Monday, July 28, 2014

Google preparing to appeal Oracle's copyright win to Supreme Court, Oct. 6 deadline for petition

Last month Google decided not to seek an en banc (full-court review) of Oracle's appellate victory in the high-profile Android-Java copyright case (initial reaction to ruling, follow-up, and detailed refresher Q&A), resulting in a formal mandate to the district court. At the time I wrote it was "still not certain that proceedings [would] resume in district court in the very short term," given that "Google [could] file[] a petition for writ of certiorari with the Supreme Court of the United States." And that's what's apparently going to happen now (as always, absent a settlement).

On July 9, Google submitted to the Chief Justice of the United States an application to extend the time to file a petition for a writ of certiorari from August 7, 2014 (i.e., three months after the Federal Circuit opinion) to October 6, 2014. The Chief Justice granted the application the following day (July 10).

I have explained before (see the links further above) why I think the Federal Circuit got the copyrightability decision absolutely right. But Google and a number of Google-aligned individuals and organizations apparently can't accept the Federal Circuit decision as the last word. Whether the Supreme Court will ultimately hear the case is another question. A high-profile case it definitely is, and an important issue -- but the Federal Circuit, unlike the district judge, correctly interpreted the law (including the Ninth Circuit opinions in the Sega and Sony fair-use cases), and from a policy point of view, this outcome is in the interest of honest software developers seeking a reasonable degree of intellectual property protection for the most creative parts of their creations. Copyrightability is neither the only level at which interoperability can be ensured nor the best option because denying copyrightability to highly-creative, original, declaring API code would do way too much damage to software copyright. The best decision the Supreme Court will be able to make after Google files its petition is to deny certiorari in order for the case to resume in district court at the earliest opportunity.

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Apple drops cross-appeal, forever accepts denial of injunction in first Samsung case

While a global, comprehensive settlement of the patent spat between Apple and Samsung has not materialized yet, the dispute continues to lose steam every month, and noticeably so. Not only has no new complaint between these parties been filed in about two years (unless something was filed somewhere in the world without being reported in the media) but the parties' litigation fatigue is increasingly visible at the appeals courts. Last month they agreed to drop each other's appeals of the final ITC ruling on Apple's complaint. Today Apple filed a motion with the United States Court of Appeals for the Federal Circuit to drop a cross-appeal in its first California case against Samsung. The deadline for Apple's opening brief would have been today.

The cross-appeal Apple has now dropped (which Samsung was fine with) had been filed in March. While the 2012 California jury trial had gone extremely well for Apple (in front of a jury that thought looking at prior art references was just a waste of time), Judge Koh had just denied Apple a permanent injunction against Samsung -- for a second time -- over the multi-touch software patents it asserted in the 2012 trial (where other intellectual property rights were also at issue). Apple had filed a renewed motion after a partly-successful, but ultimately insufficiently-successful, appeal to the Federal Circuit. It could now have tried to convince the Federal Circuit that Judge Koh applied a standard that was too high, but apparently Apple has decided to focus on its pursuit of a permanent injunction in the second California case, in which a trial was held a few months ago (and a hearing on the parties' post-trial motions, including Apple's motion for permanent injunction, took place a few weeks ago, with a ruling most likely coming down this summer).

Apple's withdrawal of its cross-appeal changes nothing about Samsung's own efforts to get the 2012 jury verdict overturned in whole or in large parts. Those efforts continue regardless.

Here's the text of Apple's motion:

Pursuant to Federal Rule of Appellate Procedure 42(b), Plaintiff-Cross Appellant Apple Inc. ("Apple") moves to voluntarily dismiss its cross-appeal, No. 2014-1368.

Apple further moves to reform the official caption of the remaining appeal (No. 2014-1335) to reflect the dismissal of Apple's cross-appeal.

Counsel for Apple has conferred with counsel for Samsung Electronics Corporation, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, "Samsung") regarding the substance of this motion. Samsung does not oppose the relief requested in this motion and will not file a response.

Apple accordingly requests that the Court grant its motion and dismiss its cross-appeal and reform the official caption to reflect the dismissal. A proposed order is attached.

