updated 05:24 pm EDT, Sat June 14, 2014
Samsung gives up appeal of import ban, Apple drops infringed-but-invalid patent
While the move should not be interpreted as the beginning of the end of the intractable Apple-Samsung patent disputes, the two companies have mutually agreed to drop their differing cross-appeals of aspects of last year's ITC decision on an Apple complaint against Samsung. While Apple won the overall ruling in that particular case, the headset-related patent it was pursing an appeal of has since been reaffirmed to be infringing but invalid. Meanwhile, Samsung has given up on appealing a moot import ban.
Samsung made the first move in the dismissal by unilaterally filing (after conferring with the ITC and Apple) to voluntarily dismiss its appeal of the final ITC ruling, which found that Samsung had willfully violated two of the original four submitted Apple patents: the "Steve Jobs patent" of applying heuristics for determining commands (recently re-confirmed by the US Patent Office), and a patent on the ability of a device to detect whether headphones were plugged in or not and redirect audio output accordingly. A sales ban was issued for various infringing Samsung products, but by that point Samsung had produced versions of its tablets and phones with non-infringing workarounds that were approved by the administrative law judge in the case.
A few days later, according to patent case analyst Florian Mueller, Apple filed to drop its own appeal of a portion of the ITC ruling as well, noting that Samsung's dismissal would mean that the ITC's sales ban and cease-and-desist orders would remain in effect. Samsung had oddly won a claim against Apple for infringement of a standards-essential patent (SEP) from the ITC (in a ruling that contradicted its own previous opinions on SEPs and sales bans), but the Obama administration reversed the ban because SEPs cannot be used as legal weapons for sales ban without producing a chilling effect that would harm the entire industry.
Following the reversal, a Federal Appeals Court had indicated that it as planning to agree with the ITC on clearing Apple of charges it infringed on a different Samsung SEP. In light of successful workarounds that Apple was unlikely to pursue further litigation on, the Galaxy maker presumably felt there was nothing to gain from the appeal. Another court found Apple's headset-related patent (which it won with at the ITC) was likely invalid, meaning it may have lost its own appeal.
Apple also didn't appeal either of the two patents rejected in the final ITC ruling. Mueller speculates that because the two patents (a design patent and a patent on translucent images) are in a re-examination process and have been amended from their original versions, Apple's claims of Samsung's infringement of those patents may have been weakened, or perhaps Samsung has since worked around the patents. Samsung has also said it has a workaround in place for the '697 headset detection patent.
"Unless Apple and Samsung have reached some sort of agreement about this, Apple could theoretically still seek damages for past infringement with respect to its ITC patents, particularly the 'Steve Jobs patent,'" Mueller wrote. "The ITC's liability findings are not binding on district courts, so there would have to be a whole new trial of infringement and (in)validity. Apple is not likely to make this effort since there is so little, if anything, to gain."
Both companies are still fighting on other legal fronts, however. On Friday, both companies filed their various requests for judgment as a matter of law (JMOL) seeking to overrule some aspects (or in Samsung's case, nearly all aspects) of the second California patent trial verdict. Samsung is trying to get the damages award reduced, while Apple is again requesting sales bans on the products found to be infringing.