USPTO Invalidates Key Overscroll Patent Claim

| Analysis

Apple & the USPTOA review of Apple's so-called overscroll bounce patent has invalidated a key claim. Though the review processreaffirmed three of the patents claims (14, 17, and 18), claim 19 was at the heart of (some of) Apple's legal victory in Apple v. Samsung in which Apple won more than a billion U.S. dollars in damages.

This is a very complex situation that has already been the subject of some misreporting, so allow us to dig into it a little more deeply.

Claim 19 of patent 7,469,381 was just one area where Samsung was found to infringe on Apple patents with a variety of its Android smartphones and tablets. Apple's $1.05 billion jury verdict was based on a mix of design and software patents, but the overscroll patent has long been deemed one of Apple's killer patents.

If claim 19 remains an invalid claim after the appeals process is complete, it will represent a significant hit to Apple's IP arsenal. It would not only keep Apple from asserting that patent against other copiers, it could play a role in the appeals process of the Apple v. Samsung case.

The first thing to understand is that this was a "Final" ruling, but don't let the name fool you. Final doesn't mean it will be the last ruling in the case. According to FOSS Patents' Florian Mueller, there could be two more stages of review within the U.S. Patent & Trademark Office before the appeals process winds up in court.

Apple itself noted as much in a court filing covered by CNet. From that filing:

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. In short, reexamination of the '381 patent is far from conclusion.

That said, the USPTO ruled that the claim was deemed anticipated. This is even worse (for Apple) than "obvious," as anticipated means it is just plainly non-inventive. The USPTO cited two patents as prior art as evidence, one of which is owned by none other than Apple.

As an interesting sideline, the inventors listed on that patent, "Continuous scrolling list with acceleration," include Bas Ording, Scott Forstall, Greg Christie, Stephen O. Lemay, and Imran Chaudhri. Mr. Forstall, whose name is on many other Apple patents, was let go in late 2012 following a flawed Apple Maps launch and friction with Apple CEO Tim Cook.

We mentioned the $1.05 billion damage award from the jury in Apple v. Samsung, but some $450 million of that award was stricken and is subject to a retrial to determine new damages. How claim 19 figures into that process is a big ol' bucket of muddy thank-goodness-we-don't-have-to-figure-that-out.

Back to the "Final" ruling: Tuesday's opinion is a follow up to a "First Office Action" that invalidated every claim in the patent in October of 2012. As noted above, the "Final" ruling reverses course on three of those claims, but leaves the other 18 claims as invalid, including claim 19, which is the one that counts.

In the next step of this process, Apple has two months—but can request more time—to prove how the patent in question is different from the patents cited as prior art.

According to Mr. Mueller, "Apple will have to prove that it's not only different from what those prior art references disclose, but that there was also an inventive step involved between the prior art and this claim."

Which simply means that Apple has its work cut out for it. The company spent years figuring out how to make scrolling on a touch device make sense to the end user, while Samsung took only a few months to copy that work.

It will be a shame if Apple loses patent protection for the innovation, but the USPTO giveth and the USPTO taketh away. If the prior art is there and if Apple's patent wasn't properly structured, Apple will just have to take it on the chin and move on.

That said, this process will take years to wend its way through the USPTO and eventual court appeals. Tuesday's "Final" ruling is far from the last word on the matter.

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Bosco (Brad Hutchings)

Here’s something the dümlaut won’t tell you. This leaves Apple’s aggressive legal approach in shambles. Why? Because the next party they sue, Samsung or otherwise, will be able to successfully argue that there is a likelihood of an Apple patent being overturned and delay trial until the Patent Office concludes all reviews. In a case like Samsung, that will give Apple’s opponent a year to kill it in the market before having to face damages that amount to little more than a small cost of doing business.

More immediately, it opens a good half of Koh’s rulings in the original case up to appeal, as she proceeded as if there was no doubt as to the validity of the patents. Good for Sammie for sticking to its guns and not settling.


As with all your predictions you will be wrong again…


As with all your predictions you will be wrong again…

Dave, Mr. Bosco can neither confirm nor deny that any of his past predictions have ever been wrong.  In fact, Mr. Bosco does not even acknowledge that he has ever made any past predictions, unless said predictions were correct.  By utilizing the Bosco Model (patent pending), no accountability or responsibility need be taken.


Bosco (Brad Hutchings)

Ron, apparently, you’re going to continue to be in an insufferable ass. Would you please refrain from insinuating that I would contribute any energy toward propping up the abomination that is the patent system?


Not sure why pestering you until you acknowledge how wrong you have been over the past few years makes me an ass, but whatever.  It is obvious to the majority on TMO what type of troll you are.  Even Guest Dave here knows it.  I view it as a public service that I must be doing a pretty good job with now.

You know, the incredibly funny (and very ironic) thing here is that you do the EXACT same thing with (as you call him) the dümlaut as I am doing with you.  Nearly every reference on TMO to “FOSS Patents’ Florian Mueller” seems to require you to come in with a personal insult to the man, regardless of how right or wrong he is on the present topic.  Why?  Because you disagree with something he did or said in the past that he won’t admit to.  So, you are an insufferable ass about the man, and you want to make sure everyone who reads any TMO write-up referencing Florian knows the truth about him.  Well, the truth in your mind.  What’s the difference, Mr. Hypocrite?  The only difference is that I do it to your face, and I don’t resort to whiny and immature name-calling.

Hey, by the way, it is April 2013 and Tim Cook is still in charge of Apple.  Huh, go figure.  Wrong again, Bosco.  Just like you were wrong about Johny Ive leaving.  You know, I think you are now making these predictions FOR the attention that you get, that you must be lacking elsewhere in your life.  But I don’t know you that well, so that’s just a guess on my part.


