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Samsung Tells the Court: USPTO Final Office Action Finds All 21 Claims of Apple's '915 Patent Invalid ~pj Updated |
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Sunday, July 28 2013 @ 10:17 AM EDT
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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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Authored by: Kilz on Sunday, July 28 2013 @ 10:27 AM EDT |
Please list the mistake in the title of your post. [ Reply to This | # ]
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Authored by: Kilz on Sunday, July 28 2013 @ 10:28 AM EDT |
For all posts that are not on topic. [ Reply to This | # ]
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Authored by: Kilz on Sunday, July 28 2013 @ 10:30 AM EDT |
Please mention the news story's name in the title of the top
post. A link back to the story in that post is a good idea
because they do fall off the home page.[ Reply to This | # ]
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Authored by: Kilz on Sunday, July 28 2013 @ 10:31 AM EDT |
Please post all transcriptions of Comes exhibits here for PJ.
Please post the html in plain old text mode so she can easily
copy it.[ Reply to This | # ]
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Authored by: kawabago on Sunday, July 28 2013 @ 12:06 PM EDT |
The judge is there, at least in part, to uphold the rules of
the court. Patent law breaks the rules all over the place all
the time. So does she uphold the rules of the court or wait
for the patent system to go through it's contortions?
Following the rules of the court and letting the patent
system problems be resolved on appeal may be the most
expeditious use of her time.[ Reply to This | # ]
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Authored by: Ian Al on Sunday, July 28 2013 @ 12:13 PM EDT |
35 USC § 112 - Specification:
(b) Conclusion.— The specification
shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention.
So, if the USPTO invalidates some of the claims,
does this not mean that some of the invention is not the invention of the
patent applicant?
If there is only a couple of claims left, doesn't
that mean that the patenter is a few claims short of an invention?
If a
significant proportion of the claims 'particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention' be rejected, should not the invention be re-examined
against §101 as directed by the Supreme Court in Mayo.
If any part of
the claims in a patent are rejected, the conclusion must be that part of the
invention is not that of the patent applicant and the whole patent should be
rejected or rewritten and resubmitted. That should reset the clock on the
effective date of any patent awarded.--- Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | # ]
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Authored by: Anonymous on Sunday, July 28 2013 @ 12:37 PM EDT |
Says it all... [ Reply to This | # ]
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Authored by: Anonymous on Sunday, July 28 2013 @ 12:41 PM EDT |
So, it's true - the USPTO DOES has 1/2 a brain! :-) [ Reply to This | # ]
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- Not true - Authored by: Anonymous on Sunday, July 28 2013 @ 10:26 PM EDT
- Not true - Authored by: Anonymous on Monday, July 29 2013 @ 08:58 AM EDT
- Not true - Authored by: Anonymous on Monday, July 29 2013 @ 05:00 PM EDT
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Authored by: tz on Sunday, July 28 2013 @ 03:08 PM EDT |
I do find it strange there is no "Groklaw" for the Mortgage mess,
since the USPTO seems to do something like robosigning.
In this case just rubber stamp patents until someone objects. Then they really
examine them.
As to the trial, what would the Honorable Koh do if there was a trespassing
charge, and later they found that the deed specified a different boundary line
where the alleged trespasser didn't go?
To return to the mortgage mess, who actually owns the property, the debt, has
standing to foreclose is similarly getting very fogged. Some people buy
"foreclosures" that turn out to be the wrong property (in some cases
one never mortgaged, or where it was paid off but the paperwork got stuck, but
there were all these notarized affidavits saying the foreclosure was
needed...).
Maybe this is where "Trial and Error" comes from.[ Reply to This | # ]
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- Delegation - Authored by: Anonymous on Sunday, July 28 2013 @ 10:51 PM EDT
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Authored by: tz on Sunday, July 28 2013 @ 03:13 PM EDT |
My only problem with saying "The Jury got it wrong", is that the Jury
decided on what they were presented at the time, and the patent was not
invalidated at the time, and then who has the better presumption of being able
to determine a patent is valid, the USPTO or a jury? The jury decides on
"facts", but those are the facts presented at trial.
I would rather presume the Judge and magistrates and such got it wrong by
allowing or disallowing evidence, witnesses, or other things so as to present
what amounts to a wrong directed verdict.
It is somewhat a gray error, and yes, it appears there was Juror misconduct, but
every lie or error the jury is presented as a fact unbalances the scales.
[ Reply to This | # ]
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Authored by: Anonymous on Sunday, July 28 2013 @ 09:39 PM EDT |
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.
Last time, with
the bounce-back patent, Apple simply asked for a slight
reinterpretation and
the PTO rolled over. Apparently final office actions don't
really mean anything
at the PTO. We should expect Apple will be able to flip this
one back to being
valid again using the same techniques.
