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Samsung Tells the Court: USPTO Final Office Action Finds All 21 Claims of Apple's '915 Patent Invalid ~pj Updated
Sunday, July 28 2013 @ 10:17 AM EDT

Samsung has just notified [PDF] the US District Court in Northern California that, according to another USPTO Final Office Action, Apple's '915 patent has been found invalid on reexamination. All 21 claims of the '915 patent bit the dust, as you can see in Exhibit A [PDF], the USPTO documents The issue is prior art and obviousness. So, the jury in Apple v. Samsung got another thing wrong, I see. Apple didn't invent gestures.

Here's what Samsung tells the court:

This Final Office Action by the USPTO is relevant because it rejects all claims of the ’915 patent as being anticipated or obvious in view of U.S. Patent No. 7,724,242 to Hillis (“Hillis,”), Japanese Publ No. 2000-163031A to Nomura (“Nomura,”), and other prior art references. This final rejection includes claim 8, which is the only claim of the ’915 patent at issue in this action. The jury found at trial that 21 of 24 accused Samsung products infringed claim 8 of the ’915 Patent—specifically the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Prevail, Galaxy S (i9000), Galaxy S 4G, Galaxy S II (AT&T), Galaxy S II (i9100), Galaxy S II (T-Mobile), Galaxy Tab, Galaxy Tab 10.1 (WiFi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Transform, and Vibrant. The jury awarded damages as to all products found to infringe the ’915 patent except the Galaxy S (i9000) and Galaxy S II (i9100). The new trial on damages scheduled to begin November 12, 2013 includes 12 products that the jury held to infringe claim 8 of the ’915 Patent—specifically the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Galaxy Prevail, Galaxy Tab, Gem, Indulge, Infuse 4G, Nexus S 4G, and Transform. (See Dkt. No. 2271 at 26; Dkt. No. 2316 at 2.)
Apple's fancy lawyers can contact the USPTO now and argue against this final office action by telling them the patent doesn't mean what they said it means at trial or whatever Apple tries next. But one thing is for sure: the judge was right to rule that Samsung wasn't intending to infringe. It genuinely, and now appropriately, believed Apple was bullying Samsung with some questionable patents. That's the best you can say for them now. Unfortunately, Samsung ran into a jury that didn't know how where up is and seemed to worship the ground Apple walked on. So they decided to "send a message", they said, and punish Samsung. For infringing some apparently invalid patents, as it now turns out. Actually, we at Groklaw told you these patents were ridiculous at the time, that patents on algorithms should not be allowed as patentable subject matter in the first place. That is the central problem in US patent law.

This judge, the Hon. Lucy Koh, has expressed that she strongly feels that reexaminations are annoying, that defendants should just accept jury verdicts and swallow. Why should patent owners get a do-over when other types of litigation doesn't offer them, she asked in a speech at a recent conference? I will answer her question. First, because some of these patents incompetent juries are awarding buckets of money for are not valid, even if the judge didn't see it and block such unfairness. Fairness is what courts are supposed to be for, no? And second, because the law allows for it. Why wouldn't it when the statistics for invalidity of issued patents are so ridiculously high? Copyright is different. You either own them or you don't, and the other guy either copied them or he didn't, subject to fair use and other minor alterations. But there is no need for a do-over in a world where your copyright is either registered or it isn't.

So now the Hon. Judge Lucy Koh has before her two patents that are, at best, highly questionable, leading to a pending Samsung motion for a new trial on Apple's '381 patent, which squeaked by a Final Office Action of invalidity by, Samsung claims, altering the construction of claim 19, the only claim in dispute in this litigation. That, Samsung has argued, is new evidence, justifying a new trial.

Judge Koh can take all this two ways. Either she can get annoyed and see this as Samsung thrashing around trying to delay or avoid the inevitable. Or she can ask herself if maybe the evidence is mounting that there really is something wrong with Apple's wobbly patents. The world is watching, and as Joseph Stiglitz pointed out in a recent New York Times opinion piece, so far, this court seems to "consistently favor the home team." Given human nature, however, and considering how hard it is for the best of us to admit we were wrong, I'm not exactly holding my breath on the new trial. But this new USPTO action should matter. The jury awarded a lot of money, judging that 21 of the 24 Samsung products claimed to infringe did in fact infringe. If the patent is invalid after all, Samsung shouldn't have to pay one thin dime. That's simple fairness. Earlier, Samsung, pointed out [PDF] to the judge that that, in itself, made no sense, because all 24 products did the same thing in relation to this patent:

