Saturday, February 11, 2012

Apple requests U.S. preliminary injunction against the Samsung Galaxy Nexus based on four high-power patents

Apple has brought a motion in the United States for a preliminary injunction against the Galaxy Nexus, the official Android 4.0 ("Ice Cream Sandwich") lead device developed by Samsung in close cooperation with Google. A public redacted version of the filing, which was made on Thursday with the United States District Court for the Northern District of California, became available late on Friday. I believe the court will rule on this motion within a matter of months.

The motion is based on four patents, which are the patent equivalent of the Four Horsemen of the Apocalypse:

  1. the "data tapping" patent based on which the ITC ordered an import ban against HTC

  2. a patent related to Siri and unified search, which must be of huge concern to Google with a view to its core business

  3. a new slide-to-unlock patent that even had the head of the Taiwanese government profoundly worried

  4. a word completion patent that provides major speed improvements for touchscreen text entry

Three of these patents were granted only recently. Their numbers start with an "8", and the eight millionth U.S. patent was issued in September 2011. The only older one, the "data tapping" patent, should be a slam dunk. It succeeded in the ITC, a notoriously difficult forum where only about 1 out of 20 smartphone-related patents is deemed violated. It also says something that HTC removed the feature and didn't even appeal that part of the ITC ruling (though Apple appealed other parts).

You can find more detail on those patents further below.

Preliminary injunction motion is part of new federal lawsuit

This preliminary injunction motion was filed simultaneously with a new federal lawsuit. It is possible, and even reasonably probable, that these four patents were selected out of a larger group of patents asserted in the main proceeding. The main complaint itself has not yet entered the public record.

Apple already has another lawsuit going against Samsung (in which Samsung is counterclaiming, mostly with FRAND patents) in the same federal district, with a trial likely to take place in the summer. With the other case being that far along, consolidation of the two cases into a single action is highly unlikely.

In that other action, Apple also brought a motion for a preliminary injunction, based on a subset of the intellectual property rights asserted in the main complaint (which is probably the case here as well).

In early December, Judge Lucy Koh (to whom this new Apple v. Samsung case has also been assigned) denied that motion. Apple appealed that decision to the Federal Circuit, which could overrule Judge Koh. There are important reasons for which this new motion may very well succeed even though the previous one failed:

  1. This time around, Apple brought its motion for a preliminary injunction simultaneously with its original complaint. Last time Samsung held the passage of time between the original complaint and the preliminary injunction against Apple, and it may have created doubts on Judge Koh's part about Apple's sense of urgency.

  2. Judge Koh's denial of the first PI motion actually provided guidance as to what Apple would have to do differently to convince her. In particular, she wanted to a see evidence of a "nexus" between the availability of infringing Samsung products and any irreparable harm caused to Apple's business. While Apple still believes that this kind of showing is not required, it has gone out of its way to comply with this instruction regardless. In that context, Apple presents market data concerning the shift from feature phones to smartphones and stresses that once a user becomes an Android user, he will face a "switching cost" and have other reasons not to migrate to Apple's iOS platform.

  3. Direct competition between Samsung and Apple is now even more striking than it was last summer.

  4. Three of the four asserted patents were issued long after any negotiations between Apple and Samsung. There's no more argument over Apple having tolerated infringement for a long time before bringing a complaint.

  5. This time around, Apple focuses competlely on strong technical patents. Last time, the emphasis was mostly on softer, design-related rights. I would never have referred to those as Horsemen of the Apocalypse -- by comparison, those rights were more like pussy cats.

  6. Apple portrays Samsung as an unrepentant, "recidivist" infringer whom the courts must finally stop.

  7. Appe's ongoing Federal Circuit appeal (over the last denial of a preliminary injunction) might provide clarification in Apple's favor, either before a decision on this second motion or not too long thereafter.

  8. Many judges in the U.S. probably realize that the combination of their slow process and their recent reluctance to grant injunctive relief calls into question the protection of intellectual property in that country. The fact that companies from all over the world increasingly turn to German courts (which represent the other extreme) may make some of them realize that something must change.

