Samsung's lawyers push for damages to be vacated amid invalidity findings

In Apple, Inc.'s (AAPL) mind, it invented much of the technology powering smartphones and the rest of the industry -- including Google Inc.'s (GOOG) Android -- are cheap imitations at best.  The company raised eyebrows when it scored a series of patents that appeared to either overlap with preexisting patented art (e.g. smartphone unlocking) or mimic natural phenomena.

I. Another Nail Goes in the Coffin

While current precedent in the U.S. patent system forbids patents on laws of nature, Apple nonetheless appeared to score a very broad patent covering all transient-response style smartphone animations.  Perceived as a stretch-and-bounce, these UI animations mirror the mechanical response in real-world objects like springs.

While patenting bouncing animations might seem a bit like if Rovio tried to patent gravity in video games, Apple successfully used the patent to convince a group of Californian jurors that its archrival Samsung Electronics Comp., Ltd. (KSC:005930) had "slavishly" copied its intellectual property.  Samsung was ordered to pay a hefty $1.05B USD for the offense.

But the U.S. Patent and Trademark Office (USPTO) struck a blow to Apple's litigious dreams last October when it filed a First Office Action to invalidate the controversial U.S. Patent No. 7,469,381, citing prior art.

The Samsung Galaxy S II and dozens of other Samsung smartphones were found to infringe on the '381 "bounce" patent, but that patent has now been invalidated.

This week the office put another coffin nail in place for the '381 patent, filing a Final Office Action to kill the patent.  In the filing, lead examiner Dennis Bonshock complained that Apple did not sufficiently address the concerns raised in the first invalidation filing.  

USPTO Final Office Action in Samsung v. Apple

Apple's sole remaining hope to save the patent is to appeal the decision to the Patent Trial and Appeal Board (PTAB), a panel that reviews the office's patent decisions.  This is somewhat of a long-shot. While First Office Actions are sometimes rolled back, its rarer to see a Final Office Action reversed.

PTAB decisions can be appealed to the United States Court of Appeals for the Federal Circuit, but again reversals are extremely rare at that level.

II. '381 Patent was Key in Win Over Samsung

As Samsung was found guilty of infringing the '381 patent on 21 devices -- the Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Ace, Galaxy Prevail, Galaxy S, Galaxy S 4G, Galaxy S II (AT&T), Galaxy S II (i9100), Galaxy Tab, Galaxy Tab 10.1 (Wi-Fi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Replenish, and Vibrant -- the invalidation could save the Apple's rival hundreds of millions in damages.

Samsung filed notice with Judge Lucy Koh of the U.S. District Court for the Northern District of California of the invalidation.  Samsung's lawyers are urging Judge Koh to vacate the jury verdict, in lieu of the invalidation rulings.

USPTO office
The USPTO has been cleaning house invalidating a number of seemingly broad Apple patents.

Apple's U.S. Patent No. 7,844,915 which covers pinch-to-zoom/one-fingered scrolling and U.S. Patent No. 7,479,949, which covers "multitouch heuristics" have also received Preliminary Office Actions from the USPTO invalidating them.  The pinch-to-zoom gesture had been developed by university researchers in the 1980s (namely Myron Krueger's team at the University of Toronto) and widely publicized, but Apple patented it under the guise of being the first to implement it on a capacitive multi-touch device.

Early multitouch devices
Myron Krueger developed pinch-to-zoom [pictured] in the 1980s. [Image Source: Bill Buxton]

The Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Ace, Galaxy Prevail, Galaxy S, Galaxy S 4G, Galaxy S II (AT&T), Galaxy S II (i9100), Galaxy Tab, Galaxy Tab 10.1 (Wi-Fi), Gem, Indulge, Infuse 4G, Mesmerize, Nexus S 4G, Transform, and Vibrant -- 21 more Samsung devices -- infringe on the '915 patent.

III. Apple May Lose Most of Its Epic Court Win

Removing those patents, only U.S. Patent No. 7,864,163 -- a patent on touch UI elements -- remains on the utility side.  Fewer Samsung devices were found to infringe on that patent, so asuming the invalidations stick, Samsung would likely pay less than a third of its current utility-sourced damages.  Samsung is also on the hook for infringing on Apple's design patents for a handful of devices.

Judge Koh has thus far only agreed to vacate $450.5M USD of the damage total and hold a new damages trial, on the grounds that the jury made an error in calculating damages.  She has not yet agreed to reevaluate the overall jury verdict, though she did toss out the jury's assertion that Samsung's infringement was "willful".

Judge Koh
Judge Koh [Image Source: IB Times]

Samsung argued that it thought the patents it infringed on were invalid and Judge Koh bought that argument.  Now it looks like Samsung was right -- a number of the patents are indeed invalid.

Sources: Samsung [Scribd via CNET], CNET

“Then they pop up and say ‘Hello, surprise! Give us your money or we will shut you down!' Screw them. Seriously, screw them. You can quote me on that.” -- Newegg Chief Legal Officer Lee Cheng referencing patent trolls

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