A new trial is also necessary due to inconsistencies in the jury’s verdict on the ‘915 patent. The jury found that the Ace, Intercept, and Replenish devices do not infringe the ‘915 patent but the remainder of the accused devices do. These verdicts are irreconcilably inconsistent, for the Ace, Intercept and Replenish exhibit the same behavior as devices found to infringe, including the Droid Charge, Indulge, Epic 4G, Infuse 4G, Transform and Prevail. The same Android version found in the non-infringing Ace (Android 2.2.1) and the Intercept and Replenish (Android 2.2.2) are found in these other devices which the jury found to be infringing. A new trial is therefore warranted under Fed. R. Civ. P. 49. Los Angeles Nut House v. Holiday Hardware Corp., 825 F.2d 1351, 1356 (9th Cir. 1987).
Not that the judge listened. The damages trial was set for November 12, with a proviso that Samsung could submit a new motion for a stay, if the USPTO did not reopen the reexaminations on the two Apple patents in question, the '381 and the '915, then Samsung could submit a new motion asking for a stay. There is no guarantee that she'd rule favorably on such a motion, however. Specifically, she ruled regarding the '915 patent:
Similarly, if the USPTO issues a final office action finding claim 8 of the ’915 patent invalid, and does not re-open the prosecution of the ’915 reexamination following Apple’s response to the final office action, Samsung may re-new its motion for a stay of the new trial on damages as to the ’915 patent.
So, it's a game of timing. If Apple can find a way to delay the USPTO's decision to reopen, after this Final Office Action and Apple's response to it, then the damages trial goes forward willy nilly, at least according to her order -- and that's even if the USPTO decides to reject any Apple arguments one week after the damages trial and the Final Office Action stands. I know. It sounds ridiculous.

Judge Koh's M.O. has been to let any adjustments happen on appeal, not in her courtroom. But if the USPTO acts prior to November and doesn't reopen the issue based on whatever Apple comes up with to try to save this patent, Samsung can ask for a new trial on this patent.

Even if Apple challenges this, the time involved is a matter of months, according to page 60 of Exhibit A. Clever lawyers find a way, sometimes, though, you may have noticed, despite the written rules and procedures the rest of us get. Would it turn the known universe upside down to just wait for a matter of months, even six months, to make sure a gross unfairness is not the result?

Update: For those of you who may be thinking that the poor jury are not patent experts, so how would they know if a patent is invalid, I would remind you that Samsung's experts offered testimony at trial that matches what the USPTO just found to be lethal for Apple's '915 patent. In Samsung's earlier, failed motion for judgment as a matter of law or, in the alternative, for a new trial, Samsung listed these facts:

A. No Reasonable Jury Could find Apple's Utility Patents Valid

No reasonable jury, applying correct standards, could find Apple's utility patents valid. Samsung's expert testified that Fractal Zoom and Nomura, which both scroll or zoom by distinguishing between one or two or more input points, anticipate or render obvious every limitation of claim 8 of the '915 patent. RT 2897:12-2902:5, 2908:1-7, 2903:15-2907:25 (Gray invalidity testimony). The record contains no evidence to support any contrary finding. There is also no dispute that Fractal Zoom and Nomura are l02(a) and (b) prior art to the '915 patent. RT 228514-2290:20; 2275224-2290220, 2350:15-2357:l8, 236218-2366119; 290226-24; DX 550 (Bogue, Forlines and Gray testimony establishing prior art dates)....

Separately, the record does not support any infringement of the '915 patent because the event object does not cause a scroll or gesture operation as required by claim 8. Dkt. 1158 at 20; RT 2910:18-22; 2911:6-2912:1. Apple identified the MotionEvent object in Samsung's devices as the claimed event object (RT 1821:25-1822:17), but it is the WebView object, not the MotionEvent object, that causes the scroll or gesture operation; the MotionEvent object causes nothing. RT 2911:6-2912:1 (Gray non-infringement testimony). Apple admits that the "all-important test" for infringement of the '915 patent is found in the limitation "distinguishing between a single input point...that is interpreted as the scroll operation and two or more input points...that are interpreted as the gesture operation." RT 1826:12-15; 1857:2-24 (Singh testimony). But that limitation is not satisfied: because a device that scrolls with two fingers does not meet this test (RT 2896:5-12, 2912:2-19; 1860:15-1862:10), some Samsung products allow for such scrolling (RT 1862:22-1865:9; 2912:2-19), and the record contains no evidence of any that do not, the jury could not find infringement of the '915 patent.

