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In an unexpected twist to the ongoing legal battle between Apple and its Korean rival Samsung, the US Patent and Trademark Office yesterday declared Apple’s ‘381 patent for “rubber banding” or “bounce-back scroll” invalid. This decision flies in the face of the now-infamous August jury decision that ‘381 is not only a valid patent, but that Samsung willfully infringed it on all devices Apple claimed damages against.
The announcement is not the unforeseeable bombshell that much of the tech world is branding it, though. First, the announcement was merely a “non-final Office action”, meaning the decision is far from indisputable and should it stand, is still months away from finality. Samsung has pounced upon the opportunity nonetheless, filing it with Judge Lucy Koh, the judge who presided over this summer’s high-profile trial. Judge Koh is currently hearing appeals from both companies to override the jury’s decision.
The decision is also not as unexpected as it seems to the public. Scott Daniels, an IP lawyer, reported an anonymous re-examination request on patent ‘381 in May. Google and Samsung are the obvious suspects, but the identity of the challenger does not matter. Since the challenges are publicly available, both Apple and Samsung doubtless knew the patent was under review.
This is the second victory for Samsung since the jury gave Apple a sweeping victory on August 24th, at which point Samsung owed Apple $1.05 billion and was blocked from selling its Galaxy Nexus devices in the US. Samsung appealed the decisions separately and on October 11th, however, a US Appeals Court “reversed and remanded” Judge Koh’s decision to grant the injunction against Nexus devices, criticizing her decision as an “abuse of discretion”. Apple has appealed the ruling.
Late last week on Oct. 20th, Judge Koh also ordered Apple to disclose financial information including profits on specific devices to consider their appeal for an additional $535 million in damages from Samsung. Apple has now appealed the order, claiming the information would help competitors.
Samsung, meanwhile, continues to press its momentum, asking Judge Koh to throw out the entire jury’s decision. Samsung alleges misconduct by the jury foreman Vel Hogan, who they claim misled the rest of the jury in favor of disregarding Samsung’s claim that previous art invalidated Apple’s patents. Hogan failed to disclose that Samsung’s business partner Seagate had sued him and caused his bankruptcy in 1993. Hogan did not answer any questions dishonestly however; he was only asked about litigation in the past ten years. “It is very hard to get a jury verdict thrown out for juror misconduct,” Stanford Law School professor Mark Lemley said in an email to Bloomberg. “If he truthfully answered the questions he was asked, Samsung will have a hard time proving bias.”
Though the potential loss of patent ‘381 further undermines Apples trial victory, Florian Mueller, a celebrated IP lawyer turned analyst doubts it will cause any long term damage to Apple, which has stockpiled dozens of patents for their interface. “It doesn’t matter in a strategic sense if some of [Apple’s patents], or even many of them, get invalidated. [Apple] just needs to enforce enough of them to ensure product differentiation” Mueller posted to his FOSS Patents blog. Apple has, in fact, filed another lawsuit claiming 17 additional Samsung products including the popular Galaxy S III violate Apple patents. “At the end of the day [‘381] just one of many patents-in-suit.”