In the next section, I'll talk about the product targeted by the preliminary injunction motion. Thereafter, I'll list the patent numbers and titles, and in the final section I'll explain why recent events in Germany have led me to adjust my position on Apple's penchant for preliminary injunction motions.

The target: the Galaxy Nexus

For every major version of Android, Google partners with one hardware company to develop an official lead device that comes with a time-to-market advantage for the vendor in exchange of the device makers's compliance with Google's rules. Those lead devices always contain the word "Nexus" in their name.

The version of Android that is installed on those devices is commonly referred to as "stock Android", meaning it's Android as supplied by Google, without vendor-specific enhancements on top. When companies like Apple assert patents against Android devices, some of the infringement contentions relate to features that reside at the level of extensions developed by OEMs. Google has sometimes refrained from implementing certain features in "stock Android" just to steer clear of infringement, knowing that some of those functionalities woul be implemented by OEMs anyway.

In this case, stock Android itself is at issue. This means that Google cannot deny its undivided responsibility for any infringement findings.

A preliminary injunction would not prohibit the sale of a Galaxy Nexus just because it's called Galaxy Nexus or looks like one: it's all about which patents it infringes on. Theoretically, Google could remove the functionality protected by any of these patents in order to keep the product on sale, but if it changes the program code of a lead device, this would make it particularly clear to everyone else in the market that there's an infringement issue.

I am absolutely certain that Apple's new complaint in California accuses a long list of Samsung products of infringement, but for the preliminary injunction motion, the Galaxy Nexus was singled out because it's so new, and important.

Its role as a "lead device" could also contribute to the willingness of the court to order a preliminary injunction.

I was first to report on Apple's infringement contentions against the Galaxy Nexus in Germany. I personally attended a court session at which Apple handed those contentions (in writing) to the judge and to Samsung's counsel. There was some confusion afterwards because an unnamed Samsung spokesman denied this when asked by a Korean newspaper, but that person was simply not yet up to date, while I was right. Simple as that.

Apple failed to win a preliminary injunction in Munich against the Galaxy Nexus (and the Galaxy Tab 10.1N), but based on a patent that is at issue in the first California action, not the new one. Yesterday, Apple effectively transferred its claims based on that patent to another German city, Mannheim.

Further detail on the four patents-in-suit

I want to give credit to PatentlyApple for having been first to show the titles of the different filings Apple made and to AppleInsider for having listed the four patents at issue in the preliminary injunction motion because they appeared in the titles of certain declarations.

I described these Four Horsemen of the Apocalypse in general terms in the first section of this post. Let me now provide their numbers, titles, and further explanations of their strategic significance:

  1. U.S. Patent No. 5,946,647 on a "system and method for performing an action on a structure in computer-generated data" (which I dubbed the "data tapping" patent, a term many reporters have since adopted)

    The legal case for a preliminary injunction is extremely strong here since Android infringes this patent at the operating system level (the "linkify" library), as you can see in this infringement claim chart from the HTC case.

    I wrote in late December that Google's utterly problematic decision to keep this unlawful feature despite an ITC ruling (that formally relates only to HTC's products though Google itself is responsible for this infringement) is unfair vis-à-vis HTC (whose products are weaker because they have to respect the decision), snubs Apple, and shows disregard for intellectual property in general and the ITC in particular. This is a case of willful, extremely reckless infringement.

    Apple is also asserting this patent against Motorola in Chicago. It made a whole lot of sense for Apple to enforce this one as quickly and forcefully as possible against Google's official Android 4.0 lead device.

  2. U.S. Patent No. 8,086,604 on a "universal interface for retrieval of information in a computer system"

    This patent relates to the Siri way of doing Internet search. Obviously, Apple wants Siri to be a key differentiator for the iPhone 4S. But this patent isn't important only in connection with Android. If Apple successfully enforces this patent against Samsung, Google will also face a major problem in its own core business, search. Given that Google wholeheartedly endorses Motorola's aggressive actions against Apple, it's of strategic importance for Apple to be able to also pose a threat to future generations of the Google search engine.