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Wednesday, July 16, 2014

U.S. patent examiner stands by rejection of Apple's pinch-to-zoom API patent claims

A hearing was held last week on the parties' post-judgment motions in their second California case. There wasn't any new information in the reports I read (the fact that Apple's injunction request is feature-centric is old news), so the next step there will probably be Judge Koh's ruling on those motions. While I don't know what Judge Koh indicated at the hearing, the validity of certain patents asserted by Apple continues to be a key issue (even the key issue, at least on the liability side) -- not only in the post-trial proceedings in the second case but also in the first one (on appeal).

On Tuesday, Samsung filed a notice with the United States District Court for the Northern District of California regarding recent developments in Apple's PTAB (Patent Trial and Appeals Board) appeal of an examiner's rejection (on reexamination) of the '915 pinch-to-zoom API patent, particularly its claim 8, which a Silicon Valley jury found Samsung in 2012 to have infringed and deemed valid (at least one juror later told reporters the jury didn't even look at the prior art after evaluating the first one of a dozen patents-in-suit).

The relevant rejection was communicated on a "final" basis about a year ago. Apple kept on trying to salvage the patent, but the examiner didn't change his stance. In December 2013, Apple's only remaining option was to appeal (within the USPTO, for the time being) this rejection. Meanwhile, Judge Koh has handed down an appealable final judgment in that first California Apple v. Samsung case, the parties appealed, and Samsung has already filed its opening brief with the Federal Circuit (the part concerning design patent damages -- the bulk of the billion-dollar verdict, or "$929 million verdict" after a limited damages retrial, to be precise -- has significant support in the U.S. legal community). If the Federal Circuit also held claim 8 of the '915 patent invalid, that fact alone would require a third trial in the first Apple-Samsung case (and unlike in the second one, the majority of all products would be at issue in that event).

Samsung's notice is nonjudgmental. It merely informs the court of three filings: Apple filed its appellate brief with the PTAB in February; the examiner handling the reexamination filed an answer in May; and about two weeks ago Apple filed a reply brief. The examiner could have withdrawn rejections or brought up new grounds of rejection, but elected to do neither. He stands by last year's decision (based on which the claim-in-suit is anticipated by one prior art reference and -- though one ground would be enough to render it invalid -- additionally obvious over the combination of two other prior art references) and defends it against Apple's allegations that his reasoning is flawed. The next step is going to be a PTAB hearing.

All three filings with the PTAB are attached to Samsung's notice (just in case you're interested in the details):

14-07-15 Samsung Notice Re. Developments in Apple's '915 PTAB Appeal by Florian Mueller

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Thursday, July 3, 2014

Samsung argues two Apple patents-in-suit are invalid in light of Alice v. CLS Bank decision

Two weeks after the Supreme Court of the United States handed down its opinion in Alice v. CLS Bank, Samsung has just filed a motion with the United States District Court for the Northern District of California, requesting permission to file a supplemental brief that argues two of the patents on which Apple prevailed at the recent California trial are invalid because they don't constitute technological innovation and merely represent generic computer implementations of abstract ideas. The patents Samsung is challenging on abstract subject-matter grounds are the '959 "unified search" patent and the '721 slide-to-unlock patent. Samsung has attached to its motion a copy of the brief it wishes to file (this post continues below the document):

14-07-03 Samsung's Proposed Supplemental Brief Re. Alice Opinion by Florian Mueller

Considering that the same district court allowed Apple to leverage a couple of recent Supreme Court opinions concerning fee-shifting in connection with its pursuit of a recovery of attorneys' fees from Samsung, it would seem just fair for Samsung to be allowed to make an Alice argument now, just in time before Judge Lucy Koh will decide on the parties' motions for judgment as a matter of law (JMOL) following the recent $119 million jury verdict (which was disappointing enough for Apple to request a retrial).

Samsung notes that the United States Patent and Trademark Office (USPTO) deemed the Alice decision important enough to provide related instructions to its examiners. That USPTO document does show that the Alice decision was important, but it also states that Alice "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for [patent-]eligibility of software or business methods." In my opinion the problem for patent holders is not in what the Alice decision says. It's in the fact that the Supreme Court has recently issued a number of decisions that weaken patent rights and run counter to the Federal Circuit's approach. It will take time before it's clear how much will really change. Samsung is not the first litigant to point to Alice, and countless others will do so in the years ahead.

