"Terminating the jury's deliberations would render the entire trial a nullity, and cause an extraordinary waste of the court's and Apple's resources in preparing for and conducting the trial," the company's attorneys said in a filing. "Apple would suffer extreme prejudice from having the deliberations aborted, which ultimately would require a retrial of the retrial."
A jury last year ruled that Samsung had infringed on five Apple patents related to the iPhone's design and functionality. A judge earlier this year vacated about $450 million of the original award and ordered a new jury to convene to recalculate the damages for patent infringement. The new jury has been deliberating since midday Tuesday about what damages Samsung should pay Apple on top of the $600 million it already owes from the first trial.
But Samsung on Wednesday asked a judge to halt the Apple damages retrial -- which could have a verdict at any time -- after the US Patent and Trademark Office said an Apple patent might not be valid.
According to court documents, the Patent Office questioned whether Apple patent No. 7,844,915, also known as "pinch to zoom," is a valid patent. The '915 patent covers technology that can distinguish whether a user is scrolling with one finger versus using several touch points at once for a pinch-to-zoom action.
As a result, Samsung argued that Judge Lucy Koh should grant its emergency motion to stay the trial in light of questions about the '915 patent's validity. That particular patent is key to the damages retrial as it's the only one for which Apple can collect money for lost profits. That's a big issue in determining how much the Cupertino, Calif., company is owed for Samsung's patent infringement.
"This PTO decision calls into question the entire jury verdict in this trial," Samsung said in its filing early Wednesday.
However, Apple said in a response filed late Wednesday that granting Samsung's request to halt the damages retrial in the midst of jury deliberations "would render the court's and Apple's efforts to prepare for and conduct the damages retrial all for naught and be extraordinarily prejudicial to Apple."
The company added that there is "nothing even resembling good cause" for halting deliberations as the Patent Office re-examination proceedings on Apple's '915 patent are not final. Apple still has time to respond to a final office action issued July 26 and try to persuade the Patent Office to withdraw its rejection of the patent.
Apple argued that Samsung misstated the status of the '915 patent re-examination, and "prejudice to Apple weighs heavily against the stay." The company also said it's possible the jury could return with a verdict Thursday morning.
"Since the 2012 verdict, Samsung has continually attempted to delay a final resolution of this action," Apple said. "Further delay would be fundamentally inconsistent with the patent system ... Samsung has infringed and continues to infringe, but it has yet to face any consequences."
In the current trial, Apple has asked for $380 million in additional damages. Samsung believes it owes Apple only $52 million. The two disagree on the amount of royalties, lost Apple profits, and Samsung's profits. What the two agree on is that Samsung sold 10.7 million infringing devices, generating $3.5 billion in revenue.
Samsung made two last attempts this week to halt the trial. Along with Wednesday's emergency motion to stay, the company on Tuesday requested a mistrial following what it called racist comments made by an Apple attorney during closing arguments. Koh denied the mistrial request but hasn't yet ruled on the motion to stay.
Apple in its filing late Wednesday said the jury could render a verdict Thursday morning. However, the jurors at the end of the day Wednesday asked the court to provide a different catering menu for lunch Thursday, which could indicate the jurors are still far from reaching a decision.
Apple originally filed suit against Samsung in April 2011, accusing the Korean company of copying the look and feel of its products. Samsung countersued two months later over patent infringement and said it was at work on touch-screen phones with giant rectangular screens and rounded corners well before Apple showed up.
The initial trial, which stretched more than three weeks in August 2012, wrapped both of those cases in one, somehow squeezing together the patent infringement issues, alongside antitrust claims, and even trade dress issues. A jury ultimately sided with Apple, declaring that Samsung had infringed Apple's patents.