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A few points to help put this in context:

1. Technically, the USPTO hasn't yet "invalidated" the patent; it issued a first "Office action" in which it stated that all of the patents claims were unpatentable in view of varying combinations of prior-art references.

2. Institutionally the USPTO is very much aware of the significance of reexamination for a patent in litigation.

3. The Office action was signed by a "primary" examiner, i.e., someone who has been around the block a few times. Another primary examiner and a supervisory primary examiner are listed as "conferees." You would be right to read this as a signal that the USPTO takes these matters very seriously; the detailed written analysis (which I haven't studied) seems to bear this out.

4. The primary reference cited is a patent [1] filed in November 2005 whose lead inventor was Danny Hillis --- dare I say, the legendary Danny Hillis [2].

Another main reference is a Japanese patent publication from 2000, referred to as the Nomura reference.

5. In responding to the rejection, Apple can try to establish that their inventors predated Hillis's November 2005 filing date. This is referred to as "swearing behind" the Hillis patent's filing date [3]. But the Apple inventors' filing date is January 2007; swearing behind that far would be a real challenge. (I won't go into the details of the statute and regulation unless people are interested.)

Apple can't swear behind the 2000 Nomura publication because it was published more than one year before Apple's January 2007 filing date --- see 35 USC 102(b).

6. Paragraph 14 on page 34 is pretty typical: It says, in effect, "you'd better take your best shot at contesting this rejection now, Apple, because the next time around it will be a final rejection."

7. If, as seems likely, the USPTO does issue a final rejection, Apple can appeal, first to an administrative appellate body in the USPTO, and if necessary to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit is required by Supreme Court precedent to be fairly deferential to the USPTO's findings in some respects, but it's not entirely clear to me how that would play out here.

[EDITED FOR STYLE]

[1] http://www.google.com/patents/US7724242

[2] http://en.wikipedia.org/wiki/W._Daniel_Hillis

[3] http://en.wikipedia.org/wiki/Swear_back_of_a_reference




It's refreshing (especially to me, as an attorney) to see a correct explanation of the issues and implications as the first ranked comment.


This was a particularly well written summary, with references to the relevant parts of the document. Comments like this are why I (and I suspect many others) skip straight to the comments after a quick skim of the link, and hence it deserves the upvotes it is getting.

That you classify it as 'correct' is icing on the top.


Refreshing and somewhat shocking.


All office actions are signed by a primary examiner or supervisory primary examiner. Junior examiners cannot sign their own office actions.


From what I have read elsewhere the 'first Office action' is based purely on the criticisms of the patent before the patent owner has responded defending and justifying the details and trying to explain why the presented prior art doesn't apply. I understand that it is common for many of the claims to eventually upheld even when the 'first office action' goes against them.

This seems to be one step of a number of the way to invalidation but far from a knock-out blow for the whole patent YET. There is a range of possible outcomes including total invalidation, the patent being upheld and perhaps most likely some claims being invalidated narrowing the scope of the patent and making it easier to work around it.


You're correct that it's not a knock-out blow --- at least not yet.

Apple could try to convince the patent examiner to change his mind; that strikes me as an uphill battle for them, given the extent of the examiner's written analysis. Or Apple could propose amendments to the claim language and try to convince the examiner that the amendments overcame the rejections.

If Apple were to amend some or all of claims that are pending in the Apple v. Samsung lawsuit, that could have a major impact on the outcome of the lawsuit under the doctrine of "intervening rights"; for example, any portion of the damage award attributable to the amended claim(s) might go away [4].

[4] http://www.guttagiplaw.com/publications/patents/INTERVENING_... (especially page 6)




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