Apple, Samsung, and the ITC

Samsung got some good news last week (January 23, 2013) when the US International Trade Commission (ITC) announced that the October ruling by ITC administrative law judge Thomas Pender, which held that Samsung had violated four Apple patents, would be reviewed by the commission. This will likely win Samsung at least a reprieve in terms of time before any sales ban on its products would come into effect; Samsung, of course, hopes the commission’s review will result in the ruling against it being overturned, not just delayed. The ITC announcement can be read here.

In related news – also good news for Samsung – on January 30 the judge who presided over the Federal district court case in San Jose that resulted in a billion dollar judgment against Samsung ruled that Samsung’s violation of Apple’s patents was not “willful,” and therefore Samsung will NOT be ordered to punitive damages, which could have tripled the actual damages found by the jury. The judge did, however also rule that the billion dollar judgment would stand despite questions about the validity of some of the patents involved since the mechanism the jury used for determining damages did not allow for second guessing the importance of particular patents.

Some of the same patents are involved in both the ITC case and in the district court case.  Not only that, at the same time some of the same patents are being reviewed by the US Patent and Trademark Office (USPTO).  This highlights the complexities of “parallel universes” in the business of patent enforcement.  The ITC, federal courts, and the patent office all can independently rule on the validity of a give patent. 

For example, the ITC judge found that one of the patents Samsung violated was US patent 7,479,949, “Touch screen device, method, and graphical user interface for determining commands by applying heuristics, (the “’949 patent”)” in particular claims 1, 4-6, and 10-20.  That same patent was under consideration by the judge in Federal district court case as a basis for imposing a sales injunction against Samsung.  Yet in December, the USPTO issued a preliminary ruling (not final) that none of the 20 claims in the ‘949 patent were valid.   

Patent monetization is a complex process that involves more than just filing a lawsuit against someone infringing a patent.  The patent enforcement environment is very complex – in addition to the federal courts, the ITC, and the USPTO, patent enforcement is very much a global phenomenon with Europe and Asia playing important roles.  Successful patent monetization hinges on coming up with the right strategy, especially after an infringer refuses to negotiate: if the infringing product is imported, is it appropriate to file an ITC Section 337 request to block sales? Which court – which countries – are the best places to launch enforcement?  How best to handle potential USPTO reexamination requests?  Getting the answers to these questions right makes a huge difference in the success of a patent monetization campaign.


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