The U.S. Patent and Trademark Office this week rejected multiple claims from Apple over one its patents, including one that Apple recently accused Samsung of infringing, according to a court filing. The decisions could jeopardize at least part of a $119 million court judgment Apple won against Samsung in May.
The USPTO ruled that a pair of patents had anticipated a claim of Apple's U.S. Patent No. 8,074,172. That patent, better known as the "auto-complete" patent, describes the technique of prompting words as users input text into devices.
Samsung filed a notice of the USPTO decision in the U.S. District Court for the Northern District of California. Judge Lucy Koh had ruled in May that Samsung owed Apple $119 million for infringing on two of five patents Apple had accused Samsung of violating. If Koh now finds that Apple's claim relating to the auto-complete patent is not valid, it could also invalidate part of Apple’s win.
Done Fighting Outside US
Intellectual property analyst Florian Mueller, writing on his Foss Patents blog, said, "Judge Koh had ruled on summary judgment (i.e., ahead of the spring trial) that Samsung infringed (Apple’s patent) -- but infringement of an invalid patent doesn't matter."
The decision by the USPTO in the ex parte re-examination (a judge’s decision that doesn’t require the presence of the parties in the dispute) is not final. Apple still has appeal options, though the company has remained mum on whether it will pursue those options. Since Apple's patent has not been deemed invalid, Apple could present further to defend the patent.
Both Apple and Samsung have said recently that they were ending their patent litigation outside the United States. The companies have also agreed to drop their appeals against each other with the U.S. International Trade Commission. Disputes within the U.S. will likely continue.
Disputes Going Back
Samsung's filing stated that it was bringing the USPTO decision to the attention of the court because the company felt it was relevant to its defense in connection with the auto-complete patent. The filing did not address implications of the USPTO decision on the damages award against the company.
In July, Samsung asked the court to invalidate claims of two other Apple patents. The Apple patents under question then were its "slide-to-unlock" patent and its "universal search" patent. Samsung products were only found to infringe the slide-to-unlock patent.
Apple calls its auto-complete technology, "Method, device, and graphical user interface providing word recommendations."
Apple and Samsung have been tussling in court over patent infringement issues since April 2011, when Apple filed suit in the Northern District of California accusing Samsung of copying the design and feel of its iPhones and iPads with its Android devices.
Posted: 2014-08-09 @ 5:07am PT
Apple's mercenaries will "Fight on For Contingency Fee". Maybe Stanford's Band should play that tune at halftime of the USC game this fall.