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Samsung Asks For New Trial on Apple's '381 Patent - New Evidence Has Been Discovered ~pj - Updated 4Xs
Tuesday, July 09 2013 @ 05:47 PM EDT

Samsung has just filed a motion for a new trial on liability in Apple v. Samsung with respect to Apple's '381 patent. That's the bounce back patent, which was used by Apple in the first trial in California, and the jury ruled that Samsung infringed that patent with 18 products. As you know, the two companies are currently in the pre-retrial motion stage leading up to a retrial on the question of damages only, scheduled to begin in November.

Meanwhile, the reexamination process continued at the USPTO, with Apple getting them to overrule their earlier final determination that claim 19 of the '381 patent, the claim at issue in this litigation, was not valid due to prior art. And here comes Samsung with the incredible news that it just learned on June 12th that during the most recent phase of the reexamination process at the USPTO, Apple narrowed its patent so much to get it to survive the process that Samsung's products no longer infringe (which Samsung never thought they did anyhow):

The eighteen products at issue in this motion are all products for which the jury found infringement of the '381 patent and awarded damages. The Court ordered a new trial on damages as to all of the products at issue in this motion except the Fascinate, Galaxy S 4G, Galaxy S II (AT&T), Galaxy Tab 10.1(WiFi), Mesmerize and Vibrant. Dkt. 2271. This motion is based on "newly discovered evidence" because Samsung learned from PTO records made publicly available on June 12, 2013, that Apple had successfully advocated a new claim construction of the only asserted claim – Claim 19 – and significantly narrowed its scope in connection with reexamination proceedings before the PTO to avoid having this claim rejected due to the Lira reference. Under this claim construction, the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Prevail, Galaxy S 4G, Galaxy S II (AT&T), Galaxy Tab, Galaxy Tab 10.1 (WiFi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Replenish and Vibrant cannot possibly infringe Claim 19 of the '381 patent.
Wow. Why would Samsung have to find this in papers filed with the USPTO instead of from Apple just telling them? In any case, Samsung argues newly discovered evidence. The Lira patent is the prior art that caused the USPTO to reject claim 19 earlier.

Jump To Comments

Update, Update 2
Update 3, Update 4]

If you recall, the judge refused to order a delay in the retrial when Samsung asked that it wait until all the reexaminations are finished, but she said that if the USPTO were to finalize a ruling of invalidity by not reopening the reexamination process on Apple's efforts, Samsung could then ask for a delay of the trial:

Samsung may renew its motion for a stay of the new trial on damages as to the ’381 patent if the USPTO does not re-open the prosecution of the ’381 reexamination following Apple’s response to the final office action finding claim 19 of the ’381 patent invalid. Any such motion, and any opposition to such motion, may not exceed three (3) pages in length. The parties shall contact Ms. Parker Brown for a hearing date. The response to any such motion is due ten days after the filing of a motion.
This event isn't a perfect fit, but what can the judge do now? If they don't infringe, it makes no sense to have a trial for damages. And you can always ask for a retrial based on newly discovered evidence. So, Samsung suggests a delay to work out the kinks.

Samsung's alternative remedy is this:

Alternatively, Samsung hereby moves the Court for an order entering judgment on liability as to Apple’s claims and Samsung’s counterclaims, and for an order staying the remainder of this case pending resolution of appeal(s) of that judgment pursuant to 28 U.S.C. § 1292(c)(2). This alternative request is brought on the grounds that in the event the Court does not permit further adjudication of liability, judgment should be entered as to liability so that the parties may take immediate appeal(s) to the U.S. Court of Appeals for the Federal Circuit.
As you know, if you follow our News Picks, there was a ruling just the other day that, as long as it happens prior to a final judgment, a USPTO reexamination decision trumps anything that the courts might do or even what they already did. That's why all this matters so much to both.

Unfortunately, some of the supporting evidence is being filed under seal, or more precisely Samsung is asking that it be, so at the moment there is no way to know to what degree this is all exactly as Samsung tells it, or even if the judge will care. She can be a bit grumpy about reexaminations. In a speech recently, she ranted about it: "What is so special about patent law?" she fumed. "Why do you all get 5 billion do-overs?" So who knows? But the answer to her question is fairly obvious: because millions are at stake, and no one should have to pay damages on a patent that is invalid. She should care a bit more about justice than speed. And why are patents different? Because the USPTO has issued invalid patents, a lot of them, but the law presumes that they are valid, and people who are innocent are getting hurt right and left. It's so bad, the President of the United States, has said the economy is being damaged. That's what's so special about patent law. It's become toxic.

Here's the snarky notice [PDF] Apple filed with the court telling the court that the '381 patent's claim 19 had survived after all, and attached as an exhibit [PDF] is the USPTO paperwork detailing the phone calls between Apple and the USPTO in May.

In *May*.

Update: Here's Samsung's Preliminary Statement and Statement of Facts, the sections where Samsung explains its position and details what happened at the USPTO leading to Samsung's conclusion that its products no longer infringe under the narrowed claim construction Apple offered in the reexamination:

Preliminary Statement

At the trial in this action, Apple persuaded the jury that certain Samsung products infringed the '381 patent using a broad reading of Claim 19 of that patent. But, to avoid having the claim cancelled as invalid due to the Lira reference during subsequent reexamination proceedings initiated by a third party, Apple advocated an entirely new and far narrower interpretation of Claim 19. Based on the narrowed interpretation advanced by Apple during an oral interview with the Examiner in a desperate bid to save that claim, the Examiner changed his prior final rejection and confirmed Claim 19. Samsung is entitled to a new trial on liability under Rule 59 based on these developments because there is "newly discovered evidence" that would have resulted in a finding of non-infringement with respect to the '381 patent. The requested new trial on liability would include all products for which the jury found infringement of the '381 and awarded damages, regardless whether the Court ordered a new trial on damages for the product or let the damages award stand. This includes the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Prevail, Galaxy S 4G, Galaxy S II (AT&T), Galaxy Tab, Galaxy Tab 10.1 (WiFi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Replenish and Vibrant ("New Trial Products").

Each of the three requirements for a new trial under Rule 59 based on newly discovered evidence is satisfied. First, developments during a reexamination proceeding constitute "newly discovered evidence" as that term has been defined in the case law. Second, the exercise of diligence would not have resulted in this evidence being discovered earlier. Indeed, Samsung could not have predicted that Apple would change course and successfully proffer an entirely different interpretation of its claims during reexamination to avoid having its patent invalidated based on the Lira reference. Samsung diligently monitored the reexamination and discovered that Apple successfully proposed an entirely different claim interpretation to the PTO immediately after this information became available – on June 12, 2013.

Third, if evidence from the reexamination had been available by the time of trial, it would have resulted in a new claim construction and Samsung would have defeated Apple's claim of infringement. If Apple’s position from reexamination is taken into account, Claim 19 now

3

requires that the visual effect of edge alignment be present and the specific purpose or cause of the computer instructions performing the snap back be to perform edge alignment. For example, if edge alignment occurs due to computer instructions that cause centering of an electronic document, as in Lira, Claim 19 is not infringed. As stated in the declaration of Samsung's expert, Andries van Dam, Ph.D., under this new construction, the Court or jury would have necessarily found that the New Trial Products do not infringe the '381 patent.

In the event the Court declines to order a new trial, it should enter judgment on liability as to all of Apple’s claims and Samsung’s counterclaims in light of the Federal Circuit’s recent en banc decision Robert Bosch, LLC v. Pylon Manufacturing Corp., __ F.3d __, 2013 WL 2664281 (Fed. Cir. June 14, 2013), which held that that 28 U.S.C. § 1292(c)(2) provides appellate jurisdiction over a judgment in a patent case entered only on liability. Were the Court to enter such a judgment, it also should stay further proceedings in this case since a decision by the Federal Circuit may materially affect the necessity for and scope and contours of the partial new trial that the Court has ordered.

Statement of Facts

The Verdict. Apple accused each of the New Trial Products of infringing the '381 patent and based its infringement case on some combination of the Browser, Gallery and Contacts applications on each accused phone.1 Based on the evidence presented at trial, on August 24, 2012, the jury found that the New Trial Products infringed the '381 patent and awarded damages for each of the New Trial Products.2

The Reexamination. An anonymous third-party filed a reexamination request for the '381 patent on May 23, 2012.3 On October 13, 2012, the PTO issued a first office action rejecting

4

Claim 19, the only claim at issue in this action, as anticipated by the Lira reference.4 On March 29, 2013, the Examiner issued a final office action rejecting Claim 19 of the ’381 patent over the Lira reference.5 On April 29, 2013, this Court informed Apple that if the PTO confirmed its rejection, the Court would likely stay the new damages trial as to the ‘381 Patent pending PTO appeals.6

Apple's Statements to the Examiner Limiting Claim 19. In response to the final office action and the news regarding a likely stay of the trial on ‘381 patent, Apple presented a brand new interpretation of Claim 19 to the PTO during two interviews, on May 9 and May 13, 2013, and in a supplemental response filed May 13, 2013.7 As reflected in the Notice of Intent to Issue Ex Parte Reexamination Certificate, Apple proffered its new construction in response to the Examiner's probing questions about the Lira reference:

The Patent Owner's Representatives noted that claim 19, specifically teaches "instructions for" translating "until the area beyond the edge of the electronic document is no longer displayed," where the Office asked for further clarification as to whether there is support for actual coded instructions that effect this process, and noted that if there where [sic] this would be a good area to focus. The Office noted that though corrective traversal in Lira appears to stop when the area beyond the edge of the document is no longer displayed, it is not specifically responsive to instructions requiring said stop condition (area beyond the edge of the electronic document is no longer displayed) but rather a result of instructions to center (same effect, different cause).8
In its supplemental response to the PTO, Apple conceded that Lira “achieves the visual result” called for by Claim 19, but argued that it still did not invalidate Claim 19 because the computer instructions that caused the snap back function to occur had the purpose of causing the web page to “center” on the screen rather than explicitly seeking to perform edge alignment.9

5

Under the header “STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION,” the Examiner explained:

The '381 Patent Specification defines these "instructions" as
(from column 3, lines 33-37) (paragraph [0012]):

"The one or more programs further include instructions for translating the document in a second direction until the area beyond the edge of the document is no longer displayed, after the object is no longer detected on or near the touch screen display."

