Samsung Asks Judge to Suspend Retrial After PTO Voids Key Patent

, The Litigation Daily


Julia Love writes for The Recorder, an American Lawyer affiliate.

SAN JOSE — Even as a jury deliberated on damages, Samsung Electronics Co. pleaded Wednesday with U.S. District Judge Lucy Koh to halt proceedings after the U.S. Patent and Trademark Office vetoed a key Apple Inc. patent in ex parte reexamination.

On Wednesday morning, the PTO issued an advisory action that affirmed its rejection of all claims of U.S. Patent No. 7,844,915, according to court papers. The patent, which covers Apple's "pinch-to-zoom" feature, is the only one for which the Cupertino-based company can try to recover lost profits, which account for more than $113 million of its nearly $380 million request for damages.

Jurors began deliberations in a limited damages retrial Tuesday afternoon. All but one of the 13 Samsung products at issue were found to infringe the '915 patent.

In an emergency motion filed Wednesday, lawyers for the South Korean company argued it is unfair for Samsung to be subject to damages for a patent that the PTO has rejected.

"The decision by the PTO jeopardizes the jury's findings in the damages trial and may render all of the post-trial proceedings a waste of time and resources," Quinn Emanuel Urquhart & Sullivan partner Victoria Maroulis wrote.

The PTO's action marks the final word from the primary patent examiner. However, Apple may still appeal the determination to the Patent Trial and Appeal Board and then the U.S. Court of Appeals for the Federal Circuit.

Lawyers for Apple and Samsung briefly discussed the motion for stay after convening in Koh's courtroom to respond to a question from the jury about lost profit calculations. Apple lawyer Rachel Krevans of Morrison & Foerster agreed to respond to the motion by the end of the day.

The PTO began reexamining the ‘915 patent in May 2012 at the request of an unnamed third party, according to court papers. After the PTO issued an action rejecting the claims of the patent in July, Apple requested an extension to respond.

Samsung criticized Apple for pushing back reexamination proceedings on patents integral to the damages retrial.

“Apple should not be permitted to waste the court’s and Samsung’s time,” Maroulis wrote. “A stay is, therefore, warranted.”

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