Patent office gives Apple upper-hand in Smartflash lawsuit by invalidating two patents

The invalidation of two more Smartflash patents may put Apple in a good position to avoid paying a $532.9 million patent verdict rendered in February 2015, a report claimed on Thursday.

A trio of panel judges with the U.S. Patent and Trademark Office found that the patents shouldn't have been issued at all, because the concept of storing and paying for data is abstract one and not a specific invention, Bloomberg noted. A similar decision was made about a third Smartflash patent in March.

Smartflash could still bring the matter to the Patent Trial and Appeal Board, or after that the U.S. Court of Appeals for the Federal Circuit. The latter, though, is already examining the validity of the patents and whether Apple violated them, since that company earlier appealed the trial verdict. For its arguments, Smartflash is said to be banking on a ruling in an unconnected case, which found that not all software is inherently abstract.

Both parties will nevertheless be heading back to trial to recalculate damages, since the original trial's judge provided improper instructions to the jury.

Apple is accused of violating Smartflash patents by way of services like the iTunes Store and the App Store. In fighting the case, Apple has argued that Smartflash is exploiting the U.S. patent system without having any products or even a domestic presence.

7 Comments

slprescott 759 comments · 10 Years

About 8 years ago

The notion of "invalidating patents" seems unworkable to me.

Once a company is granted a patent, they move forward by investing millions of dollars to bring a product to market... and then a few years later some people from PTO say, "Oops... we were wrong. You actually did NOT get that patent. Sorry."

I realize the current case benefits Apple, and I like that. But in general, the notion of losing a patent that you got legitimately seems bogus.

ronn 684 comments · 20 Years

slprescott said:

The notion of "invalidating patents" seems unworkable to me.

Once a company is granted a patent, they move forward by investing millions of dollars to bring a product to market... and then a few years later some people from PTO say, "Oops... we were wrong. You actually did NOT get that patent. Sorry."

I remember a saying from my Brooklyn youth: "It be's that way!"

Given the avalanche of bogus and/or poorly constructed patents, and the limited number of qualified examiners in the internet age, it's up to companies to defend their patents. If they're deserving, they will defend them successfully. Humans are prone to mistakes and nothing should be set in stone. This case is a perfect example of a patent troll getting its just desserts.

Reversal applies to Apple as well as I'm sure several of Its patents from the Samsung copying cases will be invalidated.

williamh 1045 comments · 13 Years

slprescott said:

The notion of "invalidating patents" seems unworkable to me.

Once a company is granted a patent, they move forward by investing millions of dollars to bring a product to market... and then a few years later some people from PTO say, "Oops... we were wrong. You actually did NOT get that patent. Sorry."

I realize the current case benefits Apple, and I like that. But in general, the notion of losing a patent that you got legitimately seems bogus.

I understand that invalidating a patent violates one's sense of fairness. A company applied for a patent in good faith, etc. However, it's not fair to the rest of humanity to have to license something that ought not to have been patented in the first place.

Some years ago, a fellow in Australia apparently got a patent for the "wheel." Ok, that wasn't in good faith, he was a joker, but he still did get a patent. The cases at hand are not so obvious but the principle is the same.

anome 1545 comments · 16 Years

williamh said:

slprescott said:

The notion of "invalidating patents" seems unworkable to me.

Once a company is granted a patent, they move forward by investing millions of dollars to bring a product to market... and then a few years later some people from PTO say, "Oops... we were wrong. You actually did NOT get that patent. Sorry."

I realize the current case benefits Apple, and I like that. But in general, the notion of losing a patent that you got legitimately seems bogus.

I understand that invalidating a patent violates one's sense of fairness. A company applied for a patent in good faith, etc. However, it's not fair to the rest of humanity to have to license something that ought not to have been patented in the first place.

Some years ago, a fellow in Australia apparently got a patent for the "wheel." Ok, that wasn't in good faith, he was a joker, but he still did get a patent. The cases at hand are not so obvious but the principle is the same.

That was specifically to point out flaws in new IP laws that had just been introduced (related to the Treaty on IP we'd just signed with the US). The new laws were really badly framed, and allowed for someone to do something as stupid as patent the wheel.