** *

In the supplemental response filed 5/13/2013, Patent Owner concedes that:

"While Lira's snap-to-column function incidentally achieves the visual result of translating in the second direction "until the area beyond the edge of the electronic document is no longer displayed" (only when the width of the column corresponds to the width of the display), Lira's function clearly does so through the use of executable program instructions having a different stop condition based on centering of the column." (see page 7).10

The Examiner then confirmed Claim 19, finding that Lira was not invalidating prior art:
In summary, Claim 19 is Confirmed, as there is no prior art disclosure of a similar device with "programs including . . . instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in response to detecting that the object is no longer on or near the touch screen display."11
Through its statements during reexamination, Apple disclaimed all subject matter with respect to Claim 19 in which the specific purpose or cause of the computer code that generates the snap back effect is anything other than edge alignment.12 Edge alignment occurs when the area beyond the edge of a document is shown visually, but then the edge alignment code causes that area beyond the edge to disappear so that the edge of the electronic document aligns to the

6

edge of the screen or window.13 In other words, Apple argued to the PTO that the purpose or cause of the snap back in claim 19 must be edge alignment.14

At Trial, Apple Did Not Present Evidence of Infringement Under the Construction
of Claim 19 it Presented to the PTO.
In order to infringe under the construction argued by Apple and accepted by the PTO, both the visual effect of edge alignment must be present and the specific purpose or cause of the computer instructions performing the snap back must be to perform edge alignment.15 By way of example, Claim 19 does not cover subject matter where the visual effect – incidentally or otherwise – is edge alignment if the cause or purpose of the code was something other than edge alignment.16 If edge alignment occurs due to computer instructions that cause centering of an electronic document, as in Lira, Claim 19 is not infringed.17 But Apple’s expert, Dr. Ravin Balakrishnan, did not present evidence regarding the purpose of any code during his trial testimony, did not analyze any code at all for the Contacts application and did not seek to prove infringement by the Browser, Gallery or Contacts applications under this construction.18 A review of the evidence Dr. Balakrishnan presented at trial by Samsung's expert, Andries van Dam, Ph.D., reveals that the New Trial Products do not infringe Claim 19 of the '381 patent under the interpretation Apple presented to the PTO.19

__________
1 Dkt. 1931; Trial Tr. at 1751:15-1755:5 (Declaration of Robert J. Becher, dated June 26, 2013 ("Becher Decl."), Exh. 1). A chart reflecting which applications Apple accused for each New Trial Product is attached as Exhibit 2 to the Becher Declaration. Importantly, Apple refused to break out the accused phones by application as proposed on a verdict form which Samsung advocated. Dkt. 2286, at 8.

2 Dkt. 1931.

3 Notice of Intent to Issue Ex Parte Reexamination Certificate, at 2-3 (Becher Decl., Exh. 3).

4 Dkt. 2079. In addition to claim 19, the PTO rejected all other claims in this office action.

5 Dkt. 2291.

6 April 29, 2013 Hearing Transcript, at 12:9-13 (Becher Decl., Exh. 4).

7 Notice of Intent to Issue Ex Parte Reexamination Certificate, at 2-3 (Becher Decl., Exh. 3).

8 Notice of Intent to Issue Ex Parte Reexamination Certificate, at 3 (Becher Decl., Exh. 3) (emphases in original).

9 van Dam Decl., ¶24.

10 Notice of Intent to Issue Ex Parte Reexamination Certificate, at 5 (emphasis original)(Becher Decl., Exh. 3) (bolding in original).

11 Notice of Intent to Issue Ex Parte Reexamination Certificate, at 6 (Becher Decl. Exh. 3) (emphasis and bolding in original).

12 van Dam Decl., ¶25.

13 Id.

14 Id.

15 van Dam Decl., ¶26.

16 Id.

17 Id.

18 van Dam Decl., ¶29.

19 van Dam Decl., ¶30.

I'll continue showing you the Samsung excerpts, but since they mention Andries va Dam, I will take a brief detour to show you a relevant section or two from the van Dam Declaration [PDF]. Some of the specifics about the testimony at trial is heavily redacted, but we can get the overview, as he writes, as his expert opinion, the following, beginning on page 6:
22. Following the jury trial and the August 2012 verdict, on October 13, 2012, the PTO rendered an initial office action rejecting all claims of the ’381 patent as, inter alia, anticipated or obvious over the Lira reference (and another reference) and then issued a final office action rejecting Claim 19 of the ’381 patent over the Lira reference on March 29, 2013.

23. In response to arguments made by Apple following the final office action, the PTO issued a Notice of Intent to Issue Ex Parte Reexamination Certificate rejecting or cancelling the majority of the claims of the ’381 patent as anticipated or obvious over the Lira prior art, but allowing several claims, including Claim 19. Based on my review of the reexamination file history, the PTO allowed Claim 19 over Lira solely because of Apple’s argument to the PTO that

6

Lira did not anticipate Claim 19 because it did not disclose computer instructions that were specifically designed to cause an electronic document to snap back to a particular edge of the electronic document. In other words, Apple argued to the PTO that the cause and effect (as described to the PTO) – or, the root purpose or cause of the snap back computer instructions in claim 19 must be edge alignment.

24. In particular, in its supplemental response to the PTO, Apple conceded that Lira “achieves the visual result” called for by Claim 19, but argued that it still did not invalidate Claim 19 because the computer instructions that caused the snap back function to occur had the purpose of causing the web page to “center” on the screen rather than explicitly seeking to perform edge alignment. Apple stated:

“While Lira’s snap-to-column function incidentally achieves the visual result of translating in the second direction ‘until the area beyond the edge of the electronic document is no longer displayed’ (only when the width of the column corresponds to the width of the display), Lira’s function clearly does so through the use of executable program instructions having a different stop condition based on centering of the column.”
(Apple Response to PTO, May 13, 2013) (emphasis added).

25. It is my opinion that, through its arguments to the PTO, Apple disclaimed all subject matter with respect to Claim 19 in which the specific purpose or cause of the computer code that generates the snap back effect is anything other than edge alignment. Edge alignment occurs when the area beyond the edge of a document is shown visually, but then the edge alignment code causes that area beyond the edge to disappear so that the edge of the electronic document aligns to the edge of the screen or window.

26. In order to infringe under the construction argued by Apple and accepted by the PTO, both the visual effect of edge alignment must be present and the specific purpose or cause of the computer instructions performing the snap back must be to perform edge alignment. By way of example, Claim 19 does not cover subject matter where the visual effect – incidentally or otherwise – is edge alignment if the cause or purpose of the code was something other than edge

7

alignment. For example, if edge alignment occurs due to computer instructions that cause centering of an electronic document, as in Lira, Claim 19 is not infringed.

27. I also conclude that Apple will not be able to recapture through the doctrine of equivalents any subject matter in which the cause or purpose of the computer instructions that cause the snap back effect is not edge alignment, as it is precluded from doing so by the doctrine of prosecution history estoppel.

V. CLAIM 19 WAS NOT LIMITED TO A SPECIFIC STOP CONDITION OR
PURPOSE/CAUSATION REQUIREMENT AT TRIAL

28. During the August 2012 trial, Apple had not yet made any of the narrowing statements relating to Claim 19 of the ’381 patent that it recently made during the reexamination proceedings. Consequently, the scope of Claim 19 as presented to the jury at trial was significantly broader than it is now.

29. At trial, Apple’s expert Dr. Ravin Balakrishnan, testified that several Samsung devices infringed claim 19 because the Gallery, Web Browser, and/or Contacts applications running on those devices incorporated snap back behavior. However, Dr. Balakrishan did not testify the purpose or cause of the computer instructions in the Gallery, Web Browser, and/or Contacts applications was specifically to perform edge alignment. Moreover, the computer instructions Dr. Balakrishnan and Apple presented and relied on at trial fail to meet the new post- reexamination limitations of Claim 19 as I explain in detail below.

30. In short, from a review of the computer instructions at issue and the operation of accused Samsung devices, it is my opinion that Apple failed to make a showing at trial that the new post-reexamination limitations discussed above are present in the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Prevail, Galaxy S 4G, Galaxy S II (AT&T), Galaxy Tab, Galaxy Tab 10.1 (WiFi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Replenish and Vibrant, under the Browser, Gallery, or Contacts applications.

The Samsung filing then goes on to argue the law on newly discovered evidence, which is basically what it sounds like. If facts show up after the trial that would alter the outcome that you couldn't have known before the discovery, you can ask for a new trial, to avoid injustice. In this case, there's no way Samsung could have investigated earlier to find out the newly discovered evidence, because it only just happened, when Apple changed its position on Claim 19 on June 12. The reexamination didn't end until after the trial, because the judge refused to wait for it to finish first. So now she's in a pickle of her own making, and given past history, that may not bode well for Samsung, if it irritates her to find out that there are times when it is, actually, better to wait.

