The internet was abuzz yesterday with reports that Apple's infamous "bounce-back" patent, US 7,469,381, was "tentatively invalidated" by the US Patent Office. That's one of the patents Samsung was found to infringe, and any action by the USPTO will have major consequences. Unfortunately, all those reports were extremely premature —patents can't be "tentatively invalid," just like people can't be "tentatively dead."
What actually happened was that the USPTO just recently issued its first substantive rejection of the '381 patent's claims after granting the request to review its validity back in July. It's a rejection, not an invalidation. It sounds like a legal word game, and it is — but these definitions are critically important. Patents are either valid or invalid, and patents under reexamination are under the microscope, but most certainly alive.
Most reexamined patents come out with valid claims
The patent reexamination process is long — lasting over two years, on average — and events at the early stages can be easily misinterpreted. The USPTO publishes stats that illustrate this point pretty clearly: the patent office agrees to reexamination requests over 90 percent of the time, and it almost always finds something to modify in disputed patents. Even still, the end result is usually just an alteration of the existing patent, not a clear-cut confirmation or rejection: only 11 percent of patents come out of the process with all claims totally canceled and invalid, and only about 22 percent end up totally confirmed as valid. That means that the vast majority of reexamined patents result in claims that are simply altered and established as valid. Samsung would obviously welcome amendments to the claims if they meaningfully limit the scope of the '381 patent to get it out of infringement, but that doesn't mean much in the grand scheme of things.
Samsung will be watching from the sidelines
It's also important to note that Samsung will not be arguing against Apple about the validity of this patent — in fact, it's sitting on the sidelines like the rest of us while Apple and the USPTO go through the process. Because of the type of reexam initiated (ex parte), Apple's the only party involved. In the meantime, Apple will have the opportunity to make counterarguments, discuss the claims and rejections via "interviews" with the USPTO personnel assigned to the matter, and make amendments to the claims. Apple still has a lot it can do to influence the fate of the '381 patent. We should also keep in mind that only one claim from the '381 patent was asserted against Samsung at trial, and it's likely Apple will do everything it can to make sure at least that claim exits the reexam intact.
Will the '381 patent eventually get invalidated? Who knows, but one thing is certain: it's way too early to make that call right now. Until the USPTO gives Apple a final rejection of the claims, the patent is still enforceable. The more important issue may be what Judge Lucy Koh thinks of all of this. Samsung has already pointed out to the court that the reexam has resulted in an initial rejection of Apple's patent, so we can assume it would like to have her put that patent aside for now and modify the $1.05 billion verdict accordingly. It's difficult to say whether Koh will find that argument persuasive, but we should learn more as the post-trial battles are set to come to a head in December.