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US patent office prepares to kill off Apple's bounce-back patent

'Tentatively' declared invalid

The US Patent Office (USPTO) appears to have provisionally invalidated one of the major patents that Apple was using against Samsung... And it's possible that large parts of the case will go “kablooie” as a result.

Given that it's not Friday afternoon yet, everyone will remember that the Cupertinians were most insistent that the “bounce back scrolling” thing was a terribly important innovation which Samsung had heinously and horribly copied. It seemed to have further held that this led to some part of Sammy's success and that Apple was therefore due the output of a small nation or two in damages.

However, as Florian Mueller has uncovered that's not quite the way the land lies now.

The United States Patent and Trademark Office has good news for Samsung, and Samsung has already shared it with Judge Koh in a late-night filing. In a "non-final" Office action the USPTO has declared all 20 claims of Apple's rubber-banding patent (US Patent No, 7,469,381 invalid, including claim 19, which Apple successfully asserted against Samsung in the summer trial in California. In fact, claim 19 is one of several claims to be deemed invalid for two reasons, either one of which would be sufficient on its own.

Meuller has posted up the full judgment here.

Many here will know patent law better than I do, but for those whom I can inform: a patent should only be awarded for something that is both new and inventive. The flip side of this is that something that has already been done, or something that is obvious, cannot be patented. As an example, wheels have been around for a long time, so I cannot gain a patent on a wheel. There is, as the saying goes, “prior art”. Similarly, if there are red and green and purple wheels out there, I cannot then claim a patent on a vermilion wheel. If we've already wheels of different colours, then having one of another colour is obvious.

The problem with the system as it stands is that the examination of this new and inventive stuff is often not actually done by the patent examiners. Some countries are worse than others but much of the testing of the claims as to whether something is patentable just aren't done before the patent is granted. The system instead rather relies upon people complaining later: pointing to some prior art or the obviousness of the step.

It's rather swings and roundabouts really: most patents are never used and never referred to again after they've been filed and or granted. So who really cares? Anyone who does really care can bring these things up when they do indeed care.

On the other hand, in a fast-moving industry, having a patent – even if it can and will be fought – is enough. For example, if we're in the middle of establishing an entirely new technological niche – as we arguably are with the move from featurephones to smartphones.

The fight here isn't about who sells the current generation of hardware. It's about who hooks the punter into one or other of the ecosystems. Being on Android now and buying Android apps and using Android is going to influence (not determine, but it's certainly going to influence) which OS you buy on your phone in 2020, 2025. That's the prize up for grabs. We are, if you like, around where we were with MSDOS and CP/ M, or Windows 1.0 and the Mac.

When the assumption in the system is that Apple does indeed have a valid patent on this screen bounce stuff, then it seems entirely reasonable that there should be bans on Samsung kit containing the tech. However, if the general contention (until the various fights through the higher courts) is that Apple does not have a valid patent then such bans reasonably shouldn't be imposed. For the ban is the real advantage and it does seem reasonable enough that one should only be imposed on the assumption that there is a valid patent underlying it.

It's worth noting that something patentable must be both new and inventive. Fail to have an idea that is either one or the other and there is no patent: there's no halfway house of new but obvious, nor inventive but not new. And Apple, at least at present, seems to be missing both.

Sadly, the court didn't go quite as far as one observer, who insists that the bounce-back is an inherent part of the design of Pong. It would be amusing if it really did, for Jobs and Wozniak first worked together on an adaptation of Pong for Atari, didn't they? ®

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