(CN) SAN JOSE, Calif. – A federal judge handed a minor but significant legal defeat to Apple in its long-simmering patent dispute with Samsung on Thursday evening.
U.S. District Judge Lucy Koh agreed with Samsung that the South Korea smartphone manufacturer owes Apple about $6.4 million, but not the ongoing royalties to which Apple claimed it was entitled.
The order only settles a sliver of the overall patent fight, parts of which have climbed all the way to the U.S. Supreme Court.
This particular case relates to the ‘647 patent, which protected Apple’s development of a quick links product within the smartphone ecosystem that searches and detects emails and phone numbers and automatically gives the user options to place a call or send messages.
In May 2014, a jury found Samsung had infringed on Apple’s quick links patent. Samsung appealed and initially prevailed before the Federal Circuit, which oversees the lion share of patent disputes, overturned the appeal and once again held Samsung’s infringement.
Specifically, nine products developed by Samsung — the Admire, Galaxy Nexus, Galaxy Note, Galaxy Note II, Galaxy SII, Galaxy SII Epic 4G Touch, Galaxy SII Skyrocket, Galaxy SIII, and Galaxy Stratosphere — were found to contain technology covered by the ‘647 patent.
Apple clearly held they were entitled to the $6.4 million as a result of the Federal Circuit decision, but filed an additional motion in November of last year arguing that products Samsung have developed since still contain technology covered in the ‘647 patent.
“Each redesign consisted of only one or two minor changes,” Apple attorney Mark Selwyn told Koh during a Jan. 11 hearing.
Selwyn argued those changes were just workarounds of the patent that did not result in technologies that were significantly different from those already held to have infringed on Apple’s intellectual property.
On Thursday, Koh disagreed.
The judge ruled that because users must select text before phone numbers, emails or other contact information is detected by the smartphone operating system, the difference is substantial enough to mean that Samsung’s next generation products no longer infringe on the ‘647 patent.
“The Court concludes that the DA1-A products, in which selection occurs before detection, cannot be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless,” Koh writes in her 37-page ruling, parts of which were redacted.
The present dispute is a minor skirmish in the overall war that started in 2011. Apple began litigating a series of patent infringement disputes relating to software, including ‘647, and other software features such as universal search, background syncing and the slide-to-unlock function on its smartphones.
The quick links function was the centerpiece of a $120 million verdict for Apple, which survived the convoluted series of appeals, and en banc decisions. Samsung also prevailed on some counterclaims that Apple had infringed its software patents, so the victory was not clear cut.
The most recent order, which Apple may choose to appeal, is separate from a jury verdict awarding Apple approximately $1 billion in damages after a finding Samsung had infringed five of six Apple patents.
The damages were eventually whittled to $400 million, and also disputed and re-litigated after a series of appeals and even intervention by the U.S. Supreme Court.
The Supreme Court did not rule on the merits of the overall case, but said damages don’t have to be awarded for profits of an entire product if the product consists of many parts.
The court then remanded the case to Koh, who must figure out whether to hew closely to the $400 million or come up with a new formula.