On Tuesday (January 31, 2012), Circuit Judge Posner, who is serving by designation on the United States District Court for the Northern District of Illinois to preside over an Apple v. Motorola Mobility lawsuit, entered an order that became electronically retrievable on Wednesday (February 1, 2012) and, among other things, tells the parties that there are still too many patents in play.
The order acknowledges that Apple and Motorola made a January 30 submission (which is not in the public electronic record, at least at this stage) that complied with a request to inform the court "of what patents they wish to litigate in the liability trial", but "not
fully satisfactorily". The judge wants more "winnowing" (as he likes to call the narrowing of a case by dropping patent claims) to take place:
"I'm not satisfied with the winnowing to date, which leaves nine patents for trial."
Originally, there were 21 patents at issue: 15 Apple and 6 Motorola patents. The judge threw out some of those claims on summary judgment, and the parties dropped others in order to be cooperative and narrow the case. This "winnowing" effort had the judge himself confused at some point. On January 23, he listed eight Apple and three Motorola patents that he believed were at issue. After he ruled, by summary judgment, that two of Apple's remaining patents weren't infringed, there would have been six Apple and three Motorola patents in play. But two days later, he listed seven -- not six -- Apple patents. Nothing changed about the list of Motorola's three patents selected for trial. The judge apparently knew that he might forget about a patent. In the January 23 order, he asked: "have I left anything out?" And in the January 25 order his patent list started with a similar expression of uncertainty: "unless I am mistaken (please point out if I am)"
Despite all of this confusion, I believe it's a reasonable assumption that the nine patents that are still at issue (based on what the judge said in his latest order) include six Apple and three Motorola patents. It's unlikely that Motorola dropped any of its three remaining patents.
All three Motorola patents that are presumably still being asserted in this action are patents that Motorola, according to what an order in the Western District of Wisconsin says, "has declared essential to certain standards" and therefore pledged to license on FRAND terms, an obligation that Apple claims Motorola didn't honor (it made an offer that Apple doesn't believe to meet FRAND criteria). These are the three patents:
U.S. Patent No. 6,175,559 on a "method for generating preamble sequences in a code division multiple access system" (CDMA is part of 3G/UMTS)
U.S. Patent No. 6,359,898 on a "method for performing a countdown function during a mobile-originated transfer for a packet radio system" (related to GPRS, the data transmission standard built on top of GSM); Motorola has already won (but apparently not yet enforced) an injunction against Apple over the European equivalent of this patent in Germany
The other three patents that Motorola originally asserted in this action were also FRAND-pledged patents that had been declared essential to standards.
At this point, I don't know which one of the seven patents Judge Posner listed in his Januar 25 order has been dropped. But let me provide the shortlist of seven patents because there are some interesting ones on that list (and we should soon know which one Apple dropped):
U.S. Patent No. 6,493,002 on a "method and apparatus for displaying and accessing control and status information in a computer system"; Apple is also asserting this one against Samsung (in California)
U.S. Patent No. 6,343,263 on a "real-time signal processing system for serially transmitted data"; this is the key API patent that Judge Posner interprets much more favorably to Apple than the final decision-makers at the ITC did (and which Apple is still pursing against HTC through an appeal to the Federal Circuit)
U.S. Patent No. 5,566,337 on a "method and apparatus for distributing events in an operating system"; Apple asserted this one against HTC but dropped it from an ITC investigation (previously, the ITC staff had made a negative recommendation on five Apple patents including that one)
U.S. Patent No. 6,424,354 on an "object-oriented event notification system with listener registration of both interests and methods"; the ITC staff did not find a violation of this patent by Nokia (but Nokia's technology is obviously different from Motorola's)
U.S. Patent No. 5,964,647 on a "system and method for performing an action on a structure in computer-generated data"; this is the "data tapping" patent based on which the ITC ordered an import ban against infringing HTC devices (HTC has meanwhile removed the feature in order to steer clear of infringement)
U.S. Patent No. 5,519,867 on an "object-oriented multitasking system"; Apple asserted this one in an ITC complaint against HTC but later dropped it from that investigation
U.S. Patent No. 7,479,949 on a "touch screen device, method, and graphical user interface for determining commands by applying heuristics"; this is a key Steve Jobs multitouch patent that Judge Posner appears to interpret quite favorably to Apple's interests, a fact that Apple flagged to the ITC, where it's using this patent against Samsung
Whichever six out of those seven patents Apple has selected, and whether or not there will be some further "winnowing" as per Judge Posner's request, the Chicago case involves some very interesting patents. The strongest ones of those patents could give Apple major leverage against Motorola, especially if Motorola can't overcome Apple's FRAND defense.
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