How will ‘prior art’ impact Apple’s patent argument?

By Cho Mu-hyun, Kim Yoo-chul

Since the verdict by a U.S. jury in California that awarded Apple $1.05 billion from Samsung Electronics, the two technology giants have been arguing back and forth over the legitimacy of the decision.

Of many legal points made by the Korean manufacturer, one of the most convincing points have been the matter of “prior art.”

Put simply, prior art refers to certain information that has already gone public before an invention is patented and is related. If the invention is proven to be described previously, the patent becomes invalid.

The prior art conception was apparently highlighted by Google Chairman Eric Schmidt during his recent visit to South Korea. At that time, the Google boss said, ``With respect to Apple patents, the best thing we can tell there is plenty of prior art and I don’t want to go beyond that.’’

And the jury foreman Velvin Hogan apparently misunderstood what qualifies as prior art, according to Samsung and industry officials contacted by The Korea Times.

The nine U.S. jurors discussed prior art presented at the California trial but they discounted it as Hogan believed Apple software wouldn’t work in the smartphones in this case classed in prior art, meaning they are not interchangeable. This could cast doubt over whether the $1.05 settlement was justifiable.

Samsung earlier made two major points before and after the verdict directly related to prior art. It argues that the design for i-series products made by Apple relied heavily on Sony and pointed out that similar products, with the possibility of being called prior art, have been in the market since before the iPhone was released.

Samsung attorney Charles Verhoeven showed that phones launched commercially before the iPhone that had large rectangular screens, such as LG Electronics’ Prada, saying the design features were “already out there.”

“There’s a lot of prior art out there,” Verhoeven said. “The patent office doesn’t know everything. “Sometimes there is prior art the patent office doesn’t know about. That is the case with each of these patents.”

His points have been agreed upon by legal experts, especially the one that the workload of examiners at the United States Patent and Trademark Office maybe too heavy for it to check the legitimacy of every patent.

Edwards Wildman lawyer Kim Kong-sik said that “thousands of patents continuously pour in” to be checked for validity.

In the information technology arena, products’ life spans are short, forcing companies to continue applying for more and more patents.

“Once you file, a technology patent will get old really fast. But firms have to protect the technology so they keep applying,” he said.

The design issue concerning Sony is in principle the same argument but the difference was that it was not taken into account in the jury’s deliberations due to the Korean company turning it in as evidence belatedly.

“If the pictures from Sony (that compared its products with Apple’s) were shown, the results may have been very different,” said an industry official declining to be named. “Since Samsung will no doubt turn it in if the case moves to an appeals court, their argument will be more convincing.”

A legal consultant from a prestigious domestic law firm, who declined to be named due to client matters, agreed with the official. “The validity of patents can be overturned whatever the circumstances were when it was patented,” he said by telephone. “The Sony evidence was the Samsung countermeasure against Apple’s own pictograms that compared its products with Samsung’s unfavorably,'' he added.

“Instead of a somewhat generalized statement that said it’s all out there, the specified example of Sony, which was thoroughly reviewed, would have been better.”

Verhoeven actually released the pictures to the press, which the jury said they had not seen upon questioning by Judge Lucy Koh, showing its importance to the legal strategy set by the Korean firm.

Kim Kyung-hwan, a lawyer at domestic law firm Minwho, said the Galaxy phone maker must keep pushing the issue as it will result in a more balanced verdict or even a possible victory for Samsung.

“Prior art is the usual tactic used by defendants in patent cases. Samsung should continue to press the point,” he said by phone. “The best situation for Samsung will have a judge rule that the patent is invalid which will eliminate any talk of copying.

“Considering the local sentiment in the United States that has mostly criticized the recent verdict, Samsung has gained many new edges before the upcoming decision or likely future court cases.”

“The amount of damages will definitely not stand as it is almost willful on the part of the jury. Damages in patent cases are not a punitive measure but one to protect the patentee,” he said.

As the matter is not confined to this case alone and affects all the patent disputes globally in the information technology industry, notable high profile industry officials have pointed out the need to address the matter.

On a separate note, it was reported by Groklaw that slides have gone public showing Apple asking Samsung to pay $30 per smartphone and $40 per tablet in royalties when it attempted to have the latter licensed for the former’s patents.

It also said that it will give a 20 percent discount if a cross-licensing deal is signed. Apple has complained numerous times when charged fair, reasonable and non-discriminatory (FRAND) rates of 2.4 percent or around $6 dollars as being too high.