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Rubber Band Patent Rejection Could Bounce Apple Back to Court

By Erika Morphy MacNewsWorld ECT News Network
Apr 3, 2013 12:14 PM PT

Apple apparently is not accepting the recent ruling by a U.S. patent examiner invalidating a patent it successfully used in a suit against Samsung.

Rubber Band Patent Rejection Could Bounce Apple Back to Court

The "final" action does not signal the end of reexamination at the U.S. Patent and Trademark Office, the company argues in a filing submitted Tuesday, according to a CNET report.

Nor does it mean there will be no further consideration or reexamination of the patentability of the claims, Apple attorney Michael Jacobs wrote in the document, noting that "finality" is a procedural construct that places certain limitations on what legal actions the parties may take.

A Long Appeals Process

"There is a process in place for appeals at PTO, including an appeal to the entire board," Peter Toren, a partner with Weisbrod, Matteis & Copley, told MacNewsWorld.

Apple has only just begun to wind its way through the PTO's appeals process, he noted. Once it does, and if it still is dissatisfied with the PTO's determination, Apple can take the matter up in the federal circuit court.

If Apple were to push the issue that far, the case could well be heard by the same court that is hearing its appeal of a recent ruling invalidating part of Samsung's judgment, said Toren.

U.S. District Judge Lucy Koh last month struck more than US$450 million in damages a jury awarded to Apple last summer, after it found Samsung had willfully copied Apple designs and software for the iPhone.

Koh made her decision because some of the awards "rested on impermissible legal theories," as she wrote in her 27-page opinion. Koh has ordered a new trial in order to recalculate damages for those products.

Another Twist

The PTO decision, in short, is another chapter in a complex and far-ranging saga. This part of the story began late last year, when the PTO issued a preliminary ruling rejecting all 21 of Apple's claims in its so-called rubber band patent. That patent was among those Samsung was found to have infringed.

The patent examiner last week issued a technical filing that confirmed rejection of 17 of the claims.

If Apple carries the appeals process all the way through federal court and still loses, it could complicate its case against Samsung and give the judge another reason to overturn part or all of the verdict, Toren speculated. "That turn of events, though, if it does come to that, is far off."

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