Patents: That Word Does Not Mean What You Think It Means

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Yesterday, the internet was abuzz with reports that the U.S. Patent and Trademark Office had “rejected” another Apple iPhone patent. Many commentators jumped to the conclusion that, since this patent figured heavily in Apple’s recent legal victory in a case claiming infringement by Samsung, Apple had been dealt a heavy legal blow. But, it turns out, not so fast. Patent law speaks its own language in which you have to forget about the plain English meaning of words.

What are we to make of a statement like this, in the USPTO finding?

No rejection of the claims, as presently written, are made in this Office action based on the  Hill and Ullmann references because the teachings of those references are essentially cumulative  to the teachings cited in the rejections below. However, in order for claims to be found patentable and/or confirmed in this ex parte reexamination proceeding, the claims must be patentable over every prior art patent and printed publication cited in the order granting the request.

I think I know what all those words mean, but the passage as a whole reads like something from a nightmare version of a reading comprehension test. I am not a patent expert, and I count on folks like the Verge’s Nilay Patel and Matt Macari, intellectual property lawyers by training, to illuminate the dark ways of patent law. And, as Macari pointed out with regard to a similar USPTO ruling on another Apple patent, the rejection of claims following a request from reexamination, also known as a “first Office action,” is the first step in a very long process.

In this case, the challenge was filed by Samsung and, as is the normal practice, its challenge was considered without any response from Apple (that’s what ex parte means.) Macari cites USPTO statistics that such request are granted over 90% of the time. Apple now gets to come in an defend its patent before the UYSPTO–Samsung isn’t actually a party to the case. In a bit under 70% of such cases, some of the claims of the original patent are invalidated in reexamination while the rest are upheld; the patent in question contains 21 claims. About 11% of the time, all claims are rejected, leaving the patent invalid.

Although the USPTO reconsideration order came to light because Samsung filed it as part of its attempt to change or overturn the recent judgment in favor  of Apple, the action is not light to have any impact on that case, at least not any time soon. Under U.S. law, a patent is presumed valid until the USPTO says otherwise. At least for now, the reexamination order should not change anything.