News that the U.S. Patent Office has invalidated Apple’s patent on “bounce back” scrolling — the feature that gives a user a “rubber band” effect when she scrolls to the bottom of a screen display. The PTO has decided that the patent is both non-novel and obvious based on the existence of a prior patent that discloses a very similar feature.
The Apple “bounce back” patent was one of the patents that the jury in federal court in San Jose ruled Samsung had infringed. But considering that the PTO has deemed that patent worthless, what should the San Jose court do now? Apple will likely appeal the PTO’s determination, so in a sense the validity of the bounce back patent is still up for grabs. But should a damage award based in part on a patent that is of no current effect stand? Or should the court vacate the damage award and order a new trial on the question of damages?