News today that a second prominent Apple smartphone patent — this one on “pinch-to-zoom” (allowing the user to zoom in or out by moving two fingers apart or closer together while touching the display) has been invalidated by the U.S. Patent and Trademark Office. This is the second PTO invalidation of a big Apple patent in a few weeks — the last one to be knocked down by the PTO, back in early December, was Apple’s “bounce-back” or “rubber-banding” patent (i.e., the bounce that you get when you scroll to the end of a smartphone’s screen).
In both cases, the PTO ruled that the Apple patent is both non-novel and obvious based on the existence of prior patents that disclose a very similar feature.
Here’s the most important question: The Apple “bounce back” and “pinch-to-zoom” patents were among the patents that the jury in federal court in San Jose ruled Samsung had infringed. But considering that the PTO has deemed that these patents are worthless, what should the San Jose court do now? Apple will likely appeal the PTO’s determination in both cases, so in a sense the validity of the bounce back and pinch-to-zoom patents is still up for grabs. But should a damage award based in part on patents that are of no current effect stand? Or should the court vacate the damage award and order a new trial on the question of damages? Or should the court at least suspend the damage award pending resolution of the patent validity questions?
One thing the San Jose court should not do is make final an award that may be based in part on bad patents.