Apple's Pinch-to-Zoom Patent Tentatively Ruled Invalid

Apple & The USPTOApple's so-called pinch-to-zoom patent has been tentatively ruled invalid by the U.S. Patent & Trademark Office (USPTO). In a first Office action, the USPTO rejected all 21 claims of Apple patent 7,844,915 ('915), one of the key patents the company successfully used in a trial earlier this year against Samsung.

First Office actions are a preliminary stage of challenging a patent, and they don't affect the enforceability of a patent. They are typically based entirely on a challenger's arguments before the patent holder has had a chance to defend the patent, and as such often result in invalidity rulings.

The Wall Street Journal reported the ruling in far more definitive language, but the reality is that the patent is under threat at this point, rather than being actually and finally invalid [Update: The Journal updated its story with information about the preliminary nature of the ruling after our story was published. - Editor]. It's still a serious issue for Apple, however, which has called the patent its most valuable patent, as noted by FOSS Patents.

In particular, claim number 8 is under challenge on two fronts, as the USPTO ruling agreed with the challenger (anonymous, but most likely ultimately tied to Samsung) that an earlier patent serves as prior art, while a combination of two other technologies makes claim 8 obvious.

Claim 8 is the most pertinent of Apple's claims in the near-term, as it served as the centerpiece of Apple's infringement suit against Samsung. In order for Apple to retain its patent, it would have to overcome both of these arguments. According to FOSS Patent's Florian Mueller, that will be a stiff hurdle for Apple.

"Even if it successfully countered the anticipation theory," he wrote, "[Apple] would then also have to establish non-obviousness over the prior art reference previously deemed to have anticipated the '915 patent."

Apple was recently denied an injunction against Samsung devices that a jury found infringed on patent '915 and two other patents. Samsung filed documents with the court on Wednesday arguing that this first Office action means that the company is entitled to a new trial.

On December 10th, the USPTO issued another first Office action on the so-called "Steve Jobs Patent," another one of the three patents Samsung was found to have infringed. That leaves but one of those patents that remains unchallenged.

As noted above, the first Office actions do not make a patent unenforceable due to the procedural nature of the ruling. The full USPTO review process will have to be completed before anything could happen to the patent.

If either patent is officially invalidated at the end of that process, it will represent a serious blow against Apple's efforts to protect iOS, iPhone, and iPad against what the company has claimed is the wholesale theft by Android and Google's Android OEMs of the company's inventions.

In short, those who believe that Apple's R&D efforts and inventions deserve protection should be concerned. On the other hand, those who think that Apple is nothing more than a wannabe bully that prefers litigation to innovation shouldn't necessarily start celebrating just yet.