Wednesday, July 16, 2014

U.S. patent examiner stands by rejection of Apple's pinch-to-zoom API patent claims

A hearing was held last week on the parties' post-judgment motions in their second California case. There wasn't any new information in the reports I read (the fact that Apple's injunction request is feature-centric is old news), so the next step there will probably be Judge Koh's ruling on those motions. While I don't know what Judge Koh indicated at the hearing, the validity of certain patents asserted by Apple continues to be a key issue (even the key issue, at least on the liability side) -- not only in the post-trial proceedings in the second case but also in the first one (on appeal).

On Tuesday, Samsung filed a notice with the United States District Court for the Northern District of California regarding recent developments in Apple's PTAB (Patent Trial and Appeals Board) appeal of an examiner's rejection (on reexamination) of the '915 pinch-to-zoom API patent, particularly its claim 8, which a Silicon Valley jury found Samsung in 2012 to have infringed and deemed valid (at least one juror later told reporters the jury didn't even look at the prior art after evaluating the first one of a dozen patents-in-suit).

The relevant rejection was communicated on a "final" basis about a year ago. Apple kept on trying to salvage the patent, but the examiner didn't change his stance. In December 2013, Apple's only remaining option was to appeal (within the USPTO, for the time being) this rejection. Meanwhile, Judge Koh has handed down an appealable final judgment in that first California Apple v. Samsung case, the parties appealed, and Samsung has already filed its opening brief with the Federal Circuit (the part concerning design patent damages -- the bulk of the billion-dollar verdict, or "$929 million verdict" after a limited damages retrial, to be precise -- has significant support in the U.S. legal community). If the Federal Circuit also held claim 8 of the '915 patent invalid, that fact alone would require a third trial in the first Apple-Samsung case (and unlike in the second one, the majority of all products would be at issue in that event).

Samsung's notice is nonjudgmental. It merely informs the court of three filings: Apple filed its appellate brief with the PTAB in February; the examiner handling the reexamination filed an answer in May; and about two weeks ago Apple filed a reply brief. The examiner could have withdrawn rejections or brought up new grounds of rejection, but elected to do neither. He stands by last year's decision (based on which the claim-in-suit is anticipated by one prior art reference and -- though one ground would be enough to render it invalid -- additionally obvious over the combination of two other prior art references) and defends it against Apple's allegations that his reasoning is flawed. The next step is going to be a PTAB hearing.

All three filings with the PTAB are attached to Samsung's notice (just in case you're interested in the details):

14-07-15 Samsung Notice Re. Developments in Apple's '915 PTAB Appeal by Florian Mueller

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