According to Apple's brief last time,
their counsel seems to think there are
years of potential back-and-forth and I
didn't see any specific limit that the PTO
is committed to where they cannot
open further review and re-validate a patent
just because it's been previously
invalidated.
So just what is the court supposed to do in the face of
unlimited, unbounded
administrative uncertainty? Perhaps judges will just run
their trials with invalid
patents and then dump the results in the lap of the
Federal Circuit to untangle.
Faced with enough messy cases of this kind, the
Federal Circuit is likely to
impose some kind of order on the PTO
eventually.
Additionally, I don't see why Apple's lawyers are considered
"fancy" here. Is it
because -- unlike Samsung's Quinn Emmanuel -- they could
meet the deadlines
to submit evidence and qualify experts? Maybe it's because
they're not
responsible for allowing a juror with a documented vendetta against
their clients
to pass voir dire in a ten figure damages trial. Or it
could be that that
same juror was an admitted holder of the same kind of
garbage patent Samsung
was litigating against and Apple managed to get him on
the jury over Quinn
Emmanuel's gaping obliviousness.
Sometimes I think
Samsung should be fined a billion dollars just for failing to fire
these guys. [ Reply to This | # ]
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Authored by: Anonymous on Sunday, July 28 2013 @ 10:40 PM EDT |
"I fail to understand why I should be motivated to induce my
mother to purchase falsified patents," said Mister Spock to
Harcourt Fenton Mudd III.[ Reply to This | # ]
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Authored by: Anonymous on Sunday, July 28 2013 @ 10:55 PM EDT |
The foreman withheld material facts in voir dire that would
clearly have disqualified him. He said so himself after the
trial. He admitted to bias in the news media. Beyond that,
investigation uncovered a bitter past dispute between the
foreman and...wait for it...Samsung.
It's not a fair trial if the jury is rigged.[ Reply to This | # ]
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Authored by: bbmaniac on Monday, July 29 2013 @ 05:08 AM EDT |
I thought in a recent article that Samsung had filed with
the court that it had just found out that the Patent office
had just issued a Final ruling on this patent and that it
was redefined by Apple and was asking for a retrial?
Did Samsung provide evidence of prior art to that "Final"
ruling or what happened? I keep hearing there are "Final"
rulings from the Patent office when in fact they are
anything but.
This Final ruling by the Patent office has been ping-ponging
for a while it seems. I assume that Apple will still get to
appeal the Patent office's Final Final Final ruling???
Another chance to say what the patent "really" means...[ Reply to This | # ]
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Authored by: ailuromancy on Monday, July 29 2013 @ 08:37 AM EDT |
... all she has to do is stay the proceedings until after all the
patents
have been invalidated. [ Reply to This | # ]
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Authored by: ukjaybrat on Monday, July 29 2013 @ 08:50 AM EDT |
"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?"
It appears Koh doesn't care about justice or fairness - she
just wants to expedite this case to appeals so she can be done
with it. Samsung, although wishing she would budge at least a
little, is just building up for a home run in appeals.
---
IANAL[ Reply to This | # ]
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Authored by: Anonymous on Monday, July 29 2013 @ 09:30 AM EDT |
A "Final Office Action" is not "final" in the ordinary
sense. It is just a name given to a particular stage in the examination
process. After a Final Office Action (if the finality is actually appropriate)
the options available to the applicant or patentee are limited, but the
proceedings are not over. It is not unusual to have 21 claims finally rejected
and then have errors the examiner made pointed out to her or her supervisor and
have the application allowed.[ Reply to This | # ]
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- For Example - Authored by: Anonymous on Monday, July 29 2013 @ 10:05 AM EDT
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Authored by: Anonymous on Monday, July 29 2013 @ 09:34 AM EDT |
So, does this mean that both Apple and Samsung may be practicing 7,724,242 (one
of the prior art references), potentially without a license?
I have always wondered if finding prior art in a patent is a double-edged-sword.
While it may get you out of the current patent case, everyone now knows that
there is prior art, and that there is the potential that your device may be
practicing the invention described in the prior art. It would seem that the
prior art would be a very attractive purchase for a troll, and then you are back
in a courthouse again.[ Reply to This | # ]
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Authored by: Anonymous on Monday, July 29 2013 @ 11:33 AM EDT |
"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."
Or she could have done
the intelligent thing that Samsung
suggested at the beginning: delay the
infringement trial
until the final rulings by the USPTO were complete. But
since she couldn't show any sort of backbone in front of
Apple, I guess now
we're stuck where we are.[ Reply to This | # ]
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Authored by: BJ on Monday, July 29 2013 @ 07:14 PM EDT |
"So did the judge. They simply ignored them."
End quote
I love ya.
bjd
[ Reply to This | # ]
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