WASHINGTON – Apples patents behind the pinch-to-zoom, bounce-back and multitouch features of its iPhone arent invalid, at least not yet.
The U.S. Patent and Trademark Offices initial rejections in recent weeks were consistent with a process in which most patents challenged over the past three decades, including ones rejected at some point, survived in original or modified forms, according to data compiled by the office.
That process can take years. In the meantime, Apples patents will be considered valid and enforceable in the global smartphone-patent litigation among it, Samsung Electronics and Googles Motorola Mobility unit.
The Apple patents have not been held to be invalid by a court, and certainly not by an appellate court, so they are still enforceable, said Robert Resis of Banner & Witcoff in Chicago, whos not involved in the case. Just because theres an action going on in the patent office doesnt render them unenforceable.
The biggest practical effect of the review is that it gives Samsung an argument that Apple shouldnt be able to collect the full $1.05 billion jury award the iPhone maker won against the Korean handset maker in San Jose, Calif., in August.
It has to weigh on the judges mind on how much damages to award, said Scott Daniels, a patent lawyer with Westerman Hattori in Washington who specializes in re-examinations, as the reviews are called. If these are patents of questionable validity, can the judge in good conscience drop the hammer on Samsung?
Two of the Apple patents, for a way that the screen seems to bounce back after it reaches the end and for the use of a pinching motion to zoom in, were found to be infringed in the San Jose case.
The third patent – part of an Apple case against Samsung at the U.S. International Trade Commission in Washington – is for touch-screen technology co-invented by Steve Jobs, Apples late co-founder.
The patent office tends to issue notices in bunches when the reviews involve similar technology or the same company, and in this case has so far issued three non-final decisions in the past two months.
U.S. District Judge Lucy Koh in San Jose will decide whether to uphold the verdict or even increase that amount.
Judges have discretion whether to consider the patent office review, said Rob Sterne of Sterne Kessler in Washington, editor of Patent Office Litigation, a book on how the agency is used more in litigation. According to patent office statistics from 1981 through June, owners get all of their patent confirmed in 22 percent of re-examinations, and all of the claims canceled 11 percent of the time. The rest involve modifications of the patent, which in some instances means the patent owner changes the wording of the patent, removes elements, or even gets to add more claims.
The amount Samsung owes could be altered if Apple amends the patent claims that were part of the litigation. The U.S. Court of Appeals for the Federal Circuit in Washington, which specializes in patent law, has ruled that patent owners who amend their claims during the review cant collect damages for any period that occurred before that change.
Apple has at least a month to respond to the issues raised by the patent office examiner, and then a second notice is issued. Apple also can request an interview with the examiner handling each review.
If the claims are still rejected, the Cupertino, Calif.-based company can appeal to a board within the agency and then to Federal District.