Samsung Electronics has told a federal appeals court that despite Apple's opposition it should be able to offer arguments over the cancellation of Apple's "pinch-to-zoom" patent that figured in a hotly contested lawsuit against Samsung.
In court papers filed on Friday in the U.S. Court of Appeals for the Federal Circuit, Samsung's attorneys said legal precedent allows the company to participate as a friend-of-the-court in Apple's appeal of the invalidation by the U.S. Patent and Trademark Office, even though it has an interest in the appeal's outcome. "(I)t is not unusual for a party involved in litigation on a reexamined patent to file an amicus brief on appeal of the reexamination decision," Samsung said.
Apple's patent relates to touchscreen gestures for scrolling, zooming and rotating images. It was one of six involved in a case dating back to 2011 when Apple sued Samsung in the U.S. District Court for the Northern District of California.
Samsung paid Apple $548 million last December, partly fulfilling a jury verdict from 2012 that found Samsung used Apple's technologies and designs in its own phones without permission. That award included more than $113 million for violating the pinch-to-zoom patent, according to court papers.
If the Federal Circuit finds that the patent is valid, it would likely figure in a damages retrial necessitated by that court's ruling last year that the iPhone's appearance could not be protected through trademarks.
The retrial, which will calculate damages on five Samsung devices to exclude any trademark liability, is currently stayed pending U.S. Supreme Court review of the case.
Apple's appeal stems from an ex parte reexamination of the pinch-to-zoom patent requested by an unidentified third party in 2012, just before the jury trial. The PTO canceled the patent as not new, or obvious, compared to prior input gesture inventions.
In May, Apple said in its opening brief that the PTO interpreted the technology too broadly and that, unlike its technology, the previous inventions do not distinguish between types of gestures. The PTO responded on Aug. 5, saying its interpretation was reasonable and should be affirmed.
Samsung then asked the appeals court on Aug. 9 to file an amicus brief to explain how Apple delayed and subverted the reexamination procedure.
Last week, Apple asked the Federal Circuit to reject Samsung's request because of that company's interest in the retrial. Samsung is merely trying to "paint Apple as a bad actor" by offering information that has nothing to do with the interpretation of the patent and its invalidation, Apple said. "Samsung ... is far from an impartial 'friend of the Court,' and does not even attempt to show that its proposed brief is relevant."
On Friday, Samsung cited several cases to argue that amicus participation is appropriate when a court's decision would directly affect a person's or entity's rights, and is not precluded by a party's pecuniary interest in the outcome.
Apple spokeswoman Rachel Tulley declined to comment on Monday. A representatives for Samsung could not be reached.
* The case is In Re Apple Inc, in the U.S. Court of Appeals for the Federal Circuit, No. 16-1402.