U.S. Office Rejects 2nd Apple Patent

The United States Patent and Trademark Office has dealt a blow to Apple in its legal battle with Samsung Electronics over smartphone patents, declaring that a patent that helped Apple win $1.05 billion in damages against Samsung in a jury trial should not have been granted.

The patent office’s action this week was made public by Samsung in a filing on Wednesday in Federal District Court in San Jose. In the court document, Samsung, the Korean electronics giant, said the action should be weighed in evaluating its petition for a new trial and its challenge to the damages award.

Apple is expected to appeal the patent office’s ruling, so the patent has not been invalidated yet.

The patent, No. 7,844,915, is one of six that a jury in August found that Samsung had infringed. It covers usability software that distinguishes between single-touch and multitouch gestures on a smartphone or tablet screen.

The patent is widely known as the “pinch to zoom” patent, but the software is actually narrower in scope. Apple’s legal documents refer to it as controlling a “scroll versus gesture” feature.

Of the six patents that were the basis of the ruling against Samsung, this is the second that the patent office has concluded, on re-examination, should not have been granted.

In October, the office came to the same conclusion about the patent for Apple’s “rubber-banding” or “bounce” feature, which makes a digital page bounce when a user pulls a finger from the top of the touch screen to the bottom.

“It’s a strike against Apple, but it is far from the whole ballgame,” said Mark A. Lemley, a Stanford Law School professor.

Apple is likely to challenge the patent office’s action this week, as it did the October decision.

If the patent office’s rejections hold up after Apple makes its appeals, the court could grant Samsung’s motion for a new trial. It is more likely, however, that the damages award will be considerably reduced, said James Bessen, a patent expert at the Berkman Center for Internet and Society at Harvard University.