USPTO Reverses Course, Confirms Apple's 'Overscroll Bounce' Patent

Apple & the USPTOThe U.S. Patent & Trademark Office (USPTO) reversed a "final" ruling from April that invalidated key claims in Apple's "overscroll bounce" patent. The USPTO informed Apple that it would be issuing a reexamination certificate for the patent that confirms four key claims, including claim 19 that a jury found Samsung infringed in 2012.

In April, the USPTO had issued a "final" ruling that invalidated all but three claims in the patent. Nomenclature in the U.S. patent system is such that "final" isn't really final, as we noted in April, but Friday's news of a reexamination certificate is.

That's a big deal for Apple, as claim 19 of this patent was at the heart of a major portion of Apple's huge win against Samsung. Apple won a US$1.05 billion award from a jury that branded Samsung a copycat based in part on this patent, which is also called patent '381—$450 million of that award is subject to a retrial scheduled for November.

FOSS Patents broke the news of the USPTO's reversal after Apple filed the information with Judge Lucy Koh, the judge presiding over the post-trial (and re-trial) phases of the Apple v. Samsung patent infringement suit.

There's a Form for That

The "Notice of Intent to Issue Ex parte Reexamination Certificate" (and yes, there's actually a form with that name you can see on FOSS Patents) informed Apple that the USPTO had confirmed four claims in addition to the three claims confirmed in the "final office action" handed down in April.

That makes 7 claims that have been confirmed, but several more remain invalidated and are likely to remain so at this point. It's claim 19 that matters the most, however, especially in Apple's case against Samsung.

Florian Mueller of FOSS Patents also pointed out that this is the second confirmation of that claim by the USPTO. In 2011, a similar reexamination process occurred—it was believed that Nokia requested that round in a now-settled dispute—and claim 19 was confirmed at that time, too. As these things work, that should make this claim fairly bullet proof unless new prior art is found or software patents themselves get chucked.

No News is Good News (for Samsung)

All of this is bad news for Samsung, at least in terms of the billion dollar damage award it is facing. $450 million of that award was tossed out, but only subject to settlement or a retrial. The jury in the retrial will decide new damages, and those damages could be less than the original, the same, or—and this gets ignored in most mainstream coverage—more than the original award.

Because Apple's patent has been confirmed, the retrial taking place in November is almost certain to take place at this point, something that Samsung can't possibly be looking forward to. Many have argued that to Samsung even such a large award can be considered a cost of doing business, but it's a significant cost, and with Friday's confirmation from the USPTO, Apple is marching inexorably closer to exacting that cost.

There is one more point worth mentioning: the money isn't what Apple wants. Apple wants for its competitors to not be able to copy its innovations.

The overscroll bounce was something Apple worked long and hard at figuring out when it came to making the touch interface intuitive. Having more claims confirmed increases Apple's ability to keep its competitors from copying the fruits of that effort.