I have formed a first and preliminary opinion on the merits of Samsung's abstract subject-matter arguments:

  • I tend to agree with Samsung as far as the '959 "unified search" patent is concerned. As Samsung notes, that patent "describes using 'heuristics' – something Apple considers simply 'good ideas' – to locate information in multiple locations". It would indeed be hard to reconcile with the spirit and the letter of the Supreme Court's Alice decision to let Apple monopolize "the abstract concept of 'some rule of thumb,' or the use of 'good ideas' or 'rules of thumb' to find information."

  • I doubt that Alice is an appropriate basis -- and it's certainly not the best basis -- for striking down the slide-to-unlock patent. Samsung argues that "moving a lock into an unlocked position" is an "abstract concept" and a "basic 'method of organizing human activity'" that is not patent-eligible in this post-Alice world. I don't think so. Unlocking a device is a reasonably technical activity to me.

    That said, the slide-to-unlock patent should be invalidated, but on the grounds of anticipation (non-novelty) or obviousness. After ten European judges determined that Apple did not deserve a patent on slide-to-unlock in light of the prior art, Judge Koh would be the first judge in the world to find this thing patentworthy if she denied the related part of Samsung's JMOL motion. Such a decision would not reflect favorably on the quality standards of the U.S. patent system.

[Update on July 4, 2014] Judge Koh has just asked Apple to respond to Samsung's motion on July 17 (with a limit of 10 pages) and given Samsung five pages for its reply brief, which will be due on July 24. For now, Judge Koh does not see a need for a hearing on this matter. [/Update]

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Thursday, June 19, 2014

Supreme Court ruling in CLS Bank v. Alice makes 'generic' the new magic word for software patents

The Supreme Court of the United States just handed down its opinion in Alice v. CLS Bank, a case that some people (including the appellant) misportrayed as a case that was fundamentally about whether or not computer-implemented inventions are patent-eligible. In February I explained why this case was more of a "Bilski Reloaded", and I later commented on the March 31 Supreme Court hearing, predicting that software would undoubtedly remain patent-eligible. And indeed, today's decision is narrowly focused on issues that relate to abstract ideas such as business methods and does not provide any guidance with respect to the patent-eligibility of technical inventions involving software.

I have filed a U.S. patent application (and a simultaneous PCT application) on a computer-implemented invention and will file a couple more soon, but those fighting this category of patents also appear to agree that software patents haven't been abolished, judging by the initial reactions I've seen on Twitter and certain websites.

I'll keep this brief because everything turned out just as expected and because this ruling hasn't really changed anything. There's only one observation -- the one I already stated in the headline -- I wish to share. It's clear that post-Alice those challenging software patents and those defending them will have a favorite word and it is "generic". It's all over the SCOTUS opinion, in most instances as a qualifier before the word "computer" and sometimes before "computer implementation". And in at least one instance, "generic" itself has a qualifier:

"Wholly generic computer implementation is not generally the sort of 'additional featur[e]' that provides any 'practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself."

The word "generic" also appeared in the Federal Circuit opinion(s), but in different combinations. The Supreme Court linked it to "computer implementation" because the question on appeal was whether the Federal Circuit ruling rendered all computer-implemented inventions patent-ineligible.

In Europe, where software is excluded from the scope of patent-eligible subject matter by statutory law (Art. 52 of the European Patent Convention), the equivalent to "generic" is "as such": software as such is not patentable, but technical inventions involving software are (making "technical" the magic word in Europe). In Europe there's already a rich body of case law concerning what is or is not technical. In the U.S., courts are now going to have to figure out again and again the meaning of the term "generic". Those applying for or defending software patents will argue that their inventions are not "generic" computer implementations of abstract ideas. Those challenging such patents will try to define "generic computer implementation" as broadly as possible and argue that every software patent they attack involves previously known computing technology and an abstract idea.

