Procedural review of Apple patents limits leverage of rivals for years; Apple patents remain valid and enforceable during review

“Apple Inc.’s patents behind the pinch-to-zoom, bounce-back and multitouch features of its iPhone aren’t invalid, at least not yet,” Susan Decker reports for Bloomberg News.

“The U.S. Patent and Trademark Office’s initial rejections in recent weeks were consistent with a process in which most patents challenged over the past three decades, including ones rejected at some point, survived in original or modified forms, according to data compiled by the office,” Decker reports. “That process can take years. In the meantime, Apple’s patents will be considered valid and enforceable in the global smartphone-patent litigation among it, Samsung Electronics Co. and Google Inc.’s Motorola Mobility unit.”

Decker reports, “‘It has to weigh on the judge’s mind on how much damages to award,’ said Scott Daniels, a patent lawyer with Westerman Hattori in Washington who specializes in re-examinations, as the reviews are called. ‘If these are patents of questionable validity, can the judge in good conscience drop the hammer on Samsung?'”

MacDailyNews Take: Wouldn’t a patent lawyer know the simple-to-grasp fact that anybody with $17,750 can anonymously demand that the Patent Office initiate a post-grant review? These procedural, anonymous $17,750 USPTO “reviews” won’t weigh on any even semi-competent judge’s mind.

“The ITC is scheduled to end its investigation by March 13, and it has ruled in other cases that it won’t wait for the patent office to complete its work,” Decker reports. “The patent office has sought to speed up the process. Even so, it would probably take at least two years, and possibly longer, before reaching a point where the Federal Circuit could rule on whether to cancel any of the patents, Daniels said.”

Decker reports, “According to patent office statistics from 1981 through June, owners get all of their patent confirmed in 22 percent of re-examinations, and all of the claims canceled 11 percent of the time. The rest involve modifications of the patent, which in some instances means the patent owner changes the wording of the patent, removes elements, or even gets to add more claims.”

MacDailyNews Take: In other words, 89% of patent reviews do not get canceled outright and 78% of patent reviews are modified, including the possibility of adding more claims, thereby strengthening the patent.

Read more in the full article here.

Related articles:
2011 Leahy-Smith America Invents Act made it easier to tentatively review Apple’s patents – December 20, 2012
USPTO tentatively – and likely temporarily – declares Apple’s ‘pinch-to-zoom’ patent invalid – December 20, 2012
Apple v. Samsung judge Koh weighs damages and – more importantly – running royalties – December 19, 2012


  1. “These procedural, anonymous $17,750 USPTO “reviews” won’t weigh on any even semi-competent judge’s mind.”

    It seems that there aren’t any semi-competent patent law judges in the U.S. anymore.

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