USPTO Invalidates Key Overscroll Patent Claim

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.