updated 08:25 pm EST, Tue November 27, 2012
Move likely intended to deflect Samsung patent invalidity argument
In an attempt to fend off a Samsung counter-argument scheduled to be heard in the hearing on December 6, Apple has informed the court that it has filed to limit the "lifespan" of patent number D618,677 -- one of the design patents it used to win a billion-dollar court victory against Samsung. The move doesn't invalidate the patent, but does force the expiration to be limited to the earlier expiring one, shortening the life of the design patent by 18 months.
The effect of the move is unclear. Apple's intent is likely to undermine a motion by Samsung asking for a judgement as a matter of law that Apple design patent D618,677 is invalid, as it is claimed to be the same as patent D593,087. Two Federal Circuit decisions cite that "obviousness-type double patenting is cured by terminal disclaimer," but patent analyst Florian Mueller suspects that Samsung won't agree with Apple's contention that Samsung's motion is invalid because of the terminal disclaimer.
Some of the devices in the smartphone patent trial were found in violation of the '667 patent, and some of the '087 patent, with some overlap between the two. Apple's move attempts to invalidate one of three arguments that the '667 patent should be invalidated by the court, and damages reassessed by the judge or a new trial. The jury who handed Apple the $1.05 billion award did not break down damages by patent.
Samsung has claimed that "Dí677 and embodiments of Dí087 (particularly the sixth embodiment) depict the same design; the only elements added by the Dí677 are the color black and oblique lines." Given the similarities as noted by Samsung, one of the patents could be found invalid due to similarity to the other. Mueller expects that "Samsung will presumably argue that [the trial] was prejudiced by the fact that Apple filed for two patents on allegedly the same invention and asserted both of them at the same trial."
Nine products were found to have violated the D'087 patent and not the D'667 patent. Combined, the percentage of the award affected by the patent decision accounts for $520 million, or about half, of the total won by Apple. If the D'667 patent was found to be invalid, the $520 million for the nine products would have to be reassessed. Mueller says that "with so much money at stake, there will be some controversy over what implications Apple's terminal disclaimer has at the post-trial stage of this litigation."