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December 2013: German Federal Patent Court Invalidates One of Apple’s Rubber Band Patents

December 2013

The firm obtained a victory for Motorola in the German nullity proceedings against a member of Apple’s rubber band patent family (EP 2 059 868, “Portable Electronic Device for Photo Management”) before the German Federal Patent Court. The patent relates to the bounce back functionality that is used in various smart phone applications such as photo gallery. Apple had sued most of the Android manufacturers based on this patent in Germany.

The firm successfully argued that the patent could not claim all seven priorities specified in the patent, making a video-documented presentation of Apple’s co-founder Steve Jobs with the original iPhone in 2007 (Keynote Macworld, SF), which had been identified and submitted by the QE team as prior art. Unlike US patent law, neither the European Patent Convention (EPC) nor German patent law provide for a grace period to cure the consequences of an inconsiderate publication or public use of the invention by the patent applicant or inventor before the actual patent application. Paving the way for a solid argument on inventive step (obviousness) based on the iPhone presentation, the Court nullified the patent in its entirety (decision appealable).

The firm represents Motorola not only in the nullity action, but also in the respective infringement proceedings. (Germany has a bifurcated system and the infringement court must not decide on the validity of an asserted patent.) Based on the revocation of the patent in suit, the infringement court has to consider a stay of the proceedings pending a final nullity decision.