USPTO Rejects Key Apple Touch Patent

The United States Patent and Trademark Office said in a preliminary ruling that one of Apple Inc.’s touch-related patents, a patent that played a large role in securing Apple over $1 billion in damages from Samsung Electronics,  should never have been granted.

After reexamination of the patent application by the USPTO, the agency rejected all of Apple’s 26 claims in its pinch-to-zoom patent on Wednesday.  The patent in question, patent No. 7,844,915, covers software that differentiates between single-touch and multitouch motions.  The software allows the smartphone to differentiate between scrolling and gesturing commands.

According to a document issued by the USPTO, which Samsung filed with the federal court in San Francisco on Wednesday, several portions of the patent were discarded based on findings that prior patents owned by Apple protect the same technology.  Patents are only valid if the invention is novel considering all prior art.  According to the USPTO’s report, Apple’s pinch-to-zoom patent does not live up to this standard.

Apple is expected to appeal this preliminary ruling.  The USPTO often rejects patents, only to reinstate them later, so the patent may still be held valid.  However, if the decision does hold, the rejection of the patent will have lasting consequences for Apple.  Since Apple claimed that its pinch-to-zoom patent was one of its most commercially valuable patents, demanding a $3.10 per unit royalty from Samsung for any future use of the patented technology, it could have a large impact on the verdict Apple received in August.

Samsung is already claiming that this new action from the USPTO supports its bid for a new trial, which Samsung is requesting as an attempt to reduce the $1.05 billion in damages that a San Francisco jury awarded Apple.

The pinch-to-zoom patent is only one of six of Apple’s patents that Samsung was found to be infringing during the companies’ patent trial.  However, due to Apple’s claims of the commercial importance of the patent, it could prove grounds for retrial, though it is more likely that the verdict will just be reduced.

This is the second patent related to the Samsung case that has been struck down by the USPTO since the August decision.  In October, the USPTO rejected Apple’s patent for the feature that makes pages bounce when a user swipes a finger from the top to the bottom of the touch screen.