The WHDA US PTO Litigation Alert blog reports on the latest filings of reexamination requests with the United States Patent and Trademark Office (USPTO), and two of them involve hardware patents Apple has previously asserted in court against Samsung, Google's Motorola Mobility, and HTC. The anonymous requester might be Google's Motorola Mobility, but even though Samsung does not currently have to defend itself against those patents because Apple did not choose them for last year's trial, it may very well be involved with a pre-emptive strike, given that Apple reserved the right to reassert those patents.
In June 2011, Apple amended its April 2011 federal lawsuit against Samsung in California, and the two now-challenged patents were among the three patents Apple added to that litigation on this occasion. Judge Lucy Koh required the parties to narrow their cases in time for the August 2012 trial. Apple focused on design patents and multitouch software patents covering features easily explained to a jury. It dropped the more complicated patents-in-suit, including these hardware patents. In May 2012 Apple listed the '129 patent among patents it offered to withdraw. In July 2012 it also dropped the '607 patent. But these withdrawals were without prejudice, meaning that Apple can reassert them in other litigations. Samsung would have preferred for all withdrawals to be with prejudice, but the court agreed with Apple.
14 patents, including the two that have just been challenged, were withdrawn without prejudice by Apple and Samsung from the first California case, and have not been reasserted since. Apple suggested a bench trial at which the only remedy it would request is injunctive relief. In the current landscape an injunction request would most likely be denied even if Apple prevailed on liability, absent a granular showing of a "causal nexus" between the alleged infringements and the alleged irreparable harm. This might change when a ruling comes down after this Friday's appellate hearing before the Federal Circuit.
The same appeals court will issue a ruling anytime now that involves the '607 patent. In March 2012 the ITC had dismissed Apple's three-patent complaint against Motorola Mobility. The '607 patent was found invalid in light of prior art. Apple appealed that ruling, and the Federal Circuit held a related hearing in March 2013, so an appellate ruling could come down very soon.
Apple also asserted the Australian equivalent of the '607 patent. It won a preliminary injunction, which got lifted shortly thereafter. The related analysis was far from a definitive finding on validity or infringement. It was just probabilistic.
Apple's July 2011 assertion of the '129 patent against HTC in Delaware never came to judgment because the parties settled before anything significant happened in court.
Other reexaminations and reexamination requests involving Apple patents-in-suit
These two patents are just the latest Apple patents to have given rise to reexamination requests:
In late July 2013 the USPTO issued a final (but not really final) rejection of all claims of Apple's pinch-to-zoom API patent asserted in the first Apple v. Samsung litigation in California.
In June 2013 the USPTO affirmed certain key claims of the rubber-banding (overscroll bounce) patent asserted in the first Apple v. Samsung litigation in California. (Apple and Samsung are debating in California whether the scope of the patent got narrowed due to what Apple told the patent examiner in the reexamination process.)
Also in June 2013, anonymous reexamination requests against two Apple iPhone design patents asserted against Samsung (one in California, one at the ITC) as well as against two software patents at issue in the second Apple v. Samsung litigation in California became discoverable.
In May 2013 the USPTO issued a non-final (and not-to-be-overrated) rejection of key claims of Apple's translucent images patent asserted against Samsung at the ITC.
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