Apple: USPTO reexamination of patent in Samsung suit isn't complete

Apple said it also has the option to appeal a decision once the reexamination by the Patent Office is completed

Apple responded to a Samsung Electronics' claim that the U.S. patent office had rejected multiple claims of Apple's "overscroll bounce" patent by stating that the reexamination is not finished.

The maker of the iPhone and iPad devices also raised the possibility in a court filing Tuesday that it may appeal to the Patent Trial and Appeal Board, and if unsuccessful, may seek judicial review in the U.S. Court of Appeals for the Federal Circuit or the U.S. District Court for the District of Columbia.

On Monday, Samsung said in a filing to the U.S. District Court for the Northern District of California, San Jose division that a Final Office Action by the United States Patent and Trademark Office (USPTO) was relevant to the dispute before the court between Apple and Samsung, because it "finally" rejects multiple claims of U.S. Patent no. 7,469,381.

The patent, titled "list scrolling and document translation, scaling, and rotation on a touch-screen display," is popularly known as the "overscroll bounce" or "rubber banding" patent, because it describes the way a displayed portion of a list of items or a document may appear to bounce off a boundary of the window in the touch-sensitive display when the beginning or an end of the list of items is reached, or when the end of a document is reached.

Samsung said in the filing that the final rejection includes claim 19 of the '381 patent, which is the only claim of the patent that is at issue in the action before the court. A jury found at trial last year that 21 Samsung products infringed claim 19 of the '381 patent. The jury awarded damages related to 18 of these products, some of which were vacated by a judge for a new trial.

Claims 14, 17 and 18 of the patent were confirmed by the USPTO, but claims 1-13, 15, 16, 19 and 20 were rejected.

The USPTO's Final Office Action of March 29 does "not signal the end of reexamination at the USPTO, much less the end of consideration of the patentability of the claims under reexamination," Apple said in its filing on Tuesday. "Rather, 'finality' is primarily a procedural construct that limits the right to amend claims and introduce evidence as a matter of right in reexamination."

Apple said it is entitled to file a response to the action which may result in a withdrawal of the rejection or allowance or certification of the claims under reexamination. The Office Action states that Apple may respond within two months. If that doesn't work, the company said it is entitled to several appeal options.

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