Friday, December 21, 2012

Reexamination requested against another Apple patent Samsung was found to infringe

The United States Patent and Trademark Office (USPTO) has already issued first Office actions concerning three Apple patents that are being asserted against Samsung in district court and at the ITC (in chronological order, the rubber-banding '381 patent, the "Steve Jobs" '949 touchscreen heuristics patent, and the pinch-to-zoom API patent). But those are far from the only Apple patents-in-suit that Samsung, Google (Motorola) and possibly companies fearing future enforcement actions from Apple would like to get invalidated.

Three days ago, the USPTO received an anonymous ex parte reexamination request against five claims of the U.S. (Reissue) Patent No. RE41,922 on a "method and apparatus for providing translucent images on a computer display". The targeted claims -- 29, 30, and 33-35 -- are exactly the ones that an ITC judge recently found Samsung to infringe (that same preliminary ruling, which the ITC staff supports, also held Samsung to infringe the "Steve Jobs" patent, a hardware patent, and a design patent).

Apple also attempted to assert the RE'922 patent against HTC in Delaware. The court denied Apple the right to bring out-of-time infringement counterclaims to an action HTC had started in the summer of 2011, and meanwhile Apple and HTC have settled.

Given that only Samsung is presently being targeted by this patent (though Google's Motorola Mobility also has a reasonable apprehension that it could face an infringement allegation anytime), and in light of the fact that precisely the claims at issue at the ITC are targeted by the reexamination request, it's most likely that Samsung is behind this anonymous filing.

The hurdle for an ex parte request (in ex parte reexaminations, there is only an initial and rather limited participation by the requester in the proceedings, while inter partes reexaminations are closer to litigation between two parties) is that it must raise a substantial new question for patentability. This has been the requirement for some time and wasn't changed under the 2011 America Invents Act (which raised the bar only for inter partes requests to that of a reasonable likelihood of success).

In order to meet this hurdle, the reexamination request points the USPTO to five prior art references it didn't previously consider. Each of those is claimed to render claims 29, 33 and 34 of the challenged patent invalid on its own. In addition, each of those five references is claimed to render claims 30 and 35 obvious if the respective new prior art reference is combined with certain prior art the patent office has previously considered in connection with this patent's complex prosecution history.

These are the five new prior art references:

  1. U.S. Patent No. 5,581,243 on a "method and apparatus for displaying simulated keyboards on touch-sensitive displays" (first named inventor: Daniel Ouellette; application filed in June 1990)

  2. Japanese Patent Publication No. H3-288891 (last name of first named inventor: Matsuo; published in December 1991)

  3. U.S. Patent No. 5,651,107 on a "method and apparatus for presenting information in a display system using transparent windows" (first named inventor: Edward H. Frank; assigned to Sun Microsystems; filed in December 1992)

  4. Japanese Patent Publication No. H2-114319 (last name of first named inventor: Negishi; published in April 1990)

  5. U.S. Patent No. 5,283,560 on a "computer system and method for displaying images with superimposed partially transparent menus" (first named inventor: Joel F. Bartlett; assigned to Digital Equipment Corporation; filed in June 1991)

Next year we'll see if this request for reexamination is granted. It's not the most famous Apple patent because its functionality is not associated with a particular iPhone feature, but the fact that an initial determination by an ITC judge found Samsung to infringe it lends it some significance.

By the way, here's a new Bloomberg article on the question of how much of a bearing multi-year reexaminations have on ongoing infringement proceedings. One of the attorneys quoted in the article is Scott Daniels of Westerman Hattori Daniels & Adrian, an experienced patent litigator and reexamination expert and the author of the Reexamination Alert blog.

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