The WHDA law firm's US PTO Litigation Alert blog, authored by WHDA partner and experienced patent litigator Scott Daniels, reports today that anonymous ex parte reexamination requests have been filed against two Apple design patents:
U.S. Design Patent No. 618,678, which Administrative Law Judge Thomas B. Pender of the ITC found infringed by Samsung in an initial determination he made last October, a preliminary ruling that is now undergoing a thorough Commission review before a final ruling (currently scheduled for August 1 and appealable to the Federal Circuit) will issue.
Strategically, the D'677 is more important because most of the damages awarded in the federal litigation in the Northern District of California relate to design patents. Samsung will design around either one going forward, so the impact of injunctive relief doesn't matter much (in that regard, Apple's software patents-in-suit in both cases are more important). Judge Lucy Koh declined to overrule the jury on its design patent infringement findings because its decision was reasonable and not against the evidence, though she felt it was a close call. She also ruled against Samsung's request to declare this design patent invalid. A retrial of limited scope (it will only be about redetermining damages for 13 of the accused products) will be held in November. Thereafter, a final district court ruling will issue, which Samsung can then appeal to the Federal Circuit.
The reexamination requests discovered by WHDA's Scott Daniels are anonymous, but it's unlikely that anyone other than Samsung is behind them. Preliminary reexamination decisions concerning three other patents Apple is asserting against Samsung have been favorable to the defendant:
About two months ago the USPTO issued a "final" (but not "final-final") Office action rejecting all but three claims of the '381 rubber-banding patent. The rejected claims include the one at issue in the California case.
A first Office action concerning another California patent-in-suit, the '915 pinch-to-zoom API patent, tentatively rejected all claims. While not as important in terms of damages as the design patents-in-suit, this patent is the most valuable one of the multitouch software patents asserted in California.
In a formal sense it takes years (if a patent holder exhausts all appeals) before reexamination results in actual, definitive invalidation, as Apple recently pointed out. And the standard for an invalidity defense in an infringement case or ITC investigation is higher (clear and convincing evidence) than in reexamination (preponderance of the evidence). Nevertheless preliminary reexamination results (except perhaps first Office actions, which courts don't take too seriously) have persuasive impact on infringement cases -- not only in terms of whether the infringement court finds a patent invalid but also with a view to a stay (federal courts have more discretion in that regard).
With respect to Apple's design patent assertions against Samsung let me also mention quickly that the Hoge Raad (Supreme Court of the Netherlands) affirmed (appellate opinion in Dutch) in all respects except for litigation expenses a district court ruling that did not find Samsung's Galaxy Tab 10.1 to infringe an Apple Community design (the EU equivalent of a U.S. design patent).
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