Friday, April 18, 2014

Apple's counsel stresses USPTO's independence -- but the USPTO doubts the autocomplete patent

The Apple v. Samsung II trial continues today with Samsung's challenges to Apple's asserted patents. In this context, Apple's counsel attacked the credibility of a Samsung expert witness, as journalists including MLex' Mike Swift (on Twitter) reported, by pointing out that he was paid $220,000 for Samsung for his work (by comparison, one of Apple's two damages experts made ten times that amount) unlike the examiners of the United States Patent and Trademark Office (USPTO).

While it's obvious that either party's experts take their client's position, one doesn't have to be paid by Samsung to doubt the validity of Apple's patents.

None of the ten European judges who deemed slide-to-unlock invalid was on Samsung's payroll (a certain retired UK judge was not involved with that case). Not one judge has so far considered this patent valid, other than Judge Koh, of course.

And Morrison & Foerster's Harold McElhinny (whose Apple v. Samsung trial track record is impressive) obviously didn't tell the jury that the vaunted, neutral USPTO is having second thoughts that may very well result in the invalidation of claim 8 of the '172 autocomplete patent -- the claim Apple is asserting in this trial and which Judge Koh found (on summary judgment) to have been infringed. In this trial, invalidity is Samsung's only defense to the autocomplete patent. Samsung has credible invalidity challenges to all five Apple patents-in-suit, but in the case of the autocomplete patent it is a fact that the USPTO found an anonymous requester (almost certainly Samsung, Google, or both) had raised a substantial new question for patentability.

Substantial new question for patentability -- that's exactly why the jury should ignore Mr. McElhinny's comment about the independence of the USPTO's examiners. No one would question the independence of the examiners anyway. But they can only decide based on the prior art available to them when they make their original decision. If other prior art is presented later and is considered to raise a substantial new question for patentability, the issue is not whether the original decision to grant the patent was made independently because it was made on the basis of incomplete knowledge -- and the same independent USPTO has found that it needs to take another very close look.

Here's the procedural history of this reexamination. In June 2013, anonymous reexamination requests (again, I can't imagine that Samsung and/or Google would not be behind this) against two Apple patents including U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations" became discoverable. On August 1, 2013, the USPTO issued an order to reexamine most claims of this patent (including the claim asserted against Samsung), but on August 19, a "revised" order came down and ordered reexamination only of claims 21-38. A month later, the anonymous requester petitioned for a decision by the Director of the USPTO to overrule the examiner and order reeamination of the other challenged claims. On January 13, 2014, the Director granted the request in (large) part, particularly also with respect to claim 8, the one at issue in the ongoing California trial. On March 21, more than two months after the director's decision, Apple asked the USPTO to vacate the (large) parts of the director's decision adverse to Apple's interests. The anonymous requester responded two weeks ago (on April 4) and argued that Apple's petition was filed out of time (there's a non-extendible two-month deadline and Apple filed about a week after that deadline) and, in any event, lacked merit. The USPTO has not yet decided, but I guess it will affirm the Director's decision, which means that Apple's asserted claim of the autocomplete patent remains under reexamination pressure.

Here's the January 2014 USPTO decision, which explains why the patent office now doubts the validity of (among others) claim 8:

14-01-13 Apple '172 Autocomplete Reexamination Decision by Florian Mueller

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