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 The examiner could have withdrawn rejections or brought up new grounds of rejection, but elected to do neither.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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Thursday, July 3, 2014

Samsung argues two Apple patents-in-suit are invalid in light of Alice v. CLS Bank decision

Two weeks after the Supreme Court of the United States handed down its opinion in Alice v. CLS Bank, Samsung has just filed a motion with the United States District Court for the Northern District of California, requesting permission to file a supplemental brief that argues two of the patents on which Apple prevailed at the recent California trial are invalid because they don't constitute technological innovation and merely represent generic computer implementations of abstract ideas. The patents Samsung is challenging on abstract subject-matter grounds are the '959 "unified search" patent and the '721 slide-to-unlock patent. Samsung has attached to its motion a copy of the brief it wishes to file (this post continues below the document):

14-07-03 Samsung's Proposed Supplemental Brief Re. Alice Opinion by Florian Mueller

Considering that the same district court allowed Apple to leverage a couple of recent Supreme Court opinions concerning fee-shifting in connection with its pursuit of a recovery of attorneys' fees from Samsung, it would seem just fair for Samsung to be allowed to make an Alice argument now, just in time before Judge Lucy Koh will decide on the parties' motions for judgment as a matter of law (JMOL) following the recent $119 million jury verdict (which was disappointing enough for Apple to request a retrial).

Samsung notes that the United States Patent and Trademark Office (USPTO) deemed the Alice decision important enough to provide related instructions to its examiners. That USPTO document does show that the Alice decision was important, but it also states that Alice "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for [patent-]eligibility of software or business methods." In my opinion the problem for patent holders is not in what the Alice decision says. It's in the fact that the Supreme Court has recently issued a number of decisions that weaken patent rights and run counter to the Federal Circuit's approach. It will take time before it's clear how much will really change. Samsung is not the first litigant to point to Alice, and countless others will do so in the years ahead.

I have formed a first and preliminary opinion on the merits of Samsung's abstract subject-matter arguments:

  • I tend to agree with Samsung as far as the '959 "unified search" patent is concerned. As Samsung notes, that patent "describes using 'heuristics' – something Apple considers simply 'good ideas' – to locate information in multiple locations". It would indeed be hard to reconcile with the spirit and the letter of the Supreme Court's Alice decision to let Apple monopolize "the abstract concept of 'some rule of thumb,' or the use of 'good ideas' or 'rules of thumb' to find information."

  • I doubt that Alice is an appropriate basis -- and it's certainly not the best basis -- for striking down the slide-to-unlock patent. Samsung argues that "moving a lock into an unlocked position" is an "abstract concept" and a "basic 'method of organizing human activity'" that is not patent-eligible in this post-Alice world. I don't think so. Unlocking a device is a reasonably technical activity to me.

    That said, the slide-to-unlock patent should be invalidated, but on the grounds of anticipation (non-novelty) or obviousness. After ten European judges determined that Apple did not deserve a patent on slide-to-unlock in light of the prior art, Judge Koh would be the first judge in the world to find this thing patentworthy if she denied the related part of Samsung's JMOL motion. Such a decision would not reflect favorably on the quality standards of the U.S. patent system.

[Update on July 4, 2014] Judge Koh has just asked Apple to respond to Samsung's motion on July 17 (with a limit of 10 pages) and given Samsung five pages for its reply brief, which will be due on July 24. For now, Judge Koh does not see a need for a hearing on this matter. [/Update]

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