USPTO intends to invalidate Apple patent grants it not so long ago sanctioned

On December 19, in a filing regarding the ex parte reexamination of patent number 7,884,915, the patent that presumably allowed for touch typing and pinch-to-zoom, the United States Patent and Trademark Office (USPTO) rejected all 21 claims on the grounds they were either obvious or invalidated by prior art as described in three earlier patents and four published documents. The patent is still valid, and Apple has two months to respond.

Summary of Action

In October the USPTO stated that they intend to reject Apple patent 7,469,381, the “overscroll bounce” patent, again because in the hearing evidence of prior art was convincing.

Both of these patents were part of the huge Apple v. Samsung case the resulted in a $1B+ verdict for Apple.

The finding is, unfortunately, not surprising. As we have stated before, it is illustrative of a systemic problem. If (according to USPTO’s own statistics) 92% of all the requests to USPTO to reexamine patent claims are granted and if 78% of the reexaminations find a problem with the original claims, then it is likely that some of Apple’s patent claims will be invalidated. Why go to the expense of commercial litigation before bringing ex parte hearings on validity? Why are initial examiners not finding the prior art that will disallow U.S. patent applications?  Why is obviousness clear in an ex parte hearing but not at initial examination? Does the USPTO intent to shorten the time to initial action work against quality examinations? Are the tools available to examiners appropriate for the tasks?

From a valuation or investment standpoint, the risk of having a patent invalidated is real, and high (if a challenger has the financial resources to pursue it), and must be factored into any analysis.