Apple received some bad news last Friday regarding its infamous bounce-back patent, US 7,469,381. That's one of the technical utility patents Samsung was found to infringe at trial, and it's been the subject of a formal reexamination process at the US Patent and Trademark Office since last July. In October each and every claim of the '381 patent was initially rejected. On Friday, however, the USPTO issued what's called a "final" action in the reexamination — again rejecting nearly all of the patent claims, including the one asserted against Samsung at trial. "Final" has a fatal ring to it, but it's far less conclusive than that. While the issuance of a final rejection signals the end of this particular phase of the proceedings, we're still a long way from knowing which patent claims will ultimately survive the process.
This final office action is the next step, and there are still a few procedural options available to Apple, as it pointed out in a recent court filing. First, Apple will file a response to the final action in an attempt to get the USPTO to change course. If that doesn't work (and it often doesn't), then an appeal up the chain to the Patent Trial and Appeal Board will occur. If that doesn't result in a substantive reversal of the rejections, then there's always the option of appealing to the courts — namely, the US Court of Appeals for the Federal Circuit. Basically, we're at the bottom of the fourth inning.
Basically, we're at the bottom of the fourth inning
Still, we are able to glean some substantive information from the back-and-forth we've seen to date between the USPTO and Apple. While the process is far from complete, the arguments for invalidating the patent — and Apple's response to those arguments — are becoming solidified. The patent office has backed off of some of its weaker arguments from the initial office action and we're beginning to see exactly where the lines have been drawn.
This is especially true for claim 19 of the '381 patent — the one claim Samsung was found to infringe, and the one Apple really wants to salvage in the end. The two are battling over whether a 2003 AOL patent publication discloses Apple's claimed bounce-back feature or, instead, is just a way to snap content windows between adjacent columns on a screen. That's really the issue that will determine the fate of claim 19, and there are strong and weak points on both sides of the argument. Regardless, it looks like it could be months or even years before we know the ultimate outcome for Apple's patent. Until then, there's little doubt that Apple will continue to deem it valid and use it to keep Samsung and others from implementing the feature.