue
on. What would've you done to protect ideas you spent years refining?

~~~
ircmaxell
> But considering everything, they had no other choice legally.

Patents are not Trademarks. Patents are valid and legal even if you don't
enforce them (where trademarks become invalid if you don't enforce them).

So no, they did have a choice. In fact, they had 3:

1\. They could have not gotten the patent at all. This could open them up to
legal liability if someone else got it and sued them.

2\. They could have kept it for defensive purposes only. Using it if they were
sued for patent abuse (and to prevent others from suing on this idea).

3\. They could use it offensively.

They chose #3. So yes, they did have a choice.

Additionally, I love your choice of words for the final sentence:

> What would've you done to protect ideas you spent years refining?

I think it hits the key point. They didn't invent the vast majority of what
they are suing over. They just refined it. They didn't invent multi-touch,
they just polished it. Now, whether that polish is worth a patent is one
thing, but the concept is not.

And that's the absurdity of it all. This is not about protecting invention.
This is not about protecting innovation. It's about protecting market
position.

And if there's a clearer abuse of the patent system than this, I'd love to see
it...

~~~
ankitaggarwal
Thanks for clearing things up. What I am trying to say is, they had no other
choice to send the message across that stop ripping off apple products. The
patent they sued samsung over can be considered silly but what choice they
had? I bet if this verdict was not given, next galaxy series would've been
like iPhone 5. It was not about money, it was more about market position
because what samsung was basically doing was placing ripped off versions of
apple products in market. And i don't think this is a generic patent.

and this is what I call abuse of system. Just look at the patents mentioned in
the link. Something that paul or its company was not even remotely associated.
[http://www.engadget.com/2010/08/27/microsoft-co-founder-
paul...](http://www.engadget.com/2010/08/27/microsoft-co-founder-paul-allen-
sues-apple-google-facebook-ao/)

~~~
ircmaxell
> The patent they sued samsung over can be considered silly but what choice
> they had? I bet if this verdict was not given, next galaxy series would've
> been like iPhone 5.

You mean the way that iOS 3, 4, 5 and 6 have stolen things from Android? Hell,
the Book position sync thing that they introduced today copies from Android
(and likely the Kindle).

Stop it with the FUD about this. The two phones are rectangular with rounded
corners. Since when is that protected design? Look at the automobile market.
Models are not distinguished by a generic look and feel, but by very very
specific design details. None of which were copied between the devices.

Show me ONE major Apple feature that wasn't copied from someone else. The
entire product is a culmination of ideas and innovation from others. Multi-
touch? Done before. Large screen? Done. Icons? Done. Multi-Tasking? Don't even
kid yourself. Notifications? Really?

What they did, and where their value is, is not in the concepts or innovation.
It's in the level of polish that they apply. That's their competitive
advantage.

And their legal battles are proof that they cannot compete on any other front
other than polish. And since Android has been making leaps and bounds of
improvements over the years, it's been threatening Apple's competitive
advantage. And that's why Apple is suing.

It's the ultimate instance of the pot calling the kettle black.

~~~
ankitaggarwal
There is no end to this debate. We both can write tons of explaination about
each platform, but it doesn't matter. Both companies are here to make profits
and they resolve their legal disputes like this. There is no other way.

And about this very article, it is just not correct. Invalidating patents take
years. Article like this surface the internet just before any big apple event.

