Tuesday, June 4, 2013

Reexamination requested against two iPhone design patents (both found infringed by Samsung)

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:

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:

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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