Apple cannot use autocomplete patent claim against Samsung, says USPTO

Consumers are well aware of the feud between Apple and Samsung but most just see it as two companies battling it out for the bigger slice of the pie. For Apple and Samsung though, the battle goes beyond wherever their devices are sold, spilling into patent offices and court houses. The two have been going at it for a while but have somehow reached an amicable point when the companies agreed to settle matters outside of the U.S. permanently. Lawsuits within the U.S. though are a different matter.

Lawsuits between the two companies started when Apple filed a case in April 2011 against Samsung in the U.S., accusing the latter of copying the look and feel of iPads and iPhones. On March 31, 2014, Northern California District Court Judge Lucy Koh ruled that Galaxy Note, Galaxy S2 and five other devices from Samsung had infringed on Apple's 8,074,172 patent, an "autocomplete" feature that suggests words based on what a user is typing. As such, Samsung was to pay $119.6 million to Apple for damages incurred by the infringement.

Looks like Apple is winning the fight but maybe not the war.

The US Patent and Trademark Office (USPTO) had just rejected several patent claims, including the ‘172 patent that Apple had used against Samsung. The USPTO's decision is not final so Apple can still defend the patent but it can take months and years to resolve. However, it may affect the court ruling handed down against Samsung in the infringement case.

According to Florian Mueller of FOSS Patents, rulings on invalid patents will become meaningless, reducing damages owed if any at all is ordered to be paid. Samsung has made its move too, notifying the court of the USPTO decision because the decision was relevant to the company's defense against the infringement case. Samsung did not discuss though what kind of effect the decision will have on the damages already awarded against it.

Throughout all the cases, a part of Samsung's strategy in its fight against Apple is to invalidate patents that are being used against it. In July, Samsung also asked the court to invalidate claims on two other patents, the ‘721 and the ‘959, also known as the "slide-to-unlock" and "universal search" patents, respectively. Samsung pulled the move at a time when a U.S. Supreme Court decision had called for raising patent standards.

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