And then Samsung has a section explaining why it believes that the outcome would have been different had the new Apple position been known at the time of the trial:

C. THE EVIDENCE FROM THE REEXAMINATION WOULD HAVE
CHANGED THE CLAIM CONSTRUCTION FOR THE '381 PATENT

Evidence of Apple's narrow and new interpretation of Claim 19 of the '381 patent – and the Examiner's acceptance of this interpretation – would have caused the Court or the jury to find that the New Trial Products do not infringe the '381 patent.25 As an initial matter, this evidence would have been considered in interpreting the claims and would have resulted in a different claim construction. The Federal Circuit has recognized that a patentee's argument that a prior art reference is distinguishable can serve as a disclaimer of claim scope. Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011) ("American Piledriving unambiguously argued that 'integral' meant 'one-piece' during reexamination and cannot attempt to distance itself from the disavowal of broader claim scope."); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) ("[T]hrough statements made during prosecution or reexamination an applicant for a patent or a patent owner, as the case may be, may commit to a particular meaning for a patent term, which meaning is then binding in litigation."); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532 (Fed. Cir. 1996) (finding patentee's statements made during reexamination to distinguish prior art to be binding in interpreting patent claims). Moreover, it is also well- established that "[c]laims may not be construed one way in order to obtain their allowance and in a different way against accused infringers." Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995), cert. denied 516 U.S. 987 (1995)(citing Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991). As a result, the construction that Apple persuaded the PTO to adopt during the reexamination is binding on Apple in proceedings in this Court. In addition, the Notice of Intent to Issue Ex Parte Reexamination Certificate would have also been admissible evidence. As the court stated in Fresenius Medical Care Holdings, Inc. v. Baxter Intern., Inc., 2006 WL 1330003 (N.D. Cal. 2006), orders of the Patent and Trademark

11

Office are admissible under the public records exception set forth in Federal Rule of Evidence 803(8). Id. at *2-4.

Through its statements during reexamination, Apple disclaimed all subject matter with respect to Claim 19 in which the specific purpose or cause of the computer code that generates the snap back effect is anything other than edge alignment.26 Edge alignment occurs when the area beyond the edge of a document is shown visually, but then the edge alignment code causes that area beyond the edge to disappear so that the edge of the electronic document aligns to the edge of the screen or window.27 In order to infringe under the construction argued by Apple and accepted by the PTO, both the visual effect of edge alignment must be present and the specific purpose or cause of the computer instructions performing the snap back must be to perform edge alignment.28 By way of example, Claim 19 does not cover subject matter where the visual effect – incidentally or otherwise – is edge alignment if the cause or purpose of the code was something other than edge alignment.29 If edge alignment occurs due to computer instructions that cause centering of an electronic document, as in Lira, Claim 19 is not infringed.30

D. UNDER THE NEW CLAIM CONSTRUCTION ADVOCATED BY APPLE
AND ADOPTED BY THE EXAMINER, THE JURY WOULD NOT HAVE
FOUND INFRINGEMENT OF THE '381 PATENT

New information about the construction of the '381 patent from the reexamination would have changed the outcome of the case as it would have resulted in a finding of noninfringement with respect to the '381 patent. As shown by the declaration of Samsung's expert Andries van Dam, Ph.D. who evaluated the evidence Apple proffered at trial to support its claim that Samsung infringed the '381 patent, the Browser, Gallery and Contacts applications – the applications Apple accused at trial – do not infringe under the construction Apple proffered during reexamination.

12

Apple’s expert, Dr. Ravin Balakrishnan, did not present evidence regarding the purpose of the code when he testified concerning infringement at trial, did not even present code for the Contacts application, and a review of the evidence he did present reveals that the New Trial Products do not infringe under the interpretation Apple used to convince the PTO to confirm Claim 19.31 As a consequence, Samsung would have prevailed at trial and defeated Apple's claim that the New Trial Products infringe the '381 patent and is therefore entitled to a new trial as to liability.32

________
25 Although the jury found the Galaxy Ace, Galaxy S (i9000) and Galaxy SII (i900) to infringe, it did not award damages for these products. Dkt. 1930. As a result, they are not included in this motion.

26 van Dam Decl., ¶25.

27 Id.

28 Id. at ¶26.

29 Id.

30 Id.

31 van Dam Decl., ¶29.

32 Samsung does not infringe under the doctrine of equivalents either. The doctrine of prosecution history estoppel provides that a patentee who relinquishes subject matter during prosecution, either by amendment or argument, cannot subsequently claim the relinquished subject matter is covered by its patent under the doctrine of equivalents. Eagle Comtronics, Inc. v. Arrow Communication Laboratories Inc., 305 F.3d 1303, 1315-1316 (Fed. Cir. 2002); Aquatex Industries, Inc. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005). Based on its statements to the examiner, Apple surrendered all subject matter in which the purpose of the computer instructions that cause the snap back effect is anything other than strict edge alignment. van Dam Decl., ¶25. Thus, Apple cannot argue that computer instructions whose purpose or cause is something other than edge alignment – but that is in some way equivalent to such code – infringes Claim 19. van Dam Decl., ¶27. Moreover, even if Apple could argue infringement under the doctrine of equivalents, there would be no infringement of Claim 19 because there are substantial differences between the Gallery and Browser code and Claim 19. van Dam Decl., ¶¶37-38, 46-47.

Samsung then offers a mostly redacted section on why Browser, Contacts, and something else we can't read are not infringing under the new claim construction. Then it argues that alternatively the judge could issue a judgment on liability on all claims and counterclaims so there can be an immediate appeal, which, in light of the Federal Circuit's recent en banc decision in Robert Bosch, LLC v. Pylon Manufacturing Corp. is now allowed.

No moss growing on Quinn Emanuel, I see. That decision was on June 14, 2013 [PDF]. And I think it's probably fair to say that the law firm is aware of the judge's eccentric views on law firms that fight hard for their clients and seek reexaminations at the USPTO. In this case, it was an anonymous third party that filed the request, actually, which Samsung is careful to point out. But they are not expecting too much help from this judge, I suspect, given her extreme view, which is why they ask for the alternative relief of an immediate appeal. They aren't calling it extreme, but I do. I mean, if the law says you can ask for a reexam, why would a judge be mad at you if you follow the law?

[Update 2: I've found an exhibit [PDF] filed in the case that includes some of the testimony about the '381's claim 19. You'll find the testimony by Dr. Balakrishnan regarding this beginning on page 316 of the exhibit collection and continuing to page 335 of the PDF.]

All the filings in this case, since we last looked in on Apple v. Samsung -- can you believe how many? I haven't read them all myself yet, but I didn't want you to have to wait to hear Samsung's significant news:

2317 - Filed: 04/29/2013
Entered: 04/30/2013
Minute Entry: Further Case Management Conference held on 4/29/2013 before Judge Lucy H. Koh (Date Filed: 4/29/2013). Further Case Management Conference set for 8/21/2013 02:00 PM in Courtroom 8, 4th Floor, San Jose. Final Pretrial Conference set for 10/17/2013 01:30 PM in Courtroom 8, 4th Floor, San Jose. Jury Selection set for 11/12/2013 09:00 AM in Courtroom 8, 4th Floor, San Jose before Hon. Lucy H. Koh. Jury Trial set for 11/12/2013 09:00 AM in Courtroom 8, 4th Floor, San Jose before Hon. Lucy H. Koh. (Court Reporter Lee-Anne Shortridge.) (mpb, COURT STAFF) (Date Filed: 4/29/2013)

2318 - Filed & Entered: 04/30/2013
TRANSCRIPT ORDER by Apple Inc. for Court Reporter Lee-Anne Shortridge. (Jacobs, Michael) (Filed on 4/30/2013)

2319 - Filed & Entered: 04/30/2013
TRANSCRIPT ORDER - CJA for Court Reporter Lee-Anne Shortridge. (Maroulis, Victoria) (Filed on 4/30/2013)

2320 - Filed & Entered: 05/03/2013
Transcript of Proceedings held on 4-29-13, before Judge Lucy H. Koh. Court Reporter/Transcriber Lee-Anne Shortridge, Telephone number [redacted by PJ] email: [redacted by PJ]. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 8/1/2013. (Related documents(s) [2318]) (las, ) (Filed on 5/3/2013)

2321 - Filed & Entered: 05/03/2013
NOTICE of Change of Address by Gabriel Nathan White NOTICE OF CHANGE OF ADDRESS (White, Gabriel) (Filed on 5/3/2013)

2322 - Filed & Entered: 05/03/2013
NOTICE of Change In Counsel by Dylan Ruga Michael R. Heimbold, Huan Yi Lin, John M. Caracappa (pro hac vice), Paul A. Gennari (pro hac vice) and Kfir Levy (pro hac vice) (Ruga, Dylan) (Filed on 5/3/2013)

2323 - Filed & Entered: 06/13/2013
STATEMENT OF RECENT DECISION REGARDING CONFIRMATION OF CLAIM 19 OF U.S. PATENT NO. 7,469,381 pursuant to Civil Local Rule 7-3.d filed by Apple Inc.. (Attachments: # (1) Exhibit A)(Jacobs, Michael) (Filed on 6/13/2013) Modified text on 6/14/2013 (dhmS, COURT STAFF).

