Another Apple patent invalidated

By Cho Mu-hyun

The United States Patent and Trademark Office has rejected yet another Apple-owned software patent that helped the U.S. technology giant win $1.05 billion in damages against Samsung Electronics.

The action was made public through a filing by Samsung Electronics to the San Jose court presiding over the two companies’ litigation Thursday (KST).

The company said the patent office’s decision should be considered in its petition for a retrial and in the judge’s calculation of yet-to-be-revealed final damages following the jury verdict in August.

The patent office, in a First Office Action (FOA), rejected all 21 patents by Apple for its multi-touch software.

Patent No. 7,844,915, better known as “pinch to zoom,” is one of three software-related ones that the jury in California deemed Samsung infringed on. The technology allows users to use touch to enlarge photos and text.

The iPhone maker had previously declared it was one of its three most valuable software patents involved in the case against the Galaxy series manufacturer.

It is the second major ruling against Apple by the patent office so far. On Dec. 3 in another FOA, the government agency rejected the Cupertino, Calif.-based firm’s “rubber band” patent, better known as the “Steve Jobs Patent.”

The iPhone maker challenged the ruling will likely do the same for the most recent one.

Samsung’s motion for retrial on the grounds of jury misconduct has been rejected by Judge Lucy Koh, but if the recent rejection holds up it may get one on more reasonable grounds.

The recent two rejections by the patent office may also reduce the ultimate damages awarded. “Though it is a tentative ruling, it will be difficult for the judge not to take the matter into consideration when she makes the final judgment,” said Kim Kyung-hwan, an intellectual property lawyer at law firm Minwho, over the phone.

“If these patents are permanently invalidated, they will be excluded in any future court litigation,” he added.

Florian Mueller, a German-based intellectual property analyst, wrote in his blog FOSS Patent that Apple demanded “a per-unit royalty for future use (of the patent) of $3.01 while the other two software patent-in-suit are each valued at $2.01 per unit.”

He wrote that “First Office Actions are non-final. But that does not mean that they are meaningless.”

The jury in California deemed 21 out of 24 patents that Apple claimed to be infringed were indeed “willfully copied” by Samsung.

The attention is centering around how much monetary damages Judge Koh will decree, which she has hinted she will trim down during a Judgment as a Matter of Law hearing that took place in Dec. 6.

Apple and Samsung spokesmen both declined to comment.

The biggest shippers of smartphones’ legal disputes are intensifying as their duopoly in the market place is strengthened.