Original URL: http://www.theregister.co.uk/2013/04/03/apple_bounce_back_patent_rejected/

Major blow for Apple: 'Bounce back' patent bounced back by USPTO

Finality isn't final, art wasn't prior, wails Apple

By Brid-Aine Parnell

Posted in Law, 3rd April 2013 13:27 GMT

The infamous "bounce-back" Apple patent has been mostly rejected by the US Patent Office, a decision that will have a major impact on the fruity firm's legal battles with Samsung.

Sammy was quick to point out the ruling on the patent to the court, as the jury in the recent billion-dollar Californian case ruled that 21 accused products infringed claim 19 of the patent and awarded massive damages against Samsung based on those infringements.

Some of those damage awards have already been vacated for a new trial, but not all of them have been taken off Sammy's total, which currently stands at over $500m.

The USPTO decided that prior art anticipated the bounce-back patent that gets documents or photos to bounce when you try to scroll beyond their end on a touchscreen, hamstringing not just Apple's case against Samsung in the US, but a string of other fruity litigation as well.

Samsung has already had to go to the expense of coming up with a workaround (the blue bar now at the end of its documents and photos in newer models) and it will likely add this to its list of grievances about the whole trial.

The Korean firm has been trying to argue that it was treated unfairly during the trial and, as Groklaw points out, this will give Samsung a strong basis to complain.

Apple has already replied to the court, saying that the USPTO's final decision is not, in fact, final.

"Samsung states that the Office Action 'finally' rejects multiple claims of the ’381 patent, but the suggestion that the reexamination is finished and the USPTO has rendered a dispositive decision is incorrect," the fruity firm said.

"A 'final' office action does not signal the end of reexamination at the USPTO, much less the end of consideration of the patentability of the claims under reexamination. Rather, 'finality' is primarily a procedural construct that limits the right to amend claims and introduce evidence as a matter of right in reexamination."

Apple added that it's entitled to file a response to the rejection and that after that, it has several appeal options. The iDevice-maker said that even if an appeal to the Patent Trial and Appeal Board fails, it could still seek a judicial review in the US Court of Appeals, so it doesn't look like Cupertino will be letting this go any time soon. ®