2324 - Filed & Entered: 06/18/2013
NOTICE of Appearance by Ruth N. Borenstein (Borenstein, Ruth) (Filed on 6/18/2013)

2325 - Filed & Entered: 06/18/2013
NOTICE of Appearance by Christopher James Wiener (Wiener, Christopher) (Filed on 6/18/2013)

2326 Filed & Entered: 07/01/2013
Administrative Motion to File Under Seal Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Declaration of Anthony Alden in Support of Administrative Motion to File Documents Under Seal, # (2) Exhibit A to the Alden Declaration in Support of Administrative Motion to File Documents Under Seal, # (3) Proposed Order Granting Administrative Motion to File Documents Under Seal, # (4) Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order, # (5) Declaration of Anthony Alden in Support of Administrative Motion for Relief, # (6) Exhibit 1 to Alden Declaration in Support of Administrative Motion for Relief, # (7) Exhibit 2 to Alden Declaration in Support of Administrative Motion for Relief, # (8) Exhibit 3 to Alden Declaration in Support of Administrative Motion for Relief, # (9) Proposed Order Granting Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order)(Maroulis, Victoria) (Filed on 7/1/2013)

2327 Filed & Entered: 07/05/2013
EXHIBITS re [2326] Administrative Motion to File Under Seal Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order Corrected Exhibit A to the Alden Declaration in Support of Samsung's Administrative Motion to File Documents Under Seal and Corrected Exhibit 2 to the Alden Declaration in Support of Samsung's Motion for Relief filed bySamsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Corrected Exhibit 2 to the Alden Declaration in Support of Samsung's Motion for Relief)(Related document(s)[2326]) (Maroulis, Victoria) (Filed on 7/5/2013)

2328 - Filed & Entered: 07/05/2013
OPPOSITION to ( [2326] Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order ) filed by Apple Inc.. (Attachments: # (1) Proposed Order)(McElhinny, Harold) (Filed on 7/5/2013) Modified text on 7/8/2013 (dhmS, COURT STAFF).

2329 - Filed & Entered: 07/05/2013
Declaration of Erik J. Olson In Support Of [2328] Apples Opposition To Samsungs Administrative Motion For Relief From April 29, 2013 Case Management Order filed byApple Inc.. (Attachments: # (1) Exhibit A, # (2) Exhibit B)(McElhinny, Harold) (Filed on 7/5/2013) Modified on 7/8/2013 linking entry to document #2328 (dhmS, COURT STAFF).

2330 - Filed & Entered: 07/05/2013
Declaration of Julie L. Davis, CPA, In Support Of [2328] Apples Opposition To Samsungs Administrative Motion For Relief From April 29, 2013 Case Management Order filed by Apple Inc.. (McElhinny, Harold) (Filed on 7/5/2013) Modified on 7/8/2013 linking entry to document #2328 (dhmS, COURT STAFF).

2331 - Filed & Entered: 07/05/2013
Declaration of Marylee Robinson, CPA, In Support Of [2328] Apples Opposition To Samsungs Administrative Motion For Relief From April 29, 2013 Case Management Order filed by Apple Inc.. (Attachments: # (1) Exhibit A, # (2) Exhibit B, # (3) Exhibit C, # (4) Exhibit D)(McElhinny, Harold) (Filed on 7/5/2013) Modified on 7/8/2013 linking entry to document #2328 (dhmS, COURT STAFF).

2332 - Filed & Entered: 07/05/2013
Administrative Motion to File Under Seal Apples Motion To Seal Regarding Apples Opposition To Samsungs Administrative Motion For Relief From April 29, 2013, Case Management Order filed by Apple Inc.. (Attachments: # (1) Declaration Of Cyndi Wheeler In Support Of Apples Motion To Seal Regarding Apples Opposition To Samsungs Administrative Motion For Relief From April 29, 2013, Case Management Order, # (2) Exhibit 1, # (3) Exhibit 2, # (4) Proposed Order)(McElhinny, Harold) (Filed on 7/5/2013)

2333 - Filed & Entered: 07/08/2013
Administrative Motion to File Under Seal Exhibit 1 to Samsung's Motion for Leave to File Reply in Support of Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Proposed Order Granting Samsung's Administrative Motion to File Documents Under Seal, # (2) Motion for Leave to File Reply in Support of Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order, or Alaternatively, for a Hearing, # (3) Exhibit 1 to Samsung's Motion for Leave, # (4) Declaration of Anthony Alden in Support of Samsung's Motion for Leave, # (5) Exhibit A to the Alden Declaration, # (6) Proposed Order Granting Samsung's Motion for Leave)(Maroulis, Victoria) (Filed on 7/8/2013)

2334 - Filed & Entered: 07/08/2013
RESPONSE (re [2326] Administrative Motion to File Under Seal Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order ) APPLE'S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF SAMSUNG'S ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL filed byApple Inc.. (Olson, Erik) (Filed on 7/8/2013)

2335 - Filed & Entered: 07/08/2013
Declaration of CYNDI WHEELER in Support of [2334] Opposition/Response to Motion, DECLARATION OF CYNDI WHEELER IN SUPPORT OF SAMSUNG'S ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL filed byApple Inc.. (Attachments: # (1) Exhibit 1)(Related document(s)[2334]) (Olson, Erik) (Filed on 7/8/2013)

2336 - Filed & Entered: 07/08/2013
Proposed Order re [2326] Administrative Motion to File Under Seal Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order [PROPOSED] ORDER GRANTING SAMSUNG'S MOTION TO SEAL by Apple Inc.. (Olson, Erik) (Filed on 7/8/2013)

2337 - Filed & Entered: 07/08/2013
RESPONSE (re [2333] Administrative Motion to File Under Seal Exhibit 1 to Samsung's Motion for Leave to File Reply in Support of Samsung's Administrative Motion for Relief from April 29, 2013 Case Management Order ) Apples Response To Samsungs Administrative Motion To File Reply In Support Of Samsungs Administrative Motion For Relief From April 29 Case Management Order, Or Alternatively, For A Hearing filed byApple Inc.. (Attachments: # (1) Proposed Order)(McElhinny, Harold) (Filed on 7/8/2013)

2338 Filed & Entered: 07/08/2013
Administrative Motion to File Under Seal Samsung's Motion for New Trial Regarding '381 Patent Pursuant to Fed. R. Civ. P. 59 Based on Newly Discovered Evidence or, Alternatively, for Entry of Judgment on Liability filed by Samsung Electronics Co. Ltd.. (Attachments: # (1) Trac Declaration ISO Motion to Seal, # (2) Proposed Order Granting Motion to Seal, # (3) Samsung's Motion for New Trial Regarding '381 Patent Pursuant to Fed. R. Civ. P. 59 Based on Newly Discovered Evidence or, Alternatively, for Entry of Judgment on Liability, # (4) van Dam Declaration ISO Motion for '381 New Trial, # (5) Exhibit 1, # (6) Exhibit 2, # (7) Becher Declaration ISO Motion for '381 New Trial or in the Alternative Entry of Judgment on Liability, # (8) Exhibit 1, # (9) Exhibit 2, # (10) Exhibit 3, # (11) Exhibit 4, # (12) Exhibit 5, # (13) Exhibit 6, # (14) Exhibit 7A, # (15) Exhibit 7B, # (16) Proposed Order)(Maroulis, Victoria) (Filed on 7/8/2013)

2339 - Filed & Entered: 07/08/2013
Request for Judicial Notice re [2338] Administrative Motion to File Under Seal Samsung's Motion for New Trial Regarding '381 Patent Pursuant to Fed. R. Civ. P. 59 Based on Newly Discovered Evidence or, Alternatively, for Entry of Judgment on Liability filed bySamsung Electronics Co. Ltd.. (Attachments: # (1) Exhibit A-1, # (2) Exhibit A-2, # (3) Exhibit A-3, # (4) Exhibit A-4, # (5) Proposed Order)(Related document(s)[2338]) (Maroulis, Victoria) (Filed on 7/8/2013)

Update 3: Because there have been so many comments about this issue of the claim construction of patent '381, it seemed only right to get all the filings that relate to it, so we can get a clearer idea of what Apple's position was prior to the latest alleged change in position. So I got the Markman order and the filings before and after it for you. Check on the Timeline page to figure out the context and exact title of the documents below, all PDFs:

Perhaps this will make clear why I wrote initially that this isn't something that can be decided without deeper research, which I have now provided in part. Keep in mind that you'd need to actually read through all the transcripts to know for sure whether what Samsung is stating regarding a change in position is actually certainly accurate or not.

