The U.S. Patent and Trademark Office has told Apple that it cannot enforce its famous "rubber banding" patent because the feature, as cool as it might be, is not a novel idea.
The decision hands Samsung a small victory in its epic IP battle with Apple even if the decision, which the patent office called "final," is not really final because Apple almost certainly will contest the decision.
"Sometimes the Central Reexamination Unit reconsiders such 'final' decisions. Even if it doesn't, this 'final' rejection can and certainly will be appealed," Florian Mueller in a blog post explaining the decision, issued late last week.
The patent in question, '381, covers the user interface feature where you experience a bounce-back effect upon reaching the end of a list while swiping. The patent office tentatively determined in October 2012 that all 20 claims of the '381 patent were invalid. Two months later the office tentatively invalidated another key bit of IP, the "Steve Jobs patent" that covers key multitouch features of iOS, and decided to reexamine a patent covering document scrolling.
Apple has two months to respond (read: appeal) the decision, during which it must prove the technology described in the patent is different from any previously patented technology and that there was "an inventive step" involved in creating the IP.
Samsung submitted the patent office's most recent decision, made March 29, to the judge presiding over the ongoing Apple v. Samsung trial because the jury found 21 Samsung products to infringe claim 19 of this patent. The jury awarded damages to Apple for the infringement. Some of these damages will be reconsidered in a new upcoming trial. Today's decision holds more weight than the tentative invalidation of six months ago, so Samsung is likely hoping Judge Lucy Koh will take this into consideration as proceedings and appeals continue in this case.
Once the U.S. PTO comes to a final decision about Apple's appeal, that decision can also be appealed to the U.S. Federal Circuit Court of Appeals. So we're still looking at several more years of Apple and Samsung jockeying for IP supremacy in this case concerning this patent alone.
