USPTO invalidates Apple's "rubber-banding" patent asserted against Samsung

http://appleinsider.com/articles/12/10/23/uspto-invalidates-apples-rubber-banding-patent-asserted-against-samsung

by srathi • 14 years ago

216 85 14 years ago

Rejoice!

Shooti2• 14 years ago

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• 14 years ago

Or they could just do their own thing.

felipeko2• 14 years ago

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.

Shooti2• 14 years ago

The glass tilt I'm referring to is distinctive from the iOS bounce, yet it seems they're still erring on the side of caution.

MatthewPhillips• 14 years ago

bad for the consumer

esolyt2• 14 years ago

I actually prefer Android's current overscroll effect.

BenoitEssiambre• 14 years ago

Yup. I always found the rubber banding to be kind of an odd way to indicate the end of a scrolling area. The problem is that instead of something indicating unambiguously the end of a view, the movement continues to happen momentarily as if there was more to come and only gradually stops. Users end up not knowing if they botched their finger gesture or if they are actually at a boundary. Even as an experienced user, I sometimes retry pulling a few times to confirm there's nothing more.

emehrkay• 14 years ago

The rubber band effect makes touch scrolling work. The user knows when they've reached the end. And Apple seems to do this thing where you can zoom out and make whatever really small showing you the boundaries that Android doesn't seem to do. Android can definitely benefit from emulating apple in the scrolling/zooming regard.

fpgeek• 14 years ago

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• 14 years ago

> 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.

dodo534• 14 years ago

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.

Symmetry• 14 years ago

Or we could just let them keep all the money they collect in fees, and let them set the fees at a level that would let them afford to do a good job.

eternalban2• 14 years ago

I have suggested this before and will do so again:

Just like ROTC, Department of Education can create an Engineering Corps that allows tech students that receive government loans to pay back their debt in form of service.

001sky• 14 years ago

This is rediculous if true. Clearly, patents are important public policy. They should be funded as such, and if need be, taxes from profits of patent-holding companies should be dedicated to the USPTO. Taxes from fees (1) dont scale; and (2) are orders of magnitude off the economic impact, so any distortion from bad decisions is also.

pi18n2• 14 years ago

I'd love to see some sort of punitive damages if a patent you sued over gets invalidated. At a minimum, Apple should need to compensate a portion of Samsung's legal fees.

chucknelson2• 14 years ago

I don't think that makes sense. It's not Apple's fault that the US patent office granted the patent. Just because they changed their minds doesn't mean Apple is responsible. If anything, the US patent office should compensate both Samsung and Apple for essentially wasted legal fees.

albedoa• 14 years ago

Even if you stand against the current patent system, it's how it works right now, so that suggestion is a little bit of blaming the victim. Apple were told that they have a valid patent by the office which makes those determinations. How are they to blame for accepting grant of the patent?

narcissus• 14 years ago

Unfortunately I just don't see the motivation for them to not issue patents... maybe Samsung should sue them for essentially giving Apple the ammunition to put them through the year or so.

I presume that that's not possible, but still, maybe it would give their collective heads a shake.

RexRollman• 14 years ago

If nothing else, delay all court proceedings until any contested patents have been reviewed.

getsaf2• 14 years ago

"Successful reexaminations should be a rare, exceptional case in a properly functioning patent system."

Unfortunately some 70% of reexaminations are confirmed to have some sort of issues. This is very shaky ground to be used to routinely afford millions/billions in damages and effectively "lock up" ideas that are obvious or unpatentable.

edit: add source http://ptolitigationcenter.com/essentials/common-questions/#...

hristov2• 14 years ago

Perhaps you are right but it is much better to have the reexamination process than not to have it. There were too many computer programming patents too easily granted in the nineties and the 00s. That is a fact it already happened so saying "it would be better if this hadnt happened" is completely pointless now.

It is a good thing that a reexamination process exists to address bad patents when they are the focus of an expensive lawsuit.

chucknelson2• 14 years ago

I should have been a lawyer.

tveita• 14 years ago

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...

jeremyjh• 14 years ago

Makes no difference in the EU.

thomaslutz• 14 years ago

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.

sigzero2• 14 years ago

"tentatively"

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

josteink• 14 years ago

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)

ankitaggarwal5• 14 years ago

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?

johsoe2• 14 years ago

Years refining this overscroll effect?

ankitaggarwal5• 14 years ago

No. But the design of their products. If you followed the trial, they told the entire process on how they reached the final design of iPhone. It took them years to make it perfect. Taking inspiration is different, and we all know what samsung did for staying in market. LEGALLY, apple had no choice but to take these silly looking patent to the courtroom. Now is the time when we will see real innovation.

I don't know why people build so much of hate for big corporates. Samsung is no different. If you see number of patents Samsung holds, you will be stunned. And most of them are something they never even implemented in their software remotely.

SethMurphy2• 14 years ago

The affect is simply mimicking the physical world. Think slot machines and wheel of fortune type games of chance, which have similar user interfaces and exhibit this same behavior.

jivatmanx2• 14 years ago

Bingo. Apple is essentially the world's most successful design company.

Because they've done it electronically, they've unfortunately been granted patents to design principles that are quite ancient. If this is allowed it sets a bad precedent.

ircmaxell3• 14 years ago

> 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...

ankitaggarwal5• 14 years ago

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...

makomk2• 14 years ago

There's actually an option 4: publish the invention but don't patent it, so that you have a strong claim of prior art if someone tries to sue you after patenting it themselves.

JimmaDaRustla• 14 years ago

Today was a good day.

xntrk2• 14 years ago

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….

xntrk2• 14 years ago

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….

saurik• 14 years ago

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

makomk2• 14 years ago

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.

SethMurphy2• 14 years ago

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.

neya2• 14 years ago

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• 14 years ago

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

neya2• 14 years ago

Thanks, the title is kind of misleading then.

dctoedt• 14 years ago

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-...

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

[4] See generally http://www.oncontracts.com/patent-validity-the-claims-and-st...

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

sigzero2• 14 years ago

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.

getsaf2• 14 years ago

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.

hristov2• 14 years ago

No.

Natsu• 14 years ago

I really doubt it.

http://en.wikipedia.org/wiki/Sovereign_immunity

Also, appeals haven't even been heard. This is far from over. Apple hasn't won until appeals are exhausted.

brianchu• 14 years ago

The original blog post that broke the story is here: http://www.fosspatents.com/2012/10/patent-office-tentatively...

USPTO invalidates Apple's "rubber-banding" patent asserted against Samsung

Related Stories