At last Samsung has something to cheer about. USPTO have rejected US Patent No. 7469381 on 15th October, 2012 which was Apple’s rubber band patent. The patent office decision is an initial ruling and it will probably be challenged by Apple.It affects the patent for Apple’s “rubber banding” or “bounce” feature, which makes the digital page bounce when a user pulls a finger from the top of the touch screen to the bottom.

Grounds on which patent was claimed to be invalid

It was rejected on the grounds of not being novel and prior art submitted for these were:

· Lira’s PCT Publication numbered WO 03/081458 on “controlling content display”; published on 2nd October, 2003.

Ording’s U.S. Patent No. 7,786,975 on a “continuous scrolling list with acceleration”; for this inventor are Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay and Imran Chaudhri.

In a non-final Office action the USPTO declared all 20 claims of Apple’s rubber-banding patent invalid.

How did this happen?

An anonymous reexamination request was filed for US Patent ‘381. USPTO reexamined it with the prior art given in the reexamination and gave out a non-final Office action rejecting the claims of the patent. The rejections were given on the basis of prior art given on pages 23-85 of the request.

·         Claims 1-6, 8-12, 16 19 and 20 were rejected on the basis of being anticipated by Lira.

·         Claims 7 and 13-15 were deemed to be obvious over Lira.

·         Claims 1-5, 7-13 and 15-20 were said to be anticipated by Ording

The non-final Office action given by USPTO can be assessed over here.

What happens?

Samsung was fined a huge sum of $1.05 billion based on the 19th claim of this patent. This claim has been deemed invalid so Samsung might be asking Judge Koh to grant overrule-the-jury motion.

Apple’s non-final Office action will undergo a long procedure now. It will be now under a lot of reexaminations and it will take time to get Final Office Action (FOA) and it is not necessary for an FOA to be final because Central Reexamination Division can itself reconsider it but even FOA is final then an appeal can be made in Patent Trial and Appeal Board.

If Apple’s patent is invalidated in European Union too then the decision of injunction that Apple won over Samsung will be lifted. Samsung have opposed grant of patent to Apple in EU.

Also, Apple will be at loss in different cases which were based on this patent, one of them being against HTC.