Would you please refrain from insinuating that I would contribute any energy toward propping up the abomination that is the patent system?

I will apologize for the attempted patent humor.  We may have our differences, but I do agree that our patent system is an abomination and even I wouldn’t be so mean to associate you to it, except as a joke!!



Bosco (Brad Hutchings)

Hey Ron, I get far more attention on a weekly basis on the number 1 sports talk radio show in America than I ever will here. Opinions are my own. Nobody pays me to come up with them to support their cause. Despite your best efforts on company time, TMO has been a favorite hang of mine since before it began.


Opinions are my own.

Oh, if only you offered JUST your opinions, we’d all be a lot happier.  It’s when you make your outrageous predictions (with accompanying insults) that gets you into trouble.  We are all fine with opinions.  But when you say something is going to happen and it doesn’t, then you should simply admit that you were wrong and move on.  By not taking responsibility for your failed predictions, people have no respect for anything that you say.  You simply come across as someone who doesn’t know what they are talking about.  Which is sad, cause you are not stupid.  Then, all you get when you volunteer a prediction are comments like “As with all your predictions you will be wrong again…”

So, either just offer your opinions and stop with the failed predictions, or continue with the predictions and boast when you are right but also admit when you are wrong (more often than right) and people will actually start to respect you.  Don’t you want that?

Or, try this.  Instead of saying, “by end of March 2013 Cookie will be relegated to the board of directors” try saying, “I wouldn’t be surprised if Tim Cook is removed from running Apple and ends up just sitting on the board.”  You see the difference?  The first one makes RonMacGuy make a note of the comment and starts to pester you with it when it is obviously wrong after March 31.  The second one is simply a comment that RonMacGuy will most likely ignore, since everyone has an opinion.  The first one almost requires someone to call you on it when it falls flat on its face, like it did a few days ago.  The second one may have people say that they disagree with your opinion, but that’s all they can say.  You see the difference, don’t you?


Bosco (Brad Hutchings)

It wouldn’t surprise me if anyone who deals with noted life coach and communications expert RonMacGuy develops a barely repressible urge to suffocate him with a used a diaper.

Do I pass?

Bryan Chaffin

No, Brad, you don’t. That’s clearly over the line.

I appreciate the civil discourse up until then. I think you both had some good points.

Bosco (Brad Hutchings)

Bryan, you clearly missed the context. It wasn’t a prediction. I was merely trying to follow his advice to see where it took me.

But seriously… I think calling people’s intentions into question when they’re not public figures (in context) is a bit beyond civil discourse for a friendly blog. This demanding of “responsibility” is also creepy. If he were in my face at the local Ralph’s doing that, I’d get a restraining order. It’s not going to make me go away. People who have been here know where I stand on things. I don’t think there’s any need for Ron to be such a d*ck about it, like I insulted his Mom or his religion or something like that. Have I?

Bryan Chaffin

I’ll happily take this up with either or both of you offline. I’d rather get this conversation back to the developments with the USPTO action.

In retrospect, I imagine this will be a turning point in Apple’s IP battle. I think the company has a very high burden to overcome the “anticipated” ruling.

And this is certainly a key patent for Apple in terms of protecting iOS innovation.


I agree Bryan.  By the way, Bosco calling me an “insufferable ass” in his first response to me doesn’t qualify as “civil discourse” in my book, but I think I took the higher road and kept it civil.

Brad, truly, I don’t understand why you get so upset about it.  Creepy?  Restraining order?  Wow, I’d hope you’d defend your manhood and give me a nice punch to the face instead of taking me to court!!  LMAO.  I probably deserve the punch to the face, that’s for sure.  Maybe someday we’ll meet in person and I’ll let you take a shot!!

As I’ve said before, all you have to do is publicly admit that you were wrong on each of the items that you insultingly predicted in the past and we can all move on.  That’s all - do that here and now, and I’ll never bring them up again - at least the past ones, but I won’t promise to not bring up future ones.  It bothers me that you act all high and mighty with a huge resentment about Apple, and make bold predictions of all types of failure, all while personally insulting anyone who argues against you, and then beat your chest on the ones you get right and ignore the ones that you get wrong.  I mean, really, what human being does that?  God, I am wrong all the time, and I’m the first to raise my hand and say, “man, that was stupid, I can’t believe how wrong I was.”  Every writer on TMO has probably done that at least once in their writings.  It’s called humility - you should try it.  I just really don’t understand how you can’t spit one of those out, without getting all mean and offensive and insulting about it.  Nothing at all creepy about it, I am simply intrigued that you are incapable of doing so on this public forum, where most people don’t even know you at all.

Bryan, I have to ask, did you see my “Bosco Model (BM)” writeup a few weeks ago?  I figured you, of all TMO writers, would appreciate the humor.  I don’t expect you to respond publicly on it, but feel free to email me about it.  I won’t tell what you say!!



As for the USPTO action, Bryan I feel you are probably right regarding the high burden to overcome.  To me it really seems like the whole system is so messed up that it is second guessing itself now in an attempt to maybe try a grass roots movement of change.  It is wrong to grant a patent, sit back and watch a very costly trial ensue, and then invalidate a key claim of that trial.  It really raises questions on every single patent that they’ve granted.  But this isn’t the right way to change the system.  They need to make some bold changes but allow some ‘grandfathering’ to work through all the legal battles.  But you can’t give a company like Apple patent protection and then shaft them when they spend money to hold a copycat company, huh, RESPONSIBLE for its actions!!

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