Apple Rescued from $625 Million Verdict by Non-Infringement JMOL, while its Reexamination Attack on Mirror Worlds Patents Sputters
Scott Daniels | April 6, 2011
Apple received welcome news Monday when Judge Leonard Davis granted its motion for Judgment as a Matter of Law that it had not infringed three patents belonging to Mirror Worlds. Mirror had sued Apple in 2008 in the Eastern District of Texas for infringement of those patents related to document stream operation systems, for instance systems that allow a user to view a series of images. The case went to trial and on October 1, 2010, a jury found the three patents were willfully infringed by Apple’ sale of computers using Mac OS X, and awarded Mirror Worlds $625.5 million.
In parallel with its defense against the infringement allegations in Texas, Apple filed a series of reexamination requests, beginning in April 2009. More than any other company, Apple has resorted to reexamination to defend itself against patent infringement suits. Yet that strategy has not been effective so far in Apple’s three-year-old dispute with Mirror Worlds.
Each of Apple’s requests was granted, but so far they have failed. The PTO confirmed the ‘227 and ‘313 claims without amendment, and Mirror Worlds added a number of new claims. Apple is now appealing an examiner’s confirmation of the ‘427 patent and a fourth Mirror Worlds’ patent. Since the trial Apple has filed three more requests for reexamination. This is Apple’s reexamination scorecard.
|MIRROR PATENTS||NAME OF PATENT||APPLE REEXAM||CLAIM STATUS|
|U.S. Patent No. 6,006,227||“Document Stream Operating System”||90/010,506||Claims 1-6, 9-11, 20, 22, 25-29 Confirmed, New Claims 34-37 Added.|
|U.S. Patent No. 6,638,313||“Document Stream Operating System”||90/010,513||Reexamination Requested April 23, 2009; Notice of Intent to Issue Certificate February 9, 2011 Confirming Un-amended Claims 1-4 & 9-11, Adding New Claims 12-51.|
|U.S. Patent No. 6,638,313||Document Stream Operating System”||90/011,348||Reexamination Requested November 19, 2010; Reexamination Ordered January 28, 2011.|
|U.S. Patent No. 6,725,427||“Document Stream Operating System with Document Organizing and Display Facilities”||95/001,172||Apple is Appealing Examiner’s Confirmation of ‘427 Patent Claims.|
|U.S. Patent No. 6,725,427||“Document Stream Operating System with Document Organizing and Display Facilities”||90/011,347||Reexamination Requested November 19, 2010; Reexamination Ordered January 28, 2011.|
|U.S. Patent No. 6,725,427||“Document Stream Operating System with Document Organizing and Display Facilities”||90/011,605||Reexamination Requested March 29, 2011.|
|U.S. Patent No. 6,768,999(Dropped by Mirror Worlds from the Texas action).||“Enterprise, Stream-Based, Information Management System”||95/001,171||Apple is Appealing Examiner’s Confirmation of ‘999 Patent Claims.|
The results to date are the opposite of the customary outcome of parallel District Court and reexamination proceedings, where a good reexamination result often saves the accused infringer from a bad result in court. Of course, the final chapter of Apple’s struggle has yet to be written since Mirror Worlds is likely to appeal to the Federal Circuit. Still, Apple’s reexamination results could not have helped, and may have hurt, its post-trial motions challenging the jury’s verdict.