IP Law Daily PTAB’s invalidation of Apple’s ‘pinch-to-zoom’ patent mostly upheld; three ‘rubberbanding’ claims remanded
Friday, April 14, 2017

PTAB’s invalidation of Apple’s ‘pinch-to-zoom’ patent mostly upheld; three ‘rubberbanding’ claims remanded

By Cheryl Beise, J.D.

The Patent Trial and Appeal Board’s rejection of 18 of 21 claims of Apple Inc.’s "pinch to zoom" application programming interface (API) multi-touch display patent as obvious or anticipated following reexamination has been affirmed by the U.S. Court of Appeals for the Federal Circuit. The Board correctly applied the broadest reasonable interpretation in construing the patent’s "scroll or gesture" limitation. However, because the Board failed to construe the "rubberbanding" limitation as expressly defined in the specification, the Board’s rejection of three patent claims was reversed and the case remanded (In re Apple Inc., April 14, 2017, Stoll, K.).

The appeal involved Apple’s U.S. Patent No. 7,844,915 (the ’915 patent), issued November 30, 2010, and entitled "Application programming interfaces for scrolling operations." The ’915 patent is composed of 21 claims, three of which are independent (claims 1, 8, and 15). The invention claims a "multi-touch display" functionality that allows a touchscreen device to differentiate between a single touch "scroll" operation and a "gesture" operation based on the number of detected input points, or finger touches—such as a two-fingered "pinch to zoom" gesture. The patent also describes an improved scrolling feature called "rubberbanding," which automatically readjusts the display when a user scrolls past content on the screen.

In 2012, a San Francisco jury found that several Samsung devices infringed claim 8 of the ’915 patent. An unidentified third party filed a request for ex parte reexamination of all claims of the ’915 patent, which the USPTO granted. The examiner rejected every claim of the ’915 patent as anticipated or obvious in view of the prior art, and the Board affirmed. The Board granted Apple’s request for rehearing but declined to modify its decision.

On appeal, Apple argued that the Board’s decision was erroneous because it was based on overbroad constructions of the "scroll or gesture" limitation and the "rubberbanding" limitation. The Federal Circuit reviewed the Board’s constructions de novo, applying the broadest reasonable interpretation (BRI) standard.

Scroll or gesture limitation. Apple contended that the Board’s construction of the phrase "two or more" in the scroll or gesture limitation—as permitting either two input points or more than two input points to be interpreted as a gesture operation—was unreasonable. According to Apple, the word "or" in the phrase "two or more" did not distinguish between two input points and more than two input points, but rather was a unitary phrase so that two-, three-, four-, and five-input points must all be interpreted as gestures.

The Board held that the claim language only requires detection of a scroll operation in response to a single input point and a gesture operation in response to one of the possible multi-input touches. The Board rejected the claims because the prior art—including JP 2000-163031 to Nomura and U.S. Patent No. 7,724,242 to Hillis—both teach a single-input scroll and a two-input gesture.

The Federal Circuit agreed with the Board. The claim language recites: "distinguishing between a single input point … and two ormore input points." On its face, this language does not limit the invention such that all received user inputs must be categorized as either a scroll or a gesture, as Apple contended. Apple’s construction would replace the word "or" with "and," thereby requiring all multi-input touches to be distinguished as gestures, the court said. However, a BRI interpretation of the word "or" in the phrase "two or more" creates alternatives for the gesture operation: a gesture operation occurs if either two input points or more than two input points are detected, the court explained. Moreover, the claims use the open-ended transitional phrase "comprising," and thus are broad enough to include user inputs that are categorized as something other than a scroll or a gesture.

The specification did not support Apple’s argument. Although the specification describes a gesture operation in the context of "two or more" or a "plurality" of input points or touches, it does not define "two or more" or "plurality" as meaning that all of the possible pluralities (e.g., two-, three-, four-, and five-input touches) must be interpreted as a gesture. Contrary to Apple’s assertion, the specification describes methods other than a single rule to distinguish scrolls from gestures.

The Board correctly interpreted "two or more" as distinguishing between a single input touch and any multi-input touch. Properly construed, the claim language was broad enough to read on prior art (such as Nomura and Hillis) that distinguishes between a single input point and two input points.

Rubberbanding limitation. The examiner and the Board interpreted the "rubberbanding" limitation as covering the sliding of content forward at the end of a scroll (i.e., sliding in the same direction as the scroll). Claims 2, 9, and 16—which include the rubberbanding limitation—were rejected as obvious in view of WO 03/081458 to Lira in combination with Hillis or other prior art of record. Lira discloses a method for scrolling within a column of content on a small display screen that relies on a "user-defined snap threshold" to determine whether to stay on the current column of text or move horizontally to the next column.

Apple argued that the Board had erred in its construction because rubberbanding in the ’915 patent requires sliding the content backwards in the opposite direction of the scroll. The Federal Circuit agreed. Acting as lexicographers, the inventors of the ’915 patent expressly defined rubberbanding in the specification as requiring sliding content in the opposite direction of the scroll once the scroll has been completed. As defined, rubberbanding does not cover sliding content forward at the end of the scroll, the court noted, and the examiner did not cite any evidence to support the proposition that selecting the direction of the scrolling would be within the level of ordinary skill.

The Federal Circuit vacated the Board’s rejection of claims 2, 9, and 16 and remanded them for reconsideration in light of the proper interpretation of rubberbanding.

The case is No. 2016-1402.

Attorneys: William F. Lee (Wilmer Cutler Pickering Hale and Dorr LLP) for Apple Inc. Nathan K. Kelley, U.S. Patent and Trademark Office, for Michelle K. Lee.

Companies: Apple Inc.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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