Last month (December 2011), the ITC held a hearing on Motorola's complaint against Apple, filed in October 2010 over six patents. A few weeks prior to the hearing, Motorola Mobility dropped one of those patents (U.S. Patent No. 5,359,317 on a "method and apparatus for selectively storing a portion of a received message in a selective call receiver"). Yesterday, MMI brought an unopposed motion to drop a second patent from the investigation: U.S. Patent No. 7,751,826 on a "system and method for E911 location privacy protection".
The idea underlying the '826 patent is that users may wish to deactivate GPS location tracking for privacy reasons but still want to transmit their location information to emergency responders when they place a 911 (emergency) call. The patent has multiple claims describing different ways to do this. If GPS is generally disabled, it can be enabled temporarily after the emergency sequence "9-1-1" is entered, or there can be a button or other ways of using GPS when it's really needed.
I haven't been able to find any indication in a FRAND lawsuit between the parties (in the Western District of Wisconsin) that Motorola ever declared this patent (or the previously-dropped '317 patent) essential to a telecommunications standard.
Dropping the emergency call-related patent made sense regardless of FRAND issues. If Motorola won an ITC import ban over devices implementing that feature, it's quite possible that the ITC would deny or delay such a ban for public interest considerations. Emergency response issues have already been raised by parties in other mobile patent disputes.
Motorola dropped those two patents without prejudice and is still asserting them in a federal lawsuit (in the Western District of Wisconsin, from where it could be transferred to Chicago at some point).
Generally, narrowing a case is what the ITC wants plaintiffs to do all the time. MMI is now down to four patents in this investigation, the number of patents that Apple asserted against HTC at the end of that process. By focusing on fewer patents, ITC litigants can discuss in more detail the issues surrounding the remaining patents, and there are strict page limits for any related briefs. That is one advantage of a narrow case, and by far not the only one.
An initial determination by an Administrative Law Judge is due on (or before) April 23, 2012.
I have taken another look at some other litigations between Apple and Motorola in the United States. A case involving 15 Apple and 6 Motorola patents was recently transferred from the Western District of Wisconsin to the Northern District of Illinois, where Motorola's portion of the assertions originated. The judge in Chicago, who "enjoys trying patent cases" according to his Wisconsin-based colleague, is pressing on to take this case to trial pretty soon. I saw a couple of recent orders, and there will be some hearings next week, including one at which the judge will discuss possible trial dates with the parties.
Apple raised FRAND defenses against some of Motorola's patents asserted in that case. I saw a letter from a French official who told, in French, the Wisconsin court that a set of discovery requests concerning ETSI (the European Telecommunications Standards Institute, which is based in France) have been received, but they were sent directly by an Apple lawyer to the French authority, though the letter says that the Hague Convention would require such requests to be sent directly from the requesting court (in this case, a U.S. district court) to the central authority of the country asked to enforce the request. I guess Apple will now ask the Chicago-based court and/or the Wisconsin-based court to send such a letter to France.
A lawsuit instigated by Apple in Wisconsin over FRAND issues is, as of now, still scheduled to go to trial in Wisconsin on November 5, 2012. Given that the issues it raises overlap with the case already transferred to Chicago, it remains to be seen how the courts will ultimately organize these cases.
If this looks like a multi-venue mess to you, it is one indeed.
In this section on Apple's tactical mistakes in its litigations with Motorola and Samsung (part of a post that mostly discussed what went wrong in Apple's dispute with HTC), I mentioned that Apple could very probably have avoided this (including the need to fight against Motorola in its home region) if it had acted more swiftly. A document filed by Motorola in October 2010 indicated that Apple had thrown down the gauntlet in the sense of Motorola knowing it had patent infringement actions coming, but lost the race to the courthouse. It's obviously difficult to know exactly how those conversations between the parties went, but Motorola must have had a reason for claiming, at the time, that it had a "reasonable apprehension" of Apple preparing lawsuits against it.
I watch many such disputes and some other parties, such as Oracle (in its dispute with Swiss mobile Java company Myriad) and Nokia (which outsmarted Apple, especially in Germany, where Nokia had a timing advantage with its Mannheim actions over Apple's actions, which were primarily brought in Düsseldorf), are tactically much more sophisticated about when and where to sue than Apple was when its disputes with HTC and Motorola began back in 2010.
In this context of timing and venues and related tactics, let me remind everyone of the fact that the only final (though appealable) ruling in any lawsuit between Apple and Motorola that has come down so far is the one that MMI won in Mannheim about a month ago. Previously, Motorola also won a German default judgment against Apple (which will be reviewed in a month, and will probably, at least in part, be turned into a decision based on the substance of the matter). Should MMI seek enforcement of any such ruling (especially the December ruling, which relates to a standards-essential patent) against Apple, that could be one of the most interesting stories to watch in 2012.
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