The Supreme Court clearly says that it does not want the exclusion of abstract ideas from patent-eligible subject matter to "swallow all of patent law". No doubt about that intent, but this won't dissuade some from trying to interpret the Supreme Court ruling overbroadly. It's a bit unfortunate for those seeking or defending software patents that there hasn't been a recent Supreme Court ruling that would have upheld a (technical) software patent and created some kind of safe harbor for software patents. In Alice, the only safe harbor for software patents that the Supreme Court mentions is that "a computer-implemented process for curing rubber was patent eligible [...] [because it] "employed a 'well-known' mathematical equation [...] in a process designed tosolve a technological problem in 'conventional industry practice.'" That reference to Diamond v. Diehr, a 1981 decision, is not a safe harbor for software patents that are unrelated to manufacturing processes. There's a huge gap between Diamond v. Diehr and Alice v. CLS Bank, and as a result there is a need for a whole lot more line drawing, which I guess we will indeed see in the years ahead. For the sake of balance it would be helpful clarification if the Supreme Court could at some point affirm a technical software patent, such as an operating system patent. For now we just know what the Supreme Court considers a "generic computer implementation", but there's a need for more clarity as to what is not just generic.

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Monday, June 16, 2014

Appeals court issues formal mandate to trial court in Oracle v. Google Android-Java copyright case

One month and one week after the appellate opinion was handed down in the Oracle v. Google Android-Java copyright case (initial reaction to ruling, follow-up, and detailed refresher Q&A, the United States Court of Appeals for the Federal Circuit has just issued a formal mandate to the trial court, the United States District Court for the Northern District of California, remanding the high-profile lawsuit for a determination on fair use and (if Oracle prevails) remedies. Here's the document (this post continues further below):

14-06-16 Oracle v. Google Formal Mandate to District Court by Florian Mueller

In most of the Federal Circuit cases I watched, the deadline for a petition for rehearing appeared to be one month after the ruling, though in at least one case it appeared to be 45 days. In any event, the standard two-week deadline does not appear to apply in these kinds of cases. It appears that Google has elected not to file a petition for a rehearing. According to Rule 41 of the Federal Rules of Appellate Procedure, the appeals court's "mandate must issue 7 days after the time to file a petition for rehearing expires". The opinion came down on May 9. One month for a rehearing petition means the related deadline was June 9 -- and now we're seven days past that presumed deadline.

It's possible but still not certain that proceedings will resume in district court in the very short term. Maybe Google has realized that it can't prevail on copyrightability and will now focus on fair use, its sole remaining defense (I explained earlier this year why I don't see a "fair use" case here, though I now tend to agree with Google on fair use in the Google Books context), and exhaust all appeals in connection with fair use. That would make sense. But it could also be that Google files a petition for writ of certiorari with the Supreme Court of the United States. The deadline for that one is 90 days after entry of judgment. There has been speculation about the possibility of such a petition. I don't think the Federal Circuit's API copyrightability holding is "certworthy" because the Federal Circuit definitely got it right and just upheld longstanding principles of U.S. copyrightability rules that don't warrant another high-level review because they're crystal clear, but Google will obviously do what it believes is best for Google. I hope for both Google and Oracle that they can soon agree on a license deal, but until they have an agreement in place, they'll keep fighting in court, possibly all the way up to the Supreme Court.

Depending on how quickly things resume in district court, we may see a Google motion for a stay in the near term. I'll continue to watch the relevant dockets and will blog about further developments. At that stage or even before I may address some of what has been said and written about the Federal Circuit opinion since my last blog posts about this case. I continue to believe that the Federal Circuit opinion is excellent news for software developers (who need reasonably strong IP protection), while affirmance of the district court ruling would have weakened copyright protection for software to a very worrying extent (despite Judge Alsup's efforts to present his non-copyrightability ruling as a narrow decision).