Update 4: OK. Here's where you hit pay dirt on what Samsung is alleging: the final entry in the docket, above, #2339, where Samsung asks the court to take judicial notice of the goings on at the USPTO in the reexamination process. The exibits to #2339 are that history, and Exhibit 4 is the latest one, ending in June of 2013, if you scroll to the end. On page 279 of the PDF, for example, you read:

"A certificate will be issued in view of Patent owner's communication filed: 13 May 2013 and 20 May 2013" regarding claims 14 and 17-19.
It references an attached statement of reasons for patentability and/or confirmation. On page 274 of the PDF, you read this, in connection with their discussion of prior art, specifically Lira, on May 9:
Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
Patent Owner's Representatives presented their position that the Lira reference lacked the "stop condition" in the claims where the translating in the second direction occurs "until the area beyond the edge of the electronic document is no longer displayed". To this, the Office noted that Lira does provide for animated snap-on-column functionality from an area off of the column upon pen lift (see page 15, lines 18-31), where the width of the column is sized to the window size so as to be less than or equal to the window width (see page 11, lines 10-17), with specific recitations to the column widths correcsponding to the dispay width 425 (see column 10, lines 1-5). The Office believes this is important as when the window snaps back to the column, corrective scrolling is stopped when the display is centered over the column, thereby placing the edges of the column at the edges of the equally sized display, where at the exact instance that the window is centered the area beyond the edge ceases to be displayed (same result). The Patent Owner's Representatives noted that claim 19, specifically teaches "instructions for" translating "until the area beyond the edge of the electonic document is no longer displayed", where the Office asked for further clarification as to whether there is support for actual coded instructions that effect this process, and noted that if there where this would be a good area to focus. The Office noted that though a corrective traversal appeals in Lira to stop when the area beyond the edge of the document is no longer displayed, it may not be responsive to instructions requiring that but rather a result of instructions to center (same effect, different cause), pending further review. Patent Owner's Representatives noted that they would provide support.
Apple had a month to file paperwork, I gather. Meanwhile on May 13, as you can see on page 272 of the PDF, there was another interview, and we read this:
Agreement was reached that Lira does not provide "instructions for" translating... "until the area beyond the edge of the electronic document is no longer displayed" as is stated in claim 19. Additionally Patent Owner agreed to cancel via Examiner's Amendment claims 1-13, 15, 16, and 20, where these claims were neither previously confirmed (as were claims 14, 17, and 18) nor provide said specific recitation to "instructions for" translating... "until the area beyond the edge of the electronic document is no longer displayed".
Is patent law not the stupidest thing you ever watched? A patent that has the same result as prior art, but which add "instructions for" translating... "until the area beyond the edge of the electronic document is no longer displayed", gets a patent. And for that, Apple wants to ban Samsung products from the market. Not just in the US. On pages 203 onward, there's a list of all the places on planet earth where the '381 patent is involved in "proceedings" in the US and around the world with equivalent foreign patents. The form is called "Notice of Prior and Concurrent Proceedings Under 37 C. F. R. 1,565(A)". So many stupid rules.

OK. That was May 13. On that same date, Apple filed a supplemental response, and on page 259 of the PDF, you find the results of another telephone interview:

In the supplemental response filed 5/13/2013, Patent Owner concedes that:
"While Lira's snap-to-column function incidentally achieves the visual result of translating in the second direction "until the area beyond the edge of the electronic document is no longer displayed" (only when the width of the column corresponds to the width of the display), Lira's function clearly does so through the use of executable program instructions having a different stop condition based on centering of the column." (see page 7)...

In summary, Claim 19 is Confirmed, as there is no prior art disclosure of a similar device with "programs including ... instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in resonse to detecting that the object is no longer on or near the touch screen display."

Then on May 22, there was a telephone interview and on page 258, we read the Examiner's Amendment basically reinforcing the same thing as on May 13. So that is how claim 19 survived, but on page 252, there's a letter from Samsung to the USPTO, that they received on May 31, 2013, where Samsung notified the USPTO that Apple failed to inform the office that the judge in the Apple v. Samsung case had said in the April 29th hearing that she would likely delay the damages retrial with respect to claim 19 of the '381 patent "in the event that the Examiner did not re-open the prosecution of the '381 reexamination." And they attach a portion of the hearing transcript.

Then, on page 190 of the PDF, we see a letter to the USPTO from Apple, and regarding claim 19, Apple's lawyers write this to the USPTO:

A. Claim 19: Lira does not disclose a device having "instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed"

Claim 19 is directed to a device having one or more programs that include specifically recited instructions. In particular, the one or more programs of the device of claim 19 include "instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed".

As discussed in the interview, Patent Owner asserts that, even under the broadest reasonable construction standard, a person of ordinary skill in the art would understand that a device of claim 19 must include instructions for performing translation in the second direction with the recited stop condition (i.e., "until the area beyond the edge of the electronic document is no longer displayed"). Further, the person of ordinary skill would understand that incidentally achieving a similar visual result, based on a different stop condition, is neither an express nor inherent disclosure of the required instructions. Lira discloses a centering function. Thus, Lira fails to disclose, explicitly or inherently, instructions for translation in the second direction with the stop condition (i.e., "until the area beyond the edge of the electronic document is not longer displayed") recited in claim 19.

1. Claim 19 requires executable program instructions

As discussed in the interview, Patent Owner asserts that claim 19 requires executable program instructions rather than just a result achieved on the screen of the device. In particular, claim 19 recites, "[a] device comprising ... one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors". Each of the recited "instructions" is included in the one or more programs.

2. The broadest reasonable construction of the "instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed" limitation

Patent Owner asserts that even under the broadest reasonable construction, the final instructions of claim 19 require the executable program instructions that not only specify the particular command (i.e., translation in the second direction), but also specify a particular stop condition (i.e., "until the area beyond the edge of the electronic document is no longer displayed).

A person of ordinary skill in the art would recognize the significance of specifying a stop condition for translation in the second direction in a device operating based on executable program instructions. Unlike translation in the first direction, which is terminated by detecting that the object is no longer on the touch screen (i.e., user input), there is no input-based stop condition specified in claim 19 for ending translation in the second direction. Rather, the device of claim 19 includes instructions specifying that translation in the second direction is terminated based on determining that the area beyond the edge is no longer displayed. In operation, the device of claim 19 would stop translation once the stop condition is met, based on the recited instructions.

In summary, a device of claim 19 must include executable program instructions having the recited translation stop condition of "until the area beyond the edge of the electronic document is no longer displayed".

3. Originally filed claim 19 included the "instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed" limitation

As noted by Patent Owner's representatives in the interview, originally filed claim 19 recited:
[I]nstructions for translating the document in a second direction until the area beyond the edge of the document is no longer displayed, after the object is no longer detected on or near the touch screen display.
As is the case for issued claim 19, original claim 19 also made clear that the recited "instructions" are directed to more than just a result achieved on the screen of the device. In both the original and issued claim 19, each of the "instructions" are part of "one or more programs [] stored in the memory and configured to be executed by the one or more processors [of the device]". The final element of claim 19 was amended during prosecution to included language relating to various portions, but the amendment does not alter the recited stop condition ("until the area beyond the edge of the electronic document is no longer displayed") nor the fact that the stop condition is a part of executable program instructions. ( See Notice of Allowance dated October 19, 2008, in App. No. 11/956,969.)

Similarly, the originally filed specification included descriptions of program instructions consistent with the ordinary meaning of program instructions, as they are used in the claims. See, e.g., Specification filed December 14, 2007, at paragraphs [0009], [0012], [0003]. amd [0100]. As such, one of ordinary skill would recognize that the instructions for translation in the second direction, as wth all of the instructions recited in claim 19, are directed to elements of a computer program, rather than merely to a result achieved on the screen of the device of claim 19.

4. Lira does not disclose executable program instructions having the recited translation stop condition of "until the area beyond the edge of the electronic document is no longer displayed"

Patent Owner asserts that Lira fails to disclose, explicitly or inherently, a device of claim 19 under the broadest reasonable construction discussed above. Moreover, Lira fails to do so, regardless of whether an internal boundary of a document is or is not an edge of an electronic document, as claimed. The Office Action cites to Lira at page 15 for disclosure of translation in a second direction, based on Lira's snap-to-nearest column function. (Office Action at pages 9-10.) Lira's snap-to-nearest column function does not include a stop condition of "until the area beyond the edge of the electronic document is no longer displayed".

Rather, Lira makes clear that the stop condition for the function is based on centering of the column: "the display 1205 centers the logical column 1210 as the pen 1200 is lifted from the screen". (Lira at page 15, lines 23-25 (emphasis added).) Stopping translation based on the column being centered is substantially different than stopping based on the area beyond the edge no longer being displayed.

Moreover, Lira's centering-based stop condition is wholly consistent with the remainder of its disclosure. Lira makes clear that its logical columns may be sized so as to be "less than or equal to the display window width". (Lira at page 11, lines 10-11. See also Lira at page 1, lines 22-23; and page 2, lines 1-3.) In instances when the column is sized less than the width of the display, a centering-based stop condition would ensure that the column is "snap[ped] into alignment" with the middle of the display, rather than being skewed to one side. Lira makes no mention or suggestion of employing different stop conditions, based on logical column width. This is also consistent with the description of the manual actions taken by the user that the snap-to-nearest column function is meant to replace: "the user manually centers the desired column in the display window 1205 by making one or more left or right corrections to the stylus 1200". (Lira at page 14, lines 25-28 (emphasis added).)

In view of Lira's unequivocal disclosure of a centering-based stop condition, Lira's description of its snap-to-column function as "caus[ing] the logical column 1220 to snap into alignment with the display window 1205 as the user stops scrolling" is merely a disclosure of the incidental visual result of translating until the edge of column 1220 is aligned with the screen, without being a disclosure of instructions having a stop condition of "until the area beyond the edge of the electronic document is no longer displayed". Notably, this incidental result only occurs when the width of the column corresponds to the width of the display, as Lira leaves no ambiguity as to the centering-based stop condition used in the snap-to-nearest column function.

Accordingly, Patent Owner asserts that Lira fails to expressly or inherently disclose a device having executable program instructions having the recited translationg stop condition of "until the area beyond the edge of the electronic document is no longer displayed", as required by claim 19.

Mystery solved. What a snake move this is. Anyone recall Apple saying any of these limitations at trial when describing Samsung's alleged infringement? If so, cite page and line number of the transcript. Because I remember nothing quite like this.

The history goes on and on, but this is all hand typing, and I'm sick of it. But I'll tell you that on page 181 of the PDF there is more from a May 23rd filing, asking for the interview it eventually go and repeating more or less the same things, and so forth, including why the patent examiner earlier rejected claim 19 based on Lira, such as beginning on page 48.

