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Apple Rubber Band Patent Bounced by USPTO

Apple Rubber Band Patent Bounced by USPTO

The decision by the U.S. Patent and Trademark Office to invalidate Apple's patent on rubber banding scrolling behavior will have an impact that takes time to develop. As for the most likely immediate area of impact, its U.S. judgment against Samsung, there could be some reduction in the verdict, said intellectual property analyst Florian Mueller.

By John P. Mello Jr. MacNewsWorld ECT News Network
10/24/12 11:04 AM PT

Apple's patent on rubber banding -- the bounce-back scrolling behavior that played a role in its victory over Samsung in a lawsuit earlier this year -- has been rejected by the U.S. Patent and Trademark Office.

Rubber banding, also known as "scroll bounce," causes the image on a screen to bounce when it reaches its top or side limits.

In the tentative decision announced by the USPTO, 20 claims attributed to the patent by Apple were rejected as being obvious or anticipated in patents filed by others.

It's not unusual for a patent to be rejected after being challenged and reexamined. It can take as long as a year before any final action is taken by the USPTO and in the meanwhile, the decision isn't likely to have much of an impact on Apple.

Samsung declined to comment for this story, but it did file papers late Monday night with federal Judge Lucy Koh, who presided over the patent lawsuit decided earlier this year in Apple's favor, to alert her of the development.

Apple did not respond to our request to comment for this story.

Motivated To Reject Patent

The rejection rate at this stage of a patent reexamination is very high, said intellectual property analyst Florian Mueller. "Now it's going to get really interesting, and it will likely take years before we know whether this patent is valid or not," he told MacNewsWorld.

To have a patent reexamined, a challenger of the intellectual property must show a substantial new question of patentability, explained Michael Lasky, patent attorney with Burr & Forman. "I can tell you it doesn't take very much to meet that standard."

Moreover, the public profile of a case can also influence the patent office's actions. "The patent office is well aware of this lawsuit, and it's very concerned that it not have a patent held invalid by a court at some point, and they didn't catch it first," he told MacNewsWorld. "So the patent examiner is highly motivated to reject this application."

Reject Now, Defend Later

Since it's in the interest of the public and innovation to have patents constructed as narrowly as possible, Lasky noted, the patent office is predisposed to reject a patent that's being re-examined.

"The patent office has interest in forcing an early rejection and then having the patent applicant fight to prove that their position is correct," he said.

"So it doesn't surprise me at all that the patent was rejected on re-examination," he added. "It also doesn't mean very much."

Now that the rubber banding patent has been rejected, Apple will have an opportunity to defend the claims made in it. "The rejection could be potentially troubling for Apple, but it has plenty of time and opportunities to overcome it," David Mixon, a patent attorney with Bradley Arant Boult Cummings, told MacNewsWorld.

Will Judge Be Influenced?

Although Samsung has alerted Judge Kho of the patent office's rejection of Apple's patent, it remains to be seen what she will do with that information.

Before the patent rejection, Samsung asked the judge to vacate the jury verdict in the case it lost to Apple. The USPTO's decision may add fodder to that motion, but it's doubtful it would induce the judge to toss the entire verdict in the case.

"I doubt that she will vacate the entire verdict," Mueller opined, "but adjustments will happen and on balance those adjustments will probably favor Samsung, simply because Apple prevailed at almost all counts on trial, so it stands more to lose at this point."

If the judge places a lot of weight on the USPTO decision, it could affect the damages awarded in the case, he reasoned, since the jury provided only damage figures on a per-product basis -- not on a per-patent basis.

"So if the jury awarded, for example, $10 million on a given product, it's unclear how much of it was based on the rubber-banding patent, and the judge may then see a need for a whole new damages trial," he explained.

Low Impact Decision

Even if the rejection of the rubber-banding patent becomes final, it's unlikely to hurt Apple or benefit Samsung very much.

"This is a patent that Samsung has already worked around," Mueller explained. "An injunction over it wouldn't result in a modification of Samsung's offerings"

However, "if Samsung could at some point safely implement the overscroll bounce effect in its products sold in the U.S., I'm sure Apple would be disappointed that it doesn't own this signature iPhone/iPad feature exclusively."


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