In an interesting turn of events, the United States Patent and Trademark Office has issued a (non-final) rejection of an Apple patent successfully asserted against Samsung in the much-discussed patent litigation that finally brought the iPhone maker $547 million in damages, reports Florian Müller of Foss Patents. If the USPTO’s decision becomes final, the damages award (recently upheld by the Federal Circuit court) would be questionable.
After re-examining Apple’s US design patent No. 618,677, referred to as “D’677” in the Samsung litigation, the USPTO found that the design patent’s single claim “stands twice rejected under 35 U.S.C. 103(a) [obviousness], rejected under 35 U.S.C. 103(a)/102(e) [obviousness in connection with a published patent application], and rejected under 35 U.S.C. 102(e).”
The problem seems to be that LG and Sharp had already patented the “design” of a mobile terminal years ahead of Apple (the D’677 patent granted in 2010 describes “the ornamental design of an electronic device, as shown and described”) and even Samsung was granted a design patent (describing the ornamental design for a portable communication terminal) before Apple. That makes the first two reasons for the rejection.
The third and fourth reasons for rejection (obviousness in connection with a published patent application) are related to two Apple design patents: U.S. Design Patent No. D602,014 with other prior art and U.S. Design Patent No. D618,204. The examiner says U.S. Design Patent No. D618,204 is not the same as D’677. Apple now has to prove that it is.
The non-final decision comes at a time when Samsung’s request to have the patent case reheard (with the aim of reducing or vacating the $547 million damages award) was rejected without comment by the Federal Circuit. Of course, we can assume that Samsung was behind the re-examination request (filed in 2013), but this still raises questions about the validity of the initial ruling.