But we've seen enough now to understand what Samsung is talking about. I don't know how its products work, but they do, and I gather they are saying that their products lack the computer stop condition instructions in their software. And if so, they should be granted a new trial, I would think. Whether that will happen is a different question. As Joseph Stiglitz points out in a New York Times opinion piece, the court in Apple v. Samsung makes "a pretense at balance" but seems to "consistently favor the home team". Amen to that.


  


Samsung Asks For New Trial on Apple's '381 Patent - New Evidence Has Been Discovered ~pj - Updated 4Xs | 393 comments | Create New Account
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Corrections here please
Authored by: jbb on Tuesday, July 09 2013 @ 06:09 PM EDT
So it is easy for PJ to find them.

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

[ Reply to This | # ]

Off topic here please
Authored by: jbb on Tuesday, July 09 2013 @ 06:10 PM EDT
So it is neat and tidy and all in one place.

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

[ Reply to This | # ]

News pick discussions here please
Authored by: jbb on Tuesday, July 09 2013 @ 06:11 PM EDT
Remember to include a link to the actual article so people can get to it after
it has scrolled off the Groklaw home page.

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

[ Reply to This | # ]

COMES transcriptions here please
Authored by: jbb on Tuesday, July 09 2013 @ 06:11 PM EDT
Thank you for all the hard work!

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

[ Reply to This | # ]

Why they get 5 billion do-overs
Authored by: jbb on Tuesday, July 09 2013 @ 06:48 PM EDT
Another reason they get 5 billion do-overs is that very few people in the patent system: legislators, lawyers, judges, examiners, etc, have a strong enough technical background to understand the context for software patents. Combine this with uneven rulings from the higher courts and you get an utter mess. The boundary between patentable and unpatentable is murker at best. It's also a little like quantum mechanics because as you scrutinize a patent, it changes just like Apple's '381 patent changed in order to survive the extra scrutiny it received as a result of Apple v. Samsung.

If the people involved in the patent process were well versed in the fields they are making (product-wise) life and death decisions in, and if the line between patentable and unpatentable was clear to all of those involved then all of these problems Judge Koh complains about would go away. It appears that mathematics is not the only field where:

You don't know what you are talking about nor whether what you are saying is true.
It is utterly crazy that people who don't understand what they are talking about have to make billion dollar decisions that affect an entire industry. As long as such under-qualified (technically, of course they are very well qualified legally) people have to make billion dollar decisions, the software industry will fund these utterly stupid and ridiculous law suits until the end of time. They would almost be negligent not to. It is usually a good bet to invest tens of millions of dollars on a crap-shoot that could gain you billions.

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

[ Reply to This | # ]

5 Billion Do-overs
Authored by: lnuss on Tuesday, July 09 2013 @ 06:53 PM EDT
**--- In a speech recently, she ranted about it: "What is so special about
patent law?" she fumed. "Why do you all get 5 billion do-overs?"
---**

Anyone for exaggeration?

Seems to me she could have saved herself some work if she'd agreed to Samsung's
request for delay.

---
Larry N.

[ Reply to This | # ]

Samsung Asks For New Trial on Apple's '381 Patent - New Evidence Has Been Discovered ~pj
Authored by: alanyst on Tuesday, July 09 2013 @ 07:21 PM EDT

One absurdity that becomes clear here is that the only difference between the Apple "invention" and that of the Lira prior art reference that they were trying to construe around, is what the "purpose" of the code was that achieved the edge alignment effect.

If code was dedicated specifically to achieving the effect of edge alignment, Apple's Claim 19 applies and the feature infringed; if it achieved the same result but was a side effect of code that achieved a different purpose (such as centering, a la Lira), then it does not infringe.

Is it truly an invention if the only thing that distinguishes it from the prior art is what a bit of code was intended to accomplish? Doesn't this lead to difficult problems for the court and juries, if they have to ascertain the intentions of the developers of the code in order to tell whether something infringes? And how does a patent on such an invention 'teach' anything or advance the sciences and useful arts?

The USPTO should have realized that Apple's narrowing of Claim 19 was an effective concession that its patent taught no useful invention beyond the prior art, and ought to have invalidated the entire patent on that basis.

[ Reply to This | # ]

Bet there's no apologies
Authored by: Anonymous on Tuesday, July 09 2013 @ 08:00 PM EDT

And I'll also bet that Florian muffs his reporting. Any takers?

Wayne
http://madhatter.ca

[ Reply to This | # ]

So what do you do if you are the Judge
Authored by: AH1 on Tuesday, July 09 2013 @ 08:32 PM EDT
If you are Judge Koh you have been PUSHING HARD to expedite this process to the
point that you DENY Samsung's request for delay only to find out that Apple
stood in that hearing knowing that they narrowed their patent claims to the
point where it could effect the claims regarding infringing products and you do
not mention, or provide a copy of the updated patent to either Samsung or the
Judge.

If it were me I would either
(a)Immediately grant the delay until the USPTO rules on the validity of the
patent.

or

(b)Immediately move forward with the hearing but not before declaring that the
jury finding against Samsung products infringing as the result of the 381 patent
to be moot.

[ Reply to This | # ]

Samsung Spin
Authored by: Anonymous on Tuesday, July 09 2013 @ 08:44 PM EDT
While I usually agree with PJ, in this case I believe she is jumping the gun a bit.
Wow. Why would Samsung have to find this in papers filed with the USPTO instead of from Apple just telling them?
Apple attached the PTO papers to their notice to Samsung. See Apple's snarky reply with attached USPTO papers. So Apple told Samsung about this through the USPTO papers. The trouble I see with Samsung's position is that Apple's patent is so nonsensical after the Lira patent workaround that how could they know their devices "cannot possibly infringe" the '319 patent. I believe their real argument is that the trial was based on claims construction that is no longer valid. Once Apple reworded their patent how do we know that Samsung devices infringe the revised wording? Samsung is simply being snarky in return. Each side is making grandiose claims that they are obviously in the right to sway public opinion to their side.

The patent now makes no sense. Good luck convincing a jury that you don't infringe something that is impossible to understand. If you have to assume patents are valid as a jury, yet it is impossible to figure out what it means how can you find infringement or non-infringement?

Good luck, Samsung.

[ Reply to This | # ]

A simple question from a German
Authored by: clemenstimpler on Tuesday, July 09 2013 @ 08:45 PM EDT
For those of us who do not live in a common law system, it is fairly strange
that judges in the US expect private parties in a trial to keep them appraised
of proceedings before the USPTO. After all, it's a state agency. Could the judge
have ordered the USPTO instead to inform her directly about the conclusion of
the proceedings and its consequences for claim '19 instead of expecting Samsung
to monitor the USPTO website in order to introduce the required documents? I
think I get all the stuff about your 'adversarial system' etc. to some extent.
But for me, this is fairly extreme. So could someone please explain what
hallowed principles of common law prevent the judge from just asking the USPTO:
"Hey, guys/girls, when you're done with this mess, please ping me and give
me the results." You know, just to keep things simple.

[ Reply to This | # ]

"reexamination decision trumps anything..."
Authored by: Anonymous on Tuesday, July 09 2013 @ 10:47 PM EDT
"..., a USPTO reexamination decision trumps anything that the courts might
do or even what they already did."

This seems overly broad. If the re-exam finds a patent invalid then effectively
the patent does not exist, it would be unreasonable to litigate a non-existent
patent. If, however, the USPTO re-exam were to uphold a patent, this should not
preclude a court case finding the patent invalid.

[ Reply to This | # ]

The case just got a lot more interesting :-)
Authored by: Anonymous on Wednesday, July 10 2013 @ 04:00 AM EDT
What will the good Judge do now :-)

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Simple Solution
Authored by: Anonymous on Wednesday, July 10 2013 @ 04:06 AM EDT
I must admit that the US legal system is baffling at times.
But why does it not work this way?
1. Award is made of ten million for patent infringement whilst USPTO is thinking
about the patent.
2. ten million is payed to the winner by the loser
3. USPTO rules patent is invalid
4. the ten million is paid back by the "winner" to the
"loser"

[ Reply to This | # ]

Shouldn't this automatically be thrown out?
Authored by: Anonymous on Wednesday, July 10 2013 @ 04:13 AM EDT

From what I understand.

1) Apple's '381 patent was a catchall patent for rubber banding.
2) The '381 patent was invalidated because of prior art.
3) The '381 patent is now no longer the same patent that jury ruled was
infringed.
4) Under these circumstances shouldn't this be thrown out automatically?

And, how the hell does a company get a patent disqualified for prior art and
obviousness and then simply "change it" so that the prior art no
longer applies?

The new wording is not the patent that was originally approved. How do you
change it, midstream, and bypass the approval process? Wouldn't it be logical
to throw that patent out and say "OK, that one was defective, start over
again"?

I don't think it work so hot for me if I was found guilty in a court and said
"Hey, wait a minute, bring the jurors back in, I want to change my
testimony so I can get found not guilty."

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Samsung has to "find this in papers" because its not actually in the papers.
Authored by: Anonymous on Wednesday, July 10 2013 @ 09:17 AM EDT
It's in Samsung's imagination.

"Wow. Why would Samsung have to find this in papers filed with the USPTO
instead of from Apple just telling them? In any case, Samsung argues newly
discovered evidence. The Lira patent is the prior art that caused the USPTO to
reject claim 19 earlier."

Claim 19 was not amended. Claim 19's scope was not narrowed.

Samsung is only alleging that the scope was narrowed.

That is why Samsung had to "find it".

