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From what I have read elsewhere the 'first Office action' is based purely on the criticisms of the patent before the patent owner has responded defending and ju
by josephlord 14y ago
From what I have read elsewhere the 'first Office action' is based purely on the criticisms of the patent before the patent owner has responded defending and justifying the details and trying to explain why the presented prior art doesn't apply. I understand that it is common for many of the claims to eventually upheld even when the 'first office action' goes against them.
This seems to be one step of a number of the way to invalidation but far from a knock-out blow for the whole patent YET. There is a range of possible outcomes including total invalidation, the patent being upheld and perhaps most likely some claims being invalidated narrowing the scope of the patent and making it easier to work around it.
- dctoedt 14y agoYou're correct that it's not a knock-out blow --- at least not yet. Apple could try to convince the patent examiner to change his mind; that strikes me as an uphill battle for them, given the extent of the examiner's written analysis. Or Apple could propose amendments to the claim language and try to convince the examiner that the amendments overcame the rejections. If Apple were to amend some or all of claims that are pending in the Apple v. Samsung lawsuit, that could have a major impact on the outcome of the lawsuit under the doctrine of "intervening rights"; for example, any portion of the damage award attributable to the amended claim(s) might go away [4]. [4] http://www.guttagiplaw.com/publications/patents/INTERVENING_RIGHTS-POTENTIAL_TRAP_FOR_REEXAMINED_PATENTS.pdf http://www.guttagiplaw.com/publications/patents/INTERVENING_... (especially page 6)