Samsung may beat Apple's US design patents, expert warns

By Jonny Evans

Apple [AAPL] insiders may never forgive Google for Android -- but there's a chance Apple's iPad design patent may not prevail in the US courts, potentially opening doors to a wave of Android-driven copycats.

[ABOVE: A detail from Apple's Steve Jobs memorial service on October 19. Full coverage is now available on the Apple website -- though only using the Safari browser.]

A little rain

Apple has won wide success in many of its litigations in the mobile space, and has reached licensing deals with Nokia and Microsoft. However, now it seems Samsung may have a chance to hit back in what many regard as the "Stanley Kubrick case".

"I think it's fair to say this is the most high-profile design case we've ever had and this is really testing the system in these different countries, forcing them to make decisions on difficult issues about design," said Chris Carani, a patent attorney at Chicago-based IP law firm McAndrews, Held & Malloy and also chairman of the American Bar Association's Industrial Designs Committee for 2011-13.

A little of the back story:

Anyone who's anyone online will last week have read how Steve Jobs vowed to "destroy Android". Apple is now pretty much prevailing in courts worldwide, with HTC and Samsung dealt recent heavy blows.

Microsoft now collects patent-usage revenue from 55 percent of Android device makers. And some patent experts consider it possible no one will be able to sell Android devices in some markets in future.

Most recently U.S. District Judge Lucy Koh said that Samsung Electronic's Galaxy tablets infringe Apple's iPad patents, but declined an injunction because the judge felt Apple must show both that Samsung infringed its patents and that its patents are valid under the law.

The latter has been widely reported, but patent expert Carani notes that media observers got it wrong:

The iPad patent is invalid?

Carani has reviewed the court transcripts and finds: "I think the big news is that despite previous reports that the court is leaning in Apple's direction by finding infringement (with) the iPad patent, the court actually said on the record that she believes that the iPad patent is invalid."

In the US, Apple is suing Samsung on three design patents and one utility patent. The design patents -- D593,087, D618,677 and D504,889 -- relate to the appearance of the iPhone and iPad.

"Contrary to some earlier reports, Judge Koh did not officially "rule" or "hold" that Samsung infringed any of the asserted Apple design patents," Carani claims. "Rather, she was careful to say that her statements during the hearing were only "tentative thoughts." (Transcript at 97.) She indicated that she hoped to "issue an order fairly promptly. This is a critical point because anything the Judge said during the hearing is not a final ruling."

It has also been widely reported that the judge noted the similarity in appearance between the iPad and Galaxy tab, but kept quiet on her opinion of the iPhone claims. Once again, this was not a final ruling.


Tearing a hole

In order to assert its design patent claim, Apple must successfully convince the judge to reject any examples of "prior art" Samsung's legal people might present to the court.

However, Judge Koh has already stated that she "thinks" the 1994 Knight-Ridder tablet prototype invalidates the iPad patent, though this is once again not a final ruling. Carani notes his opinion that while Apple argued against that opinion, Apple legal failed to adequately stress the all-glass screen on the iPad's front face, which the other device lacks. .

The complexities of the case are extensive, Carani notes in a summary provided to me. He observes some occasions during the case so far during which Apple's patent attorneys have failed to raise vital arguments regarding design patents.

Apple is now under pressure to prove its design patents:

"Inasmuch as the court appears to be assigning a broad scope to the Apple design patents, and that Samsung has unearthed some relatively close prior art, in my opinion in view of the publicly available materials, the Judge will likely find that Apple has not met its burden on validity at this stage of the case and deny the Motion for Preliminary injunction," warns Carani.

A fair war?

Whatever the outcome of this case, there's others wending their way through US and international courts, with recent Korean reports claiming Samsung management also see this as a "war".

Speaking anonymously, a high-ranking Samsung executive said company CEO Choi Gee-sung: "Will take full responsibility of the ongoing legal issue. We don't see any signs of entering a comprehensive cross-licensing deal with Apple."

That sounds about right given that Apple's lawyers last week promised only to license "low level" patents to others for use in smartphones, determined to protect those of its user interface patents which set it apart from competing mobile devices.

Despite the litigation, Samsung remains a key component supplier for Apple -- and it looks possible the two firms have successfully compartmentalized their conflict.

Samsung's COO attended Apple's Steve Jobs memorial service last week, before he flew to the states he told local reporters: "Samsung should maintain a healthy partnership with Apple. The companies should also compete fiercely but fairly."

Only great artists should steal

Fairly? Apple spokeswoman Kristen Huguet told Reuters earlier this month, "It's no coincidence that Samsung's latest products look a lot like the iPhone and iPad ... This kind of blatant copying is wrong, and we need to protect Apple's intellectual property when companies steal our ideas."

So far as I can tell, even with the departure of Jobs, Apple remains utterly committed to protecting its intellectual property -- and while it may lose some of the battles, the company will not lose the war.

Meanwhile, of course, Android vendors must fight each other for their meager slices of a fractured market while trying to make money from sales of products while also paying increasingly high licensing fees for the patents used inside Android.

Within that environment a wave of consolidation is inevitable, and vendor loyalty to Google's so -called "free" and so-called "open" OS must surely be evaporating. The stage is set for Microsoft to court vendors with its own mobile OS -- but is the market ready to welcome such a move?

Apple meanwhile is expected to sell 25 million or more iPhone 4S units this Christmas, (50 million according to some analysts) while iPad sales lead the tablet industry and set new records, despite the usual questionably overly-optimistic predictions claiming some success for Android alternatives.

What are your thoughts? Let us know in comments below.

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Copyright © 2011 IDG Communications, Inc.

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