[ Reply to This | # ]

Better Solution!
Authored by: Anonymous on Wednesday, July 10 2013 @ 11:46 AM EDT

The better solution is what the USPTO did recently in another patent situation:

    Use the Patent Owners definition in Court as the defining definition and strictly deny the patent on those grounds!
Period, end of story, end of games by Patent holder.

RAS

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Samsungs new trial request
Authored by: maroberts on Wednesday, July 10 2013 @ 01:54 PM EDT
Didn't Lucy Koh (the Apple v Samnsung judge) make a speech about how she was
ticked off by companies requesting "do-overs" in patent trials?

I wonder how this is going to go down with her?

[ Reply to This | # ]

PJ, how much did it cost to get all those filings?
Authored by: Anonymous on Wednesday, July 10 2013 @ 01:56 PM EDT
I'm assuming it was more than a pretty penny.

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This whole thing is incredibly stupid and hypocritical
Authored by: jbb on Wednesday, July 10 2013 @ 02:25 PM EDT
That a rubber-banding special effect could be patented at all is totally idiotic because it is obviously an idea, not an invention. If we had to patent such silly little things back in the 1980's then we would have been so busy patenting things that we would never have had time to get any work done.

Publicly, Apple's raison d'etre for this lawsuit has been that they invented the rubber-banding effect and everyone else is stealing it from them. The truth is that other people came up with this idea long before Apple did which should be a surprise to no one. Luckily (I guess), at least on of them went to the trouble of patenting the idea. The only one stealing here is Apple. They are trying to steal the rubber-banding idea and claim it for their own and then use our totally dysfunctional patent system to bar others from using this idea.

If patenting ideas such as rubber-banding was not stupid enough to begin with, granting a patent on using the rubber-banding idea in a particular situation is so bad it blows my mind. It is far worse than all the "... but on a computer" nonsense that is already clogging our courts. If you have grasped the idea of the rubber-banding effect, perhaps by reading the Lira patent, or perhaps by coming up with it yourself one afternoon; then how on God's green earth can using the rubber-banding idea in a very slightly different situation be non-obvious? I will avoid the temptation to launch an ad hominem attack against the patent re-examiner.

In addition to the potential of winning a billion dollar jackpot, another thing fueling these seemingly endless patent wars is the fact that the PTO has been granting patents on ideas, left, right, and sideways, under the guise of software patents. This rubber-banding nonsense is a perfect example. Apple is trying to bar everyone else from using the rubber-banding idea (at the edges of a document) regardless of the implementation details. It's like granting someone a patent on the idea of solar cells regardless of the implementation details. Then when you find out the solar cell idea was already patented, you say they were using it for pumping water but we are using it for charging batteries therefore our patent is novel and non-obvious.

Here is a clue for anyone who is concerned about our runaway and dysfunctional patent system. If someone submits a patent application for an end result (rubber-banding at the edge of a document) but does not restrict it to a particular implementation then they are patenting an idea, not a invention. It is very simple:

    end result = idea
implementation = invention
When you hand out patents for ideas instead of inventions then no one will be allowed to build a better mousetrap.

---
In a time of universal deceit -- telling the truth is a revolutionary act.
-- George Orwell

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Samsung Asks For New Trial on Apple's '381 Patent - New Evidence Has Been Discovered ~pj - Updated 2Xs
Authored by: Anonymous on Wednesday, July 10 2013 @ 06:50 PM EDT
2) Yes, it was invalidated.
3) Yes, the scope of the patent has changed.

[ Reply to This | # ]

Lemme get this straight
Authored by: maroberts on Thursday, July 11 2013 @ 06:58 AM EDT
Apple has a patent on doing exactly the same thing as disclosed by Lira, but
only if the invention disclosed by Lira is used for a different purpose, which
happens to be a side effect of doing what Lira discloses.

Has the Patent Office gone totally insane?

[ Reply to This | # ]

Dear Samsung, Your Pantaloons are Combusting
Authored by: Anonymous on Friday, July 12 2013 @ 01:15 PM EDT
The snippet below is from and OCR of the document provided by PJ at the link
called update 2 above.

I believe it to be from the questioning of Apple's Expert by Apples Attorney.
It include an identification of Samsung code that the expert alleges does the
edge test that Samsung is now alleging was never mentioned as a requirement.
The discussion of claim 19 seems to begin on page 1742, which acrobat reports as
page 321 of the linked document. The snipped portion below begins on page
1748/327, near the bottom

PANTS ON FIRE Samsung!


Q AND HOW ABOUT IN THE BROWSER APPLICATION?
A THE BROWSER APPLICATION SIMILARLY WORKS THE
SAME WAY. YOU CAN DRAG IT BEYOND THE EDGE, IN THIS
Case5:11-cv-01846-LHK Document2062-1 Filed10/19/12 Page327 of 610
25
1749
CASE YOU'VE REACHED THE EDGE, AN AREA BEYOND THE
EDGE IS SHOWN, YOU RELEASE YOUR FINGER, IT BOUNCES
BACK, VERY MUCH LIKE THE GALLERY ACTUALLY.
Q CLAIM 19 DISCUSSES INSTRUCTIONS THAT MAKE THIS
FEATURE WORK. WHAT ARE INSTRUCTIONS IN THE CONTEXT
OF A SMARTPHONE OR A TABLET COMPUTER?
A INSTRUCTIONS IN THE CONTEXT OF PHONES AND
TABLET COMPUTERS THAT WE'RE DISCUSSING HERE ARE
REALLY JUST COMPUTER CODE, COMPUTER PROGRAM
INSTRUCTIONS, AND THIS IS LINES OF CODE THAT'S IN
THE COMPUTER THAT EXECUTE ON THE PROCESSOR TO MAKE
THIS FUNCTIONALITY WORK


Q HOW DO YOU KNOW THAT THESE INSTRUCTIONS ARE
PRESENT ON THE GALAXY S II, AT&T?
A AS I TESTIFIED EARLIER, I LOOKED AT THE
SAMSUNG PRODUCED CODE AND WHAT I'VE DONE IS I'VE
EXCERPTED JUST TWO SMALL PORTIONS TO ILLUSTRATE
SOME OF THE PERTINENT CODE FOR THE GALLERY AND FOR
THE BROWSER APPLICATIONS ON THE SCREEN.
IT'S NOT ON THE SCREEN YET.
MR. JACOBS: SO, YOUR HONOR, WE'D LIKE TO
DISPLAY THIS FOR YOU, FOR OPPOSING COUNSEL, AND FOR
THE JURY AS IS REPRESENTATIVE OF THE CODE OF
SAMSUNG.
THE COURT: OKAY. GO AHEAD.
Case5:11-cv-01846-LHK Document2062-1 Filed10/19/12 Page328 of 610

BY MR. JACOBS:
Q SO WE'RE LOOKING AT 27.31, SIR, AND IS IT ON
THE JURY'S SCREEN.
NO, NOT ON THE PUBLIC SCREEN.
THE COURT: TAKE THAT DOWN, PLEASE.
MR. JACOBS: IS IT ON THE JURORS'
SCREENS? NO.
THANK YOU MR. LEE.
Q SO DR. BALAKRISHNAN, CAN YOU SHOW US WHAT WE
ARE SEEING ON THIS, IN THIS SOURCE CODE?
A SURE.
Q CAN YOU TELL US WHAT WE'RE SEEING ON THE
SOURCE CODE?
A ON THE LEFT-HAND SIDE IS THE SOURCE CODE FOR
THE GALLERY APPLICATION THAT WE'VE BEEN TALKING
ABOUT. SO THIS IS A VERY SMALL SNIPPET OF THE
OVERALL CODE THAT RUNS. WHAT I'VE DONE IS
ILLUSTRATE JUST A PORTION THAT SETS UP THE
PARAMETERS FOR DETERMINING WHAT HAPPENS AT THE EDGE
OF THE DOCUMENT.
SO IT LOOKS AT THE LEFT EXTENT OR THE
RIGHT EXTENT OR THE TOP OR BOTTOM. THOSE ARE FOUR
EDGES OF THE DOCUMENT. IF IT EXCEEDS THE THRESHOLD
OF THAT EDGE, IT MOVES THE DOCUMENT BY THE
APPROPRIATE AMOUNT SO YOU CAN SEE IT.
Case5:11-cv-01846-LHK Document2062-1 Filed10/19/12 Page329 of 610



ON THE RIGHT-HAND SIDE IS THE SAME
FUNCTIONALITY, BUT WRITTEN IN A SLIGHTLY DIFFERENT
WAY FOR THE BROWSER APPLICATION, AND IN THIS CASE
IT'S COMPUTING THE AMOUNT OF BOUNCE THAT NEEDS TO
HAPPEN WHEN THE FINGER IS RELEASED AND IT DOES SOME
CALCULATIONS WITH THAT.
SO I WANT TO EMPHASIZE, THIS IS JUST THE
RELEVANT SNIPPET OF THE OVERALL CODE. THERE'S MUCH
MORE CODE THAT MAKES THIS ALL REALLY WORK IN
TOTALITY.
Q SO BASED ON YOUR REVIEW OF THE CODE AND OF THE
DEVICE, WHAT IS YOUR CONCLUSION AS TO WHETHER THE
SAMSUNG GALLERY S II, AT&T, INFRINGES CLAIM 19 OF
THE '381 PATENT?
A BASED ON MY REVIEW OF THE DEVICES AND THE
CODE, IT IS MY OPINION THAT THE SAMSUNG
GALAXY S II, AT&T, INFRINGES CLAIM 19 OF THE '381
PATENT IN ALL THREE APPLICATIONS.
Q YOU ANALYZED OTHER SAMSUNG PHONES?
A YES, I DID.
Q AND DOES YOUR OPINION EXTEND TO OTHERS OF THE
PHONES THAT YOU EXAMINED?
A YES, 20 OTHER PHONES ALSO INFRINGE THE '381
PATENT.
Q CAN WE SHOW THAT TO THE JURY ?
Case5:11-cv-01846-LHK Document2062-1 Filed10/19/12 Page330 of 610
25
1752
A SURE.

