Samsung bid to stay damages retrial against Apple denied

Last week, Samsung filed an emergency motion to stay the its patent damages retrial after the U.S. Patent and Trademark Office issued an advisory action invalidating one of Apple's key patents-in-suit.

The USPTO note, and Samsung's subsequent bid to halt the case, came on the same day that jurors started deliberations, prompting Judge Koh to concentrate on jury instructions rather than the motion to stay. A day later, Apple was awarded $290 million in damages out of a possible $380 million.

According Judge Koh's ruling, her determination was based on three factors: whether discovery was complete; whether a stay would simplify the issues at hand and the trial as a whole; and whether granting a stay would prejudice Apple. As noted by FOSS Patents' Florian Mueller, the jurist found against Samsung in all three factors.

At issue is Apple's U.S. Patent No. 7,844,915, or the '915 patent, covering "pinch-to-zoom" multitouch gestures. In December 2012, the USPTO issued a tentative invalidation of the patent's claims, which Apple argued. A "Final Office Action" rejecting all of the property's claims was handed down by the PTO's examiner in July, though Apple was able to respond to that notice in October.

In filing for the emergency motion to stay, Samsung argued that Apple had only one procedural avenue left to salvage the patent, suggesting a halt of the proceedings would be the most efficient course of action. Contrary to Samsung's assertions, however, Apple still has a number of options left before the '915 patent is officially invalidated.

As Judge Koh points out, Apple can file a second response to the Final Office Action. If that fails, the company can take the decision to the Patent Trial and Appeal Board. Finally, Apple can appeal a negative PTAB ruling with the Federal Circuit. Needless to say, it would take months for the appeals process to play out. Even if the '915 patent were to be invalidated, it is just one property being asserted against Samsung.

Pertaining to whether a stay would prejudice Apple, Judge Koh writes:

As discussed above, Apple won a jury verdict in August 2012 in which a jury found that Samsung had infringed, among other things, various Apple patents and that Apple's patents were valid. Yet one year and three months later, due to the necessity of a retrial, Apple still has received no damages award as compensation. Further delay of relief due to a stay of this entire case pending a final decision on the '915 patent would thus substantially prejudice Apple. Samsung's arguments to the contrary are unconvincing.

In summation, Judge Koh disagrees with Samsung's arguments, finding them "unconvincing." The most efficient way to move forward without further delay would be to hand down a final district court decision and let Samsung appeal to the Federal Circuit.