Thursday, March 15, 2012

Apple drops two 'display space' patents from litigation with Motorola in Miami

[Unrelated Note] Before I address the latest in this Apple v. Motorola case, I'd like to ensure those of you following Oracle v. Google are aware of my update to the previous post. The judge presiding over that lawsuit wants to keep the April 16 trial date and appears to have solved a scheduling conflict that Google's lead trial counsel raised in a letter yesterday. [/Unrelated Note]

A few days after streamlining its ITC case against Samsung, Apple has also performed some winnowing of its infringement counterclaims against a lawsuit Motorola brought in the Southern District of Florida in 2010. That case is currently scheduled to go to trial starting October 22, 2012.

A week ago, Apple and Motorola brought a joint motion to amend the schedule of the case, and the first item on the list was a March 22 "deadline for Apple to substantially narrow its asserted claims". It appears that Apple has done so eight days ahead of schedule -- or maybe Apple plans to do some further narrowing.

Yesterday, Apple and Motorola brought a joint motion for summary judgment on U.S. Patents 6,282,646 and 7,380,116. Both patents relate to a "system for real-time adaptation to changes in display configuration". The newer one is a continuation of a continuation of the first one. A continuation is a kind of derivative under U.S. patent law.

The first part of the motion is Apple's acknowledgment that the court's December 1, 2011 claim construction order, which mostly sided with Motorola on the key terms in those display space patents, has created a situation in which "Apple cannot establish that Motorola infringed the asserted claims in the '646 and '116 patents".

Many other patent holders, whether deep-pocketed or desperate, would still try to persuade a jury of infringement, unless the patents are thrown out by way of summary judgment. Maybe Motorola would have been able to achieve this against Apple's will, but it certainly simplifies things for the court that Apple was prepared to withdraw those two patents for the time being. Apple does, however, reserve the right to appeal the court's claim constructions, and if the appeals court then remanded the case to the Miami-based court, Apple might reassert those patents. The summary judgment requested by yesterday's motion will hold those patents not to be infringed under the current claim construction, not necessarily under a modified one.

Motorola's part of the deal is that it withdraws its declaratory judgment counterclaims (asking the court to hold those patents to be neither valid nor infringed), but also with a limitation: it's subject to "Motorola's reservation of rights to reassert these or other counterclaims and defenses relating to the asserted patents should Apple’s infringement claims regarding the '646 and '116 patents be revived or reasserted for any reason (including, but not limited to, modification of the Court’s claim constructions on appeal resulting in a remand to the district court.)"

Originally, Motorola sued Apple over six patents, and Apple countersued over the same number of patents. Apple's case is now down to four patents, three of which are part of a patent family relating to an "audio-visual interface for the display of multiple program categories" (targeting Motorola's "set-top and DVR boxes that provide or operate in conjunction with an interactive Guide (for TV or DVR functions)". There are rumors that Google plans to sell Motorola's set-top box business after closing the acquisition. Prospective buyers may want Google to lower the price in recognition of Apple's pending claims.

The only Apple patent left in the Miami case that relates to Motorola's Android-based devices is U.S. Patent No. 7,657,849, the original slide-to-unlock image patent. On that one, Apple achieved a sweeping claim construction victory. The judge in Florida has given that patent an interpretation that is far broader than the one adopted by the Munich I Regional Court (which ruled partly in Apple's favor against Motorola), let alone the Mannheim Regional Court, which has so far interpreted that patent most narrowly (in a case against Samsung).

Motorola's Miami patents appear not to be standard-essential. They include the push notification patent (U.S. Patent No. 5,745,119 on a "multiple pager status synchronization system and method") Motorola is already enforcing against the email services of Apple's iCloud and MobileMe offerings in Germany.

I believe the Miami litigation is reasonably important to Motorola. Should it be denied injunctions based on the standard-essential patents it asserts in some other cases, the non-essential ones such as the ones asserted in Florida will be its only chance for real leverage against Apple. For Apple, however, the much bigger litigation against Motorola in the Northern District of Illinois, before a judge who is a living legend, is far more important -- and that one appears to be going quite well for Apple at this stage.

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