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Bounce-Back? Did no one ever play Ping in 80s?
Authored by: Anonymous on Saturday, July 13 2013 @ 06:04 AM EDT
I've got a big book of the source code for games for one of the 8-bit
microcomputers of the eighties. It's BASIC, which isn't nice, but I'm betting
you all I could find any number of BASIC games, besides PING, that relied on
Bounce-Back to give some semblance of feedback reality for the gamer.

I hereby sentence the USPTO patent application examiners and courts to a life
sentence of inputting BASIC code into CP/M emulators, for the crime of insulting
the intelligence of the average human, so they can understand just what
"bounce-back" is - and if they dispute this sentence, I'll make the
sentence heavier by requiring them to do the same in COBOL on OS/360 on a
System/360 emulator.

I don't know!!!!! A Great White Shark shows more courtesy ...

Wesley Parish

[ Reply to This | # ]

Pulling it all together
Authored by: Ian Al on Sunday, July 14 2013 @ 07:30 AM EDT
We should follow the Supreme Court's instructions to start with §101.

We know that the patented invention is an improvement to an existing machine. Apple point out that Samsung could have improved their existing machines (smartphones) without infringing on Apple's inventive concept and Samsung claimed to have revised the new components (the software) so that it no longer infringed.

As final confirmation that it is not a process or method patent, there is no post process activity. When the app. stops, all evidence of the operation of the invention ceases. The electronic document is not changed in any way. The finger swipes just leave a greasy mark on the screen. If it is a process or method of any kind, it does not produce a resulting manufacture, material or process product.

The patented invention is the improvement of an existing machine by the addition of instructions in memory which include, among other things,

  • instructions for detecting a movement of an object on or near the touch screen display
  • instructions for displaying an area beyond an edge of the electronic document and displaying a third portion of the electronic document... in response to the edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch-screen.

    The patent uses the ability of the persons skilled in the art to create the required instructions in memory.

    From Fonar v. GE:
    As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.
    In line with Fonar, only the functions of the improved machine are given in the patent. The software writer should be able to write the software once the required functions are known.

    Judge Alito, Supreme Court, Microsoft v. AT&T:
    I agree with the Court that a component of a machine, whether a shrimp deveiner or a personal computer, must be something physical. This is because the word “component,” when concerning a physical device, is most naturally read to mean a physical part of the device...

    The physical form of the Windows program on the master disk, i.e., the engravings on the CD-ROM, remained on the disk in a form unchanged by the copying process. See Brief for Petitioner 4, n. 2 (citing White, How Computers Work, at 144–145, 172–173). There is nothing in the record to suggest that any physical part of the disk became a physical part of the foreign-made computer, and such an occurrence would be contrary to the general workings of computers.

    Because no physical object originating in the United States was combined with these computers, there was no violation of §271(f). *
    *
    *
    Because the physical incarnation of code on the Win- dows CD-ROM supplied from the United States is not a “component” of an infringing device under §271(f), it logically follows that a copy of such a CD-ROM also is not a component.
    The patent claims 'one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the programs including [instructions in memory]'. As was explained by the Supreme Court judge, above, the instructions put in memory are not combinable components of an improved machine. Anyone putting the instructions in a computer is not adding combinable components to the computer. Neither are existing components changed by the adding of instructions. If the existing machine has not been improved with added combinable components and the existing components have not been materially changed, then the existing machine has not been improved in a manner that satisfies §101.

    Even if this were not so, the claims are for 'instructions for detecting a movement of an object on or near the touch screen display'. The touchscreen display detects the presence of one or more touches or the close proximity of a finger. The data about this is copied to the memory of the smartphone. The touchscreen display does not detect movement. Neither can the processor instructions. The processor instructions can only manipulate symbols representing the data passed to it from the touchscreen. Since the whole of claim 19 claims functions ties to the detection of movement by computer instructions, it claims the impossible.

    In addition, the electronic documents do not contain edges. The software generates the illusion of edges and areas beyond edges. The software is programmed to generate the appearance of edges and moving documents. The instructions in memory cannot display
    a third portion of the electronic document...in response to the edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch
    because the instructions cannot 'reach' the edge of the electronic document. The software is written to give the illusion of a document with edges that moves. The instructions just display whatever the source code tells it to display. The instructions cannot 'reach' anything. Again, it claims the impossible. The person skilled in the software arts just assumes that they are to create the illusion of document movement caused by finger swipes and the edge of documents being reached. Claims are not permitted to use anything but exact terms (see the § 112 quote, below).

    The claims of the patent are impossible claims. The claims cannot be met by the use of computer instructions in a memory.

    Even if this were not so, we know that it is the functions of the invention that must contain the patented inventive concept because the means was left to those skilled in the software arts. Without an inventive concept, a patent cannot be awarded (see the quotation from Flook, below).

    The creation of the illusion of moving text or images on a screen was invented by the Victorians. The slide projector created illusions of animation and movement that went way beyond the simple functions described in this patent. The movement was, in part, achieved by a finger gesture. They could easily have added bounce-back by inserting a sprung slide stop. They did not, because it was not useful. Even if the instructions of the patent claims were combinable components which resulted in the bounce-back function it serves no useful purpose. As Apple points out, Samsung could have written software that served the same purpose equally well without the bounce-back. It is there only for visual effect, for appearance sake, for cosmetic rather than useful reasons. This fails the 'useful' requirement of §101.

    Even if this were not so, the invention would have been obvious to the Victorians. Thus, it also fails later sections of the statute.

    However, perhaps this physical phenomena of bounce back qualifies when narrowed to the technology of a smartphone with a multi-touch screen. From Bilski v. Kappos:
    Flook stands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant postsolution activity.” (Diehr).
    Although they narrow the application of the invention to a multi-touch smartphone, the invention is about the illusion of moving electronic documents under finger control. The functions given in the specification and claims are all related to the illusion. Illusions, by definition, are not tied to machines even if machines can be used to create the illusion. Illusions are abstract ideas and Flook explains that these are unpatentable even if limited 'to a particular technological environment'.

    Even if this was not so, the claims are not process, machine, manufacture, or composition of matter claims and are not statutory matter under §101. Although Apple claim it is a machine invention infringed by Samsung's machines, it is actually an invention of an illusion.

    Can illusions be patented? Yes they can! Most magic trick illusion patents are of apparatus or props (aka, machines). There is a method patent for the illusion of threading a solid loop on to a chain (a method or process patent). From Parker v. Flook:
    "`A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.' Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." 409 U.S., at 67 .
    Apple attempt to patent the abstract intellectual concept of giving the user of a machine the illusion of documents that can be moved with the touch of a finger. Both Apple and Samsung have created the illusion using multi-touch displays and computer software. Apple make no attempt to claim the means by which this abstract illusion is created because anyone skilled in the software arts, especially smartphone apps, can create the illusion. Apple attempt to patent the illusion, itself. This is not permitted by §101 and the judicial exclusions.

    Even if this were not so, the patent fails under § 112 - Specification:
    (a) In General.— The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
    The terms in the patent claims are not 'full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same' because they claim instructions in memory carrying out impossible functions and elements of electronic documents that do not exist. Just because people skilled in the software arts can guess that Apple are referring to the creation of an illusion in the mind of a computer user rather than the actual working of the processor, that does not excuse them from the legal requirements of § 112.

    The reason why they are still talking in court is because the expert witness is an expert in the writing of computer software. He knows that the software in a computer not actually controlling an external machine is always creating an illusion for the computer user. That is true even if that illusion informs and delights the user in a real way as with the display of Groklaw electronic documents.

    The software expert is not aware of the law (esp. § 112) and the rest of the court is not aware of the facts about the technology and what it can or cannot do.

    Please excuse me: I need to move this document down the screen by rotating the scroll wheel on my mouse until the instructions in memory detect the top edge of the document and bring it to a halt.

    ---
    Regards
    Ian Al
    Software Patents: It's the disclosed functions in the patent, stupid!

    [ Reply to This | # ]

  • Update 4
    Authored by: dio gratia on Tuesday, July 16 2013 @ 12:32 PM EDT
    Thanks very much for following the trail of the reexamination proceedings
    through update 4.

    [ Reply to This | # ]

    • Update 4 - Authored by: PJ on Tuesday, July 16 2013 @ 08:22 PM EDT
    What mystery?
    Authored by: Anonymous on Tuesday, July 16 2013 @ 01:53 PM EDT
    "Mystery solved. What a snake move this is. Anyone recall Apple saying any
    of these limitations at trial when describing Samsung's alleged infringement? If
    so, cite page and line number of the transcript. Because I remember nothing
    quite like this."

    Yes, Apple says these limitations in the questions and answers of their expert
    included in Update 2.

    The discussion of claim 19 seems to begin on page 1742, which acrobat reports as
    page 321 of the linked document. Its a quick read, I suggest you start there.
    The discussion of the require instructions and an assertion that they were found
    in Samsung products begins on page 1748/327, near the bottom.

    [ Reply to This | # ]

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