A new trial is also necessary due to inconsistencies in the jury's verdict on the '915 patent. The jury found that the Ace, Intercept, and Replenish devices do not infringe the '915 patent but the remainder of the accused devices do. These verdicts are irreconcilably inconsistent, for the Ace, Intercept and Replenish exhibit the same behavior as devices found to infringe, including the Droid Charge, Indulge, Epic 4G, Infuse 4G, Transform and Prevail. The same Android version found in the non-infringing Ace (Android 2.2.1) and the Intercept and Replenish (Android 2.22) are found in these other devices which the jury found to be infringing. A new trial is therefore warranted under Fed. R. Civ. P. 49. Los Angeles Nut House v. Holiday Hardware Corp., 825 F.2d 1351, 1356 (9th Cir. 1987).

No reasonable jury could have found infringement of the '381 patent either. The Court previously found the claims of this patent to require the electronic document to always snap back. Dkt. 452 at 58-60. Samsung's products do not do so, using instead a "hold still" feature which Apple's expert admitted does not infringe. RT 1792:16-1793:7; 1796:22-1797:7 (Balakrishnan non-infringement testimony). This feature does not translate the electronic document into a second direction, as required by the last limitation of Claim 19. RT 1791:14-1799:4. Samsung's products also exhibit a "hard stop" behavior, wherein they do not display an area beyond the edge of the electronic document at all. Apple admits this "hard stop" behavior does not infringe the '381 patent. RT 1785:19-1787:3 (Balakrishnan non-infringement testimony). Accordingly, judgment of non-infringement should enter.

So the jury had the uncontradicted facts. So did the judge. They simply ignored them. The judge could have fixed that herself by granting the motion for judgment as a matter of lw, or she could have allowed a new trial. She did neither.

And as for a fair trial, here's some of what Samsung listed as problems in the trial:

Rule 59 permits the Court to grant a new trial to prevent manifest unfairness. Here, the Court's restraints on trial time, witnesses and exhibits (Dkt. 1297, 1329) were unprecedented for a patent case of this complexity and magnitude, and prevented Samsung from presenting a full and fair case in response to Apple's many claims. Denial of Samsung's "empty chair" motion (Dkt. 1692, 1721) compounded the problem, enabling Apple to exploit Samsung's absent witnesses to repeated advantage at trial. RT 3348:14-17; 4080:3-6; 4090:2-4; 4095:7-14; 4232:15-22.

Samsung was also treated unequally: Apple's lay and expert witnesses were allowed to testify "we were ripped off" and "Samsung copied" (RT 509:11-510:22; 659:2-664:19; 1957:15-21; 1960:15-1963:1), while Samsung's witnesses were barred from explaining how Samsung's products differ from Apple's (RT 850-12-851:20; 2511:9-2515:5), or even how one Samsung product differs from another (RT 948:14-950:17). Samsung was required to lay foundation for any Apple document (RT 524:15-525:19; 527:3-12), while Apple was not (RT 1525:12-1526:7; 1406:11-1410:8; 1844:16-1845:8; 987:21-988:20; 2832:6-12). Apple was permitted to play advertisements (RT 641:6-642:16; 645:14-646:7), but Samsung was not (Dkt 1511). And Apple had free rein to cross-examine Samsung's experts based on their depositions, but Samsung did not. RT 1085:6-11; 1188:9-15; 1213:17-1220:5. In the interests of justice, Samsung therefore respectfully requests that the Court grant a new trial enabling adequate time and evenhanded treatment of the parties.

And, finally, the docket:
2346 - Filed & Entered: 07/24/2013
Order on Administrative Motion to File Under Seal
Docket Text: Order by Hon. Lucy H. Koh granting [2204] Administrative Motion to File Under Seal.(lhklc3, COURT STAFF) (Filed on 7/24/2013)

2347 - Filed & Entered: 07/24/2013
Declaration in Support
Docket Text: Declaration of James Shin in Support of [2344] Administrative Motion to File Under Seal Apples Motion To Seal Regarding Apple Inc.s Motion To Modify April 29, 2013, Case Management Order Excluding Evidence Of Certain Infuse 4G Sales Or, In The Alternative, For Leave To Seek Reconsideration Of T Declaration of James Shin in Support of Apple's Administrative Motion to File Under Seal filed bySamsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Related document(s)[2344]) (Maroulis, Victoria) (Filed on 7/24/2013)

2348 - Filed & Entered: 07/26/2013
Notice of Change In Counsel
Docket Text: NOTICE of Change In Counsel by Deok Keun Matthew Ahn (Ahn, Deok Keun) (Filed on 7/26/2013)

2349 - Filed & Entered: 07/28/2013
Statement of Recent Decision
Docket Text: STATEMENT OF RECENT DECISION pursuant to Civil Local Rule 7-3.d Regarding Final Office Action by the USPTO Rejecting U.S. Patent No. 7,844,915 filed bySamsung Electronics Co. Ltd.. (Attachments: # (1) Exhibit A)(Maroulis, Victoria) (Filed on 7/28/2013)


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