Apple's crucial overscroll bounce patent claim is valid, U.S. patent office says

The USPTO reversed its opinion on an important Apple patent claim

The USPTO has confirmed four claims of Apple's overscroll bounce patent, including claim 19 of the patent, according to a document filed with a Californian court on Thursday. That claim played a crucial part in Apple's $1.05 billion dollar lawsuit against Samsung,.

Apple's "list scrolling and document translation, scaling, and rotation on a touchscreen display" patent describes a way to scroll past a document's border. When a user reaches the edge and stops scrolling, the screen bounces back to the nearest display area.

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The most important claim in the patent is claim 19. During the Apple/Samsung billion dollar patent trial the jury found that 21 accused products infringed claim 19, and the jury awarded damages as to 18 of these products. The Galaxy S II, Galaxy Tab, Galaxy Tab 10.1 (WiFi), the Droid Charge and the Nexus S 4G were among the infringing devices.

While the USPTO rejected claim 19 of the patent in a decision called a "Final Office Action" in April, the USPTO now informed Apple that it intends to reverse that decision in a notice of intent to issue an ex parte reexamination certificate of the claims, a document filed by Apple with the U.S. District Court, Northern District of California, San Jose Division, showed.

"In short, claims 14, 17, 18 and 19 are confirmed," primary examiner USPTO Dennis G. Bonshock stated in the document. Claims 14, 17 and 18 were also confirmed in the Final Office Action in April.

In April, the USPTO found that several claims in Apple's overscroll bounce patent, including claim 19, were anticipated by a patent that describes how to control content in a display invented by Luigi Lira.

However, "during an interview on 5-9-2013, Patent Owner's Representatives presented their position that the Lira reference lacked the 'stop condition' of the claims, where the translating in the second direction occurs 'until the area beyond the edge of the electronic document is no longer displayed'," the USPTO said in the filing.

Apple's representatives also noted that claim 19 specifically teaches "instructions for" translating "until the area beyond the edge of the electronic document is no longer displayed", according to the filing.

"The Office noted that though corrective traversal in Lira appears to stop when the area beyond the edge of the document is no longer displayed, it is not specifically responsive to instructions requiring said stop condition (area beyond the edge of the electronic document is no longer displayed) but rather a result of instructions to center (same effect, different cause)," the USPTO said in the filing.

After this, Apple filed a response with specific support for its claim. The USPTO reviewed the claim further and called Apple in May "during which a decision was made to confirm claim 19," according to the filing.

"In summary, Claim 19 is Confirmed, as there is no prior art disclosure of a similar device with 'programs including... instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in response to detecting that the object is no longer on or near the touch screen display'," said the USPTO.

Apple and Samsung did not immediately reply to a request for comment.

Loek is Amsterdam Correspondent and covers online privacy, intellectual property, open-source and online payment issues for the IDG News Service. Follow him on Twitter at @loekessers or email tips and comments to loek_essers@idg.com

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