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USPTO Strikes Blow to Apple's Prized Multitouch Patent

By Rachelle Dragani MacNewsWorld ECT News Network
Dec 10, 2012 2:02 PM PT

The U.S. Patent and Trademark Office has preliminarily invalidated 20 of the claims in the so-called "Steve Jobs" patent, the second such blow dealt to Apple's IP portfolio in recent months.

USPTO Strikes Blow to Apple's Prized Multitouch Patent

The Jobs moniker refers to the Apple founder's listing as the chief inventor. The patent protects the technology used in the touchscreen interface on Apple's iOS devices. The ruling, known as an "office action," was first reported by Florian Mueller of FOSS Patents.

Apple's legal team had been using the patent, which is one of the company's most well-known, to challenge technology used by Motorola Mobility in a case that was tossed out of court in November.

The USPTO issued a preliminary ruling when it rejected the patent claims, meaning the decision is not final.

The incident mirrors one in late October, when the USPTO rejected the company's patent for rubber banding. The patent protected the feature sometimes called "scroll bounce," which causes images to bounce when it hits the screen limits.

Apple's rubber banding patent played a large role in the high-profile battle between Apple and Samsung that ended last summer when Judge Lucy Koh ordered Samsung to pay US$1 billion in damages for violating a handful of Apple patents. Following the USPTO's decision, Samsung alerted Koh of the change.

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

Not Invalid Yet

While the USPTO's ruling might not end well for Apple, the decision is preliminary, and there are still a number of ways it could play out, said Roman Tsibulevskiy, patent attorney at Goldstein Law Offices.

"To state that this patent is invalid is improper. This is an office action," he told MacNewsWorld. "The examiner believes that Apple is claiming too much and must narrow its patent claims, which can complicate future and/or ongoing litigation and/or licensing efforts and allow for circumvention and/or design-arounds."

That's a relatively routine procedure in patent cases, noted Tsibulevskiy, especially when so many different offices and judges have a chance to weigh in on patent validity. According to USPTO proceedings, Apple will have a chance to respond to the ruling, and is likely to do so. Then, even if the company's response wasn't considered adequate, it would have the opportunity to appeal.

"This is very common in patent prosecution -- this is not litigation -- and can be fixed by Apple," he said. "I assume Apple is going to review the office action and respond appropriately."

Ongoing Battle Any Closer to the End?

The opportunity for appeal means it's difficult to predict an ending to the fight or even to know when to expect that conclusion, said John Strand, counsel at Wolf Greenfield. The preliminary ruling shouldn't be viewed as devastating for Apple yet, though, he said, since the patent holder has come out on top in similar battles before.

"Even with initial rejections, many times the patent holder will still ultimately prevail," he told MacNewsWorld. "Historically, even if re-examination is granted, just over 20 percent of the time all of the claims are ultimately confirmed."

It's also unlikely the ruling will have a larger role -- at least for now -- in Apple's global patent battle against Samsung and Android. Although the tech industry seems to be watching for a solid conclusion to many of the cases, the legal wrangling from both sides is only just getting started. Judge Lucy Koh called for an end to the case last week when presiding over the latest installment of Apple and Samsung's ongoing battle. She asked lawyers on both sides "When is this case going to resolve?" and called for "global peace" on the matter.

With more rulings like this one, however, it doesn't seem that an end is in sight, especially not for a company that has a portfolio as deep as Apple's, Strand pointed out.

"At this stage, as both rejections are only preliminary, they really just cast a cloud over the patents," he said. "They are still fully enforceable in the courts and specifically in Apple's litigation against Samsung. Moreover, one has to remember that Apple still has thousands of patents in its arsenal. Even if these two more well-known patents are invalidated, Apple has others it can enforce against its competitors."

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