Apple, Microsoft, the "iPod patent", and the facts

As a long-time Apple user (I got an Apple IIe in late November 1983, and have had an Apple-branded computer on my desk ever since) and a registered patent attorney, I always find it interesting when people discuss Apple's patents and patent applications. For the most part, people get things wrong, but I believe that mostly stems from not knowing how to properly read a patent. It seems that most people read the Abstract of the patent and then comment from there. That's the equivalent of reading the dust jacket on a mystery novel and knowing who the killer is. But that discussion is for another time.

This writing was prompted by the stunning flurry of insanely incorrect and wild conclusion-jumping articles that have been written about one of Apple's iPod patent applications. A Google news search reveals over 225 articles written on the subject. Some of the articles, such as those from AppleInsider and Macworld, even get around to talking about the application and that it's under a final rejection. Macworld and a few others also managed to get some quotes from patent attorneys.

However, those questions were apparently asked in a general sense, as not one of the articles I reviewed (not all of them) mentioned the application number.

After a 30 second online search at the U.S. Patent and Trademark Office, I found the application in question. (All of the information linked to and discussed is public information. Disclaimer: Neither I nor my firm do any legal work for either Apple Computer or Microsoft. Though I would be very happy to do so.) It is U.S. Patent Application Number 10/282,861 (U.S. Patent Application Publication Number 2004/0055446). If you are so inclined, you can review the Office Action yourself (click on "Final Rejection" dated 07-13-2005), via the USPTO's public patent application information retrieval (PAIR) system. (It is a PDF file.)

The Office Action is a final rejection of Apple's application, and the Examiner's position is that the claims are anticipated by U.S. Patent Application Publication Number 2003/0221541 to Platt. Interestingly, there is no recorded assignment of the Platt application to Microsoft that is available for public viewing.

All the verbal chaos has surrounded the fact that this is a final rejection based on a Microsoft patent. However, there has not been discussion on what that really means. So here's a short U.S. patent prosecution lesson: an application can be finally rejected when an Examiner applies the same reference(s) and/or reasoning for rejecting the claims a second time. (You can read the applicable patent practice rule if you like.) However, this does not mean that this is the end of prosecution, which can be re-opened by filing a Request for Continued Examination and paying the required fees. So for all those who think that it's the end of the world or requires some sort of royalty payment to Microsoft (which to some people may be the same thing), rest assured that this is a normal part of the patent prosecution process. It happens all the time.

If you read the attorney's Reply to the first Office Action (see Applicant Arguments or Remarks Made in an Amendment dated 04-22-2005), you will see that the arguments are kind of thin (however, without reviewing both Apple's application and the Platt reference in detail, I can't say whether that's a good thing or not). Also, a Declaration was submitted by all of the inventors (see the two Affidavits dated 04-22-2005) stating that their invention pre-dates the earliest priority date of the Platt application (which is May 30, 2002). If you look at them, you even get to see Steve Jobs' signature (if you're interested in that sort of thing).

Also interesting to note is that the Platt application was allowed. You can see it's file history to review (see the Notice of Allowance and Fees Due (PTOL-85) dated 06-27-2005 as it includes the Examiner's reasons for allowance).