  3. U.S. Patent No. 8,046,721 on "unlocking a device by performing gestures on an unlock image"

    This is not the first but probably the most powerful Apple patent so far on slide-to-unlock.

    In recent months I attended three different trials at which slide-to-unlock was discussed. I also discussed in detail with students at the Munich University of Technology, where I recently gave a guest lecture. I asked them what unlock mechanisms their phones featured, and explained to them what arguments Apple, Samsung and Motorola raise in court with respect to whether or not those infringe Apple's older slide-to-unlock image patent.

    There are few patents that I've spent more time hearing, reading and thinking about than the original slide-to-unlock patent (U.S. Patent No. 7,657,849, EP1964022). On that basis, it appears to me that the new slide-to-unlock patent is harder to work than the original one, but the prior art contentions that were presented against the older one aren't going to be more likely to succeed. It remains to be seen the new invalidity contentions that Samsung will be sure to present, but it looks to me like this patent was optimized for Apple's strategic purposes in these litigations.

  4. U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations"

    I have to analyze this more closely, but like the Siri-related patent this one also appears to be quite relevant to mobile search, beyond just Android. I have a Galaxy Note (and previously used a Galaxy S II) and I think the functionality that this one covers is used by Google's mobile search app.

The fact that three of these patents are very new shows that Apple's patent portfolio gets "reinforcements" all the time as a fruit of Apple's innovation in recent years. By contrast, companies like Motorola Mobility and Samsung don't appear to be granted impressive new patents these days in fields that are relevant to Apple. Otherwise we would have seen some of them asserted in litigation by now, I'm sure.

Since Apple now increasingly asserts newly-granted patents against Android, I recommend the PatentlyApple blog to all those who wish to keep up to date on Apple's new patent applications and patent grants. At the same time, it's important to understand that only a limited number of patents are ever asserted in court, and litigation is the moment of truth for a patent (unlike examination by patent offices, considering that most patents in this field are invalid as granted; not always entirely invalid, but typically narrowed by courts).

Adjusted position on preliminary injunction motions

I have repeatedly voiced criticism of Apple's (and Samsung's) various (and largely unsuccessful) attempts to win preliminary injunctions. I didn't like that approach and I doubted its effectiveness. All other things being equal, those positions would still be the same. But over the last eight days, a lot of things have happened that have resulted in an adjustment on my part. Because of the need for Apple to respond to FRAND abuse by companies like Motorola and Samsung, wholeheartedly endorsed by Google, I now accept the fact that Apple needs to ratchet up and accelerate its enforcement of standard-unrelated patents.

Eight days ago, Apple had to temporarily remove various products from its German online store as a result of a Motorola injunction (granted by a court, despite being an obvious case of FRAND abuse, in accordance with Gemany's dogmatic, anticompetitive patent case law). Later that same day, Motorola Mobility even tried to force Apple, at a trial, to formally recognize that the iPhone 4S "violates" that same standard-essential patent, even though there's every indication that Apple is licensed, by extension, as a result of a Motorola-Qualcomm agreement. The number two judge on the panel also tried to pressure Apple into recognizing an infringement that most likely isn't one.

Then, a few days later, Google issued a statement on the post-acquisition use of Motorola Mobility's standard-essential patents that has more loopholes than a Swiss cheese and clearly endorsed Motorola's practices. This makes it clear that the situation is going to exacerbate considerably.

In light of all this, my personal feelings about preliminary injunction motions have changed from "negative" to "neutral", and my view of their tactical suitability has changed from "overly ambitious" to "apparently necessary". Apple needs to get leverage, especially in the United States, but also in other jurisdictions, before it comes under too much pressure due to some companies' FRAND abuse. (Again, without the things that happened during those past eight days, I would also have reacted differently to this week's motion).

In closing, let me announce that I have a follow-up blog post on the German situation coming up (this weekend or on Monday) as well since Apple filed a new lawsuit against Motorola in the United States to prevent it from further claiming that the iPhone 4S infringes its patents (the product comes with a Qualcomm chip, and it appears that Motorola has no right whatsoever to go after Qualcomm's customers based on patents implemented by that chip).

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