Wednesday, August 21, 2013

Two iPhone design patents Apple asserted against Samsung are now being reexamined by the USPTO

Today there will be a key hearing, styled as a "case management conference", before Judge Lucy Koh, relating to the first of two Apple v. Samsung lawsuits pending in her district. Samsung's objective is to persuade the court of three different theories based on which it believes a limited damages retrial can't be held in November. One of those attack vectors is that Samsung claims Apple is seeking "vastly greater damages". The other two attack vectors relate to reexaminations of two patents-in-suit.

Meanwhile the United States Patent and Trademark Office (USPTO) has decided to reexamine another patent found infringed by Samsung at last year's trial, as well as a patent Apple asserted against Samsung at the ITC (unsuccessfully so, but it could still pursue this assertion on appeal). In June I picked up the WHDA US PTO Litigation Alert blog's report on the anonymous reexamination requests against two iPhone design patents, both of which have been granted this month. But no first Office actions rejecting the patents were issued simultaneously with the notices of the determinations to reexamine. As I explained in a post last week on a USPTO determination to reexamine a word recommendation patent asserted by Apple in the second California litigation with Samsung, the hurdle for getting reexamination started is low -- so low that a former Chief Judge of the Federal Circuit said any patent lawyer "worth his salt" can raise a substantial new question of patentability. The hurdle for a first Office action rejecting the challenged claims isn't much higher, but there is a difference.

The challenged design patents -- D618,677 is the one from the California case, D618,678 the one asserted in Apple's ITC complaint -- are very similar, and so are the substantial new questions of patentability affecting these patents. In fact, the USPTO points to the same three Japanese design patents as prior art references that were not considered during the original examination but over the combination of which the anonymous requester (almost certainly Samsung) deems Apple's D'677 and D'678 patents obvious: JP D1241638, JP D120442, and JP D1009317.

Samsung has repeatedly issued public statements according to which Apple has been or is suing it over rectangles with rounded corners, which is simply not true. Most recently Samsung said so in its reaction to this month's ITC ruling. If this were true, it would be child's play to invalidate these design patents. It wouldn't even require an obviousness theory: rectangles with rounded corners were not even novel when Apple filed for these design patents. But the anonymous requester's (again, that's most likely Samsung) obviousness theories, which the USPTO is now taking a closer look at, put the lie to the "rectangles with rounded corners" propaganda. According to the USPTO notice, "[e]ach of the three [Japanese prior art] references include a rectangular front face having a reactangular screen, a border space around the screen, and an oblong shaped speaker opening above the screen". When claiming that Apple asserts a monopoly over rectangles with rounded corners, Samsung doesn't even mention the speaker opening, which is however one of various elements of the relevant design patents -- and design patents are only infringed if all of their limitations (elements) are infringed. The anonymous reexamination request is not based merely on those common elements of all three references, but on three different combinations: each prior art reference serves as a primary reference and is then combined with one or two other references.

Reexamination of the patent from the ITC case was ordered on August 15 (last week's Thursday). The decision to reexamine the patent from the California case was made on Monday (August 19). Apple now gets to defend these design patents.

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