Tuesday, July 9, 2013

Samsung asks for new trial on Apple's rubber-banding patent in light of reexamination history

After 11 PM local time on Monday, Samsung started yet another attempt to, as Apple called the previous one, "delay and derail" the limited damages retrial scheduled for November in the first Apple v. Samsung litigation in the Northern District of California. Last week Samsung complained that Apple's new damages expert has arrived at "vastly greater damages" and asked the court to vacate all deadlines in the case. Apple replied on Friday (the "delay and derail" quote was from that reply). Samsung yesterday, in addition to the motion this present post is primarily about, reinforced that motion to toss the existing schedule, alleging in a reply (which it can only file with permission from the court) that Apple has "flagrantly violated" the case management order governing preparation of the limited retrial. Apple opposes that the court even allow the filing of that reply.

The new motion relates to the signature rubber-banding (or, as I like to call it, "overscroll bounce") patent, U.S. Patent No. 7,469,381 on "list scrolling and document translation, scaling, and rotation on a touch-screen display", which has won Apple several court rulings literally around the globe (most recently in Japan) and is one of the six Apple patents a jury last summer found infringed by Samsung.

A month ago the United States Patent and Trademark Office gave notice of its intent to issue a reexamination certificate confirming, among others, claim 19 of this patent, which is the only rubber-banding claim asserted in this litigation -- despite a "final" (but not truly final) Office action previously having rejected that claim. Samsung now argues that, in order to make the USPTO change mind, Apple narrowed the scope of the claim, specifically denying that it covers bounce-back implementations "in which the specific purpose or cause of the computer code that generates the snap back effect is anything other than edge alignment" (these are Samsung's words, not Apple's, and the double emphasis is in Samsung's motion) so as to set claim 19 apart from an AOL patent application (PCT Publication No. WO 03/081458 on "controlling content display") presented to the USPTO by an anonymous requester as prior art to Apple's '381 patent, where a snap-back occurs only because the invention centers an image on the screen. Samsung claims that if this narrowing of the scope of claim 19 had occurred in time for last year's trial, it would have resulted in a narrower claim construction and, as a result, a finding of non-infringement by the court or the jury.

The procedural rules allow for a new trial based on newly discovered, outcome-determinative evidence that wasn't available at the time of the first trial. This is Samsung's proposed way forward. The new '381 liability trial would have to occur before the damages retrial, which as a result wouldn't take place in November. The 2012 jury found 18 Samsung products to infringe the '381 patent, 12 of which would be among the 13 products with respect to which the court intends to have another jury redetermine damages in November. A footnote makes clear that Samsung would also want damages vacated with respect to those 6 products which were found to infringe the '381 patent but with respect to which the damages were deemed final by the district court.

It gets more complicated. Samsung's motion also proposes an alternative avenue: a (partial) final judgment relating to the '381 patent. Samsung already wanted a partial final judgment on all those products with respect to which the court didn't vacate the jury's damages award. Samsung wanted to then appeal that partial final judgment to the Federal Circuit and said the district court should hold a damages retrial only when it has the benefit of all the guidance the Federal Circuit would provide on appeal. Apple said that such a partial final judgment would, under the circumstances of this case, likely not be appealable, with an appeal only causing unproductive delay. The court agreed and denied Samsung's request. Now Samsung wants, in the alternative to a new trial, a final judgment on liability for the '381 patent. Samsung would appeal this judgment, and obviously it wants the proceedings in California stayed while the '381 issues are on appeal.

What I support philosophically is Samsung's demand that there be consistency between a patentee's proposed claim construction in an infringement proceeding and the positions it takes in prosecution (in this case, reexamination). I've always considered this important, and I'm often frustrated to see how the German bifurcation regime, coupled with limited regard for prosecution history, makes it all too easy for patent holders to win infringement rulings based on broad claim constructions and to defend their patents (typically later) the validity of their patents-in-suit in separate nullity proceedings.

Also, I couldn't find anything unreasonable in Samsung's argument. This is absolutely not a frivolous motion as far as I can tell. Samsung is right to give this a try.

But even before Apple has responded, I can see some potential reasons for which the court might deny the motion, and Apple will probably see some others (alternatively or additionally to mine).

The first thing I noticed is that an expert who submitted a declaration in support of Samsung's motion uses very broad terms to describe Apple's argument in reexamination. Apple's statement to the (re)examiner was that the AOL (the last name of the inventor is Lira) invention results in a bounce-back "through the use of executable program instructions having a different stop condition based on centering of the column". Samsung now interprets the words "based on centering of the column" to mean a different "purpose or cause". A narrower reading of Apple's statement would have to focus on "different stop condition" (for the animation algorithm), meaning that if accused technologies have a stop condition consistent with the '381 patent, they infringe.

The second potential issue is that there are actually three different kinds of '381 patent infringement at issue in this case. A centering occurs in the photo gallery and the Android Browser. But it doesn't in the Contacts application, which aligns the contact list with the edge of the screen. From an end user's perspective I actually consider the bounce-back effect far more important with respect to vertical lists than galleries and web pages. And there's no centering there. Samsung's argument is just that Apple failed to point to the relevant source code at last year's trial, which doesn't appear a very strong point to me. I think it will be much harder for Samsung to attack the contact list bounce-back. One infringement is enough to result in a liability finding. But the extent of an infringement can affect the amount of damages awarded.

As for the fall-back proposal to render a (partial) final judgment with respect to the '381 patent, this would result in (which Apple already criticized a few months ago in the aforementioned context of multi-product final judgment) piecemeal appeals to the Federal Circuit. Apple's appeal of the court's denial of a permanent injunction has been fully briefed, and a hearing will likely be held in a few months. Then there would be, according to Samsung's fall-back proposal, a rubber-banding liability appeal. And later an appeal of whatever else is in the case. Samsung points to the Federal Circuit's recent Bosch v. Pylon opinion, which generally considers it good practice to have liability issues appealed before costly damages trials and which, even though (as Samsung admits) the cases are differently-structured, indicates that the Federal Circuit is glad to help prior to damages determinations. But Bosch v. Pylon doesn't propose that in a multi-patent case liability for a single patent be appealed before another liability appeal involving multiple other patents-in-suit.

A modified liability determination for the '381 patent would force the court to vacate large parts of last year's damages verdict. And an appeal would stall the district court proceedings for a year or more. That's what Samsung wants, but again, I support a call for consistent claim constructions, except that I'm not yet convinced of Samsung's claim of inconsistency, for the reasons I just outlined.

Finally, here's the full text of this motion:

13-07-08 Samsung Motion for New Trial or Final Judgment on '381 Patent

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