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Saturday, June 14, 2014

Apple and Samsung conserve resources, drop cross-appeal of ITC ruling on Apple's complaint

It would be an overstatement to call this a small-scale settlement and there are still no unmistakable signs of a thawing period between Apple and Samsung of the kind we saw last month when Apple and Google agreed to withdraw all patent infringement lawsuits against each other. But they have to start someplace. At least Apple and Samsung have been able to agree that there was nothing for them to gain from their appeals of last year's final ITC ruling on Apple's complaint against Samsung. Samsung was trying to have the import ban (which has had no commercial effect whatsoever because the ITC had cleared Samsung's workarounds) reversed while Apple was trying to prevail on one more headset-related hardware patent. The cross-appeal has now been terminated based on the parties' motions.

On Thursday, Samsung moved to voluntarily dismiss its appeal. It told the United States Court of Appeals for the Federal Circuit that it had "conferred with Appellee International Trade Commission and Intervenor Apple Inc., and neither party object[ed] to the requested voluntary dismissal." The following day, shortly after the motion was granted, Apple requested the dismissal of its own appeal as well. Apple noted that the dismissal of Samsung's appeal "means the Commission's exclusion order and cease-and-desist orders will remain in place." That's true in a formal sense. In a commercial sense it means that Apple gets zero leverage out of its ITC case against Samsung. Samsung's own ITC complaint against Apple fared no better because of a Presidential veto of an import ban Samsung had won over one standard-essential patents and the Federal Circuit's affirmance of the ITC decision to clear Apple of another Samsung SEP. That affirmance came down shortly after a recent hearing, without any further reasoning provided, suggesting that the Federal Circuit had nothing to add to the ITC's reasoning.

Apple had filed its opening brief in late March, and since that was the day the most recent California trial between these parties started (and also the day the Supreme Court held its hearing in Alice v. CLS Bank), I haven't previously looked at that brief. I was surprised that Apple wasn't even trying to prevail on its RE'922 "translucent images" patent. A few months ago the USPTO issued a reexamination certificate for certain claims, some of which had to be amended to survive reexamination. Maybe Apple's infringement case was weakened by the concessions it had to make in reexamination, and/or it concluded that Samsung would be fine with a workaround. In the now-terminated appeal, Apple focused only on its '697 headset-related patent, which the ITC found infringed but also invalid. This is how Apple described the '697 patent in its appellate brief:

"The '697 patent claims an 'electronic device' that detects whether an 'accessory component' such as a headset is plugged into the device. Based on that detection, the device uses either the plugged-in accessory component or a different input/output component such as the device's internal microphone or speaker."

This is a pretty broad description, but nevertheless Samsung claimed to have a workaround in place and Apple apparently thought this patent wasn't worth fighting for.

Since Samsung has been doing fine with its workarounds for the two patents on which Apple had prevailed at the ITC, this appeal was not a "must-pursue" type of action. Also, the Federal Circuit recently handed down an opinion that involved, among other things, one of Apple's two winning patents, the "Steve Jobs" touchscreen heuristics '949 patent, in the Apple v. Motorola "Posner case". In my analysis of that appellate opinion I wrote that the Federal Circuit opinion didn't appear to change anything about the legality of Samsung's workaround. In formal terms, that Apple-Motorola appeal has been dismissed, but the Federal Circuit would most likely have taken the same position on this patent again.

Unless Apple and Samsung have reached some sort of agreement about this, Apple could theoretically still seek damages for past infringement with respect to its ITC patents, particularly the "Steve Jobs patent". Samsung had filed a companion complaint in Delaware to its ITC complaint against Apple, but Apple focused only on its pursuit of an import ban. The ITC's liability findings are not binding on district courts, so there would have to be a whole new trial of infringement and (in)validity. Apple is not likely to make this effort since there is so little, if anything, to gain.

Apple and Samsung are still fighting hard on other fronts. They both appealed the final district court ruling in their first California case, with Apple presumably still trying to obtain an injunction and Samsung mostly trying to bring down the damages award, the bulk of which is related to design patents. They will certainly appeal the forthcoming final ruling in the second California case as well. Late on Friday they both filed replies in support of their motions for judgment as a matter of law (JMOL), i.e., motions to overrule the jury. Apple's brief is sealed, and Samsung's filing states nothing new. Apple also filed a reply in support of its motion for a permanent injunction (no surprises there either).

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