Samsung and Apple will get another chance to hurl platoons of lawyers at each other in November as an August 2012 patent case that resulted in a$1.05 billion award to Apple goes into a follow-up, “limited damages” trial.
That future proceeding just got a little more interesting: Samsung wants to retry whether it should face damages on a part of the award, the one that relates to the “bounce-back” user interface feature on a touch screen.
Samsung filed a motion at 11 p.m. Monday — after the U.S. District Court in San Jose, Calif., closed — to retry the court verdict that found that it guilty of violating Apple’s bounce-back patent. Apple spokesmen told Apple Insider that it was just another delay tactic by Samsung to keep from having to pay the award.
That might seem like a routine maneuver in this battle of the smartphone titans. But, in fact, much of the patent covering bounce back was invalidated by the U.S. Patent Office last October.
Bounce back causes a document to automatically return to its beginning or center once a user scrolls beyond the document’s boundary. The user interface feature is also known as “list scrolling” or “rubber banding.” If the user interface on a small-screen device didn’t have bounce back, users would be required to push their cursors in various directions through the white space beyond the document’s edge. They might find their way back on their own. On the other hand, they might be “lost in space,” as that user experience is often described.
The Apple patent that covers bounce back is U.S. patent 7,469,381, often referred to as the ‘381 patent.
The original Apple patent included 20 claims of originality; 17 of them were tossed out by the Patent Office as invalid due to prior art. Samsung wants to know whether part of the $1.05 billion settlement that Apple won against it last August should also be tossed. That damage award in the jury trial was later reduced by $450 million by Judge Lucy Koh. The complexities of the case have only increased since then.
Apple sued Samsung over four design patents and three utility patents. The bounce-back patent is one of the utility patents that applies to the function, not appearance, of a smartphone. One of the three claims that survived the Patent’s Office’s re-examination was Apple’s claim 19 of the bounce-back patent, “which is the claim Apple successfully asserted at last year’s trial against Samsung,” according to Florian Mueller, author of the site Free and Open Source Software (FOSS) Patents.
The Patent Office review occurred about two months after the jury reported its verdict to the court. Mueller said in a commentary on Tuesday that Apple narrowed the scope of claim 19 to prevent the Patent Office from invalidating it as well. This is the situation that Samsung wants to argue through its motion to the court.
Samsung, in its motion for retrial this week, argued that if the reduction in scope “had occurred in time for last year’s trial, it would have resulted in a narrower claim construction and, a finding of non-infringement by the court or jury,” Mueller wrote on July 2.
The invalidation of much of the ‘381 patent, and the change in scope of claim 19, may both constitute newly discovered evidence that, under the procedural rules of patent law, allow for a new trial. That will have to be decided by Judge Koh.
But such a retrial would have to occur before the extent of damages trial could get underway, which would almost certainly mean a postponement of that trial’s November start date. Apple won a big settlement in Apple vs. Samsung, but the payoff looks further away than ever.