Friday, May 10, 2013

U.S. patent office tentatively rejects key claims of Apple's translucent images patent

Samsung has notified the United States International Trade Commission (USITC, or just ITC), a trade agency with quasi-judicial powers, of a first Office action by the United States Patent and Trademark Office granting an anonymous request for reexamination of Apple's United States Patent No. RE41,922 on a "method and apparatus for providing translucent images on a computer display" and rejecting, on a tentative basis, its claims 29-30 and 33-35. These are all the claims the reexamination request related to, and the ones that an Administrative Law Judge found infringed by Samsung's Android-based devices.

Here's the passage of the USPTO communication that summarizes the tentative rejections and the reasons for them (click on the image to enlarge or read the text below the image):


1. Claims 29, 33, and 34 of the '922 Reissue Patent are rejected under 35 U.S.C. § 102(e) as anticipated by Ouellette. (See Request pp. 16-18 & 28-38, incorporated by reference.) The rejection proposed in the Request is adopted.

2. Claims 30 and 35 of the '922 Reissue Patent are rejected under 35 U.S.C. § 103(a) as obvious over Ouellette in view of APA. (See Request pp. 16-18 & 28-38, incorporated by reference.) The rejection proposed in the Request is adopted.

"Ouellette" is U.S. Patent No, 5,581,243 on a "method and apparatus for displaying simulated keyboards on touch-sensitive displays". "APA" means "admitted prior art" (prior art that Apple listed in its own patent application). It's worth noting that Samsung presented several other prior art references besides Ouellette that weren't considered during the original examination process, but since the examiner felt that Ouellette (on its own with respect to three claims and in combination with admitted prior art concerning two claims) renders the challenged claims invalid, the other invalidity theories haven't been reached (yet). Formally, they are "held in abeyance". If Apple overcomes Ouellette, then it may still have to address those.

Samsung hopes that this early-stage progress in the RE'922 reexamination will influence the ITC's final ruling on Apple's complaint against Samsung, which is currently scheduled for August 1, 2013. First Office actions generally don't bear formal weight with courts and the ITC, but they can nevertheless have a certain psychological effect.

In a preliminary ruling in October 2012, Judge Thomas B. Pender held Samsung to infringe four Apple patents: one design patents and three utility (technical) patents, including this one. He also cleared workarounds for the utility patents, but those workarounds may very well come with degradations of the user experience. The Commission, the six-member decision-making body at the top of the agency, determined in January that Judge Pender's preliminary ruling would be reviewed in its entirety, but prior to this effort, there was a limited remand concerning a couple of issues. One of those remand issues gave Judge Pender the opportunity to correct a minor oversight and adding two claims (claims 34 and 35) to the list of infringed claims of the RE'922 patent. In his remand initial determination (remand ID), which Samsung also wants to be reviewed, he determined that Android's text selection feature infringes those claims. The Commission will decide later this month whether to review the remand ID. Again, the original ID will be reviewed in its entirety anyway.

In this ITC investigation Apple also asserted claims 31 and 32, but the ALJ didn't find those infringed, and the anonymous requester (most likely Samsung, though it could also be Google, or both of them together) didn't even target those claims in the petition filed late last year (after the initial determination).

This is one of four U.S. patents Samsung has been found to infringe that the U.S. patent office may invalidate, in whole or in part, in ongoing reexaminations. The famous "Steve Jobs patent" has been tentatively rejected and is another one of the patents the ITC judge held infringed. Furthermore, a couple of Apple patents asserted against Samsung in the first California case -- the rubber-banding '381 and pinch-to-zoom API '915 patent -- have had a rough ride. A final Office action (not really "final" as proceedings can be reopened and, in any event, a couple of appeals are possible) affirmed three of the rubber-banding claims but not the one the district court found infringed by Samsung. The process for the pinch-to-zoom API patent is at an earlier stage. With respect to the California trial patents, Apple told the court that these won't be invalidated until mid-2017 or later, if ever. In my post on that filing I published a chart with which Apple showed how many steps and how much time it takes for reexamination to result in truly definitive invalidation of patent claims. The process for the RE'922 patent has just begun, so it probably won't be definitively invalid until early 2018 or later. The patent office can always change mind. For example, the three rubber-banding claims it decided to affirm were also tentatively rejected at the stage of a first Office action. There are many reexaminers who reject in their first Office actions 100% of the claims of which they grant reexamination so as to require the patentee to defend his claims.

The hurdle for finding a patent claim invalid in a U.S. infringement case (in district court as well as before the ITC) is higher than in reexamination. The standard applied by the USPTO is preponderance of the evidence, while clear and convincing evidence is required in infringement cases.

Samsung is also challenging Apple's German patents-in-suit. Last month it won, together with Google's Motorola Mobility, a nullity (invalidity) determination by the Bundespatentgericht (Federal Patent Court). In Europe, Apple has also shot down several Samsung patents. It won a declaratory judgment in the UK invalidating three Samsung declared-essential 3G (UMTS) patents and (also last month) defeated a Samsung patent at Germany's Federal Patent Court.

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