Today a newspaper journalist contacted me about my recently-posted list of the 17 Apple and Microsoft patents that courts in different jurisdictions have found Android-based devices to infringe and asked me whether I also had a list of offensive cases the Android camp has won against Apple and Microsoft. There are so few cases of this kind that I don't need a written list, but I realized that even if I don't need it, it may be useful to others.
Samsung, HTC and Google's Motorola Mobility are suing Apple. Motorola is also suing Microsoft, but Samsung and HTC are not. All major Android device makers except for the Google subsidiary already have a royalty-bearing Android patent license from Microsoft. So this post is about the results that Samsung has achieved against Apple, Motorola against Apple, and Motorola against Microsoft.
HTC is suing Apple but hasn't won any offensive case yet (nor has it been hit too hard: it's only being affected by one Apple patent at this stage).
Three Samsung patents and two Motorola patents have been found infringed by Apple, and two Motorola patents (on the same standard) were deemed infringed by Microsoft. All three winning Samsung patents and three of Motorola's four successful patents are FRAND-pledged standard-essential patents. And the non-standard-essential patent Motorola asserted against Apple is the only one over which an injunction is presently being enforced (in Germany). By comparison, injunctions (including ITC import bans) are, as of the time of writing this post, being enforced against Android device makers over five Apple patents (items 1, 2, 4, 5 and 8 on my list) and four Microsoft patents (items 6, 7, 12 and 17 on that list). this means there are nine Apple and Microsoft patents that Android device makers currently have to work around, while there is only patent held by Android companies that Apple has to work around, and no current enforcement of injunctive relief against Microsoft. Permanent injunctive relief has yet to be decided (but could be won in December) with respect to five more Apple patents that a jury deemed infringed (items 3, 13, 14, 15 and 16). Over patent #9 (a Siri-related Apple patent), the appeals court will soon decide whether to affirm a preliminary injunction (in which case a Galaxy Nexus ban would no longer be stayed). With respect to patents #10 (the new slide-to-unlock patent) and #11 (autocorrect), permanent injunctive relief could be granted after a trial scheduled for early 2014.
Here's a summary of the Android camp's half a dozen offensive wins, in chronological order of the rulings:
EP1010336 on a "method for performing a countdown function during a mobile-originated transfer for a packet radio system"
On December 9, 2011, Motorola Mobility won a permanent German injunction over this cellular standard-essential patent against Apple in Mannheim. In early February 2012, Apple temporarily removed a few products from its German online store as a result of Motorola's enforcement of this injunction. After about a day, the appeals court (the Karlsruhe Higher Regional Court) temporarily suspended enforcement. On February 27, 2012, this stay was extended for the entire duration of the appeals process. Six months later, Motorola Mobility confirmed that Apple is now licensed to its wireless SEPs in Germany, with only the amount of a FRAND royalty and damages for past infringement left to be determined by the courts. Google-owned Motorola will get paid, but it won't be enough to force Apple to stop its patent enforcement against Android. What Motorola really wanted was the ability to block Apple's sales in Germany in order to have leverage for a global settlement.
EP847654 on a "multiple pager status synchronization system and method"
On February 3, 2012, and again in Mannheim, Motorola won a German patent injunction over this non-standard-essential push notification patent against Apple. Three weeks later, Apple informed its customers of Motorola's enforcement of this injunction. On March 14, 2012, the Karlsruhe Higher Regional Court denied an Apple motion for a stay. Enforcement is still ongoing based on what I hear from some German Apple customers.
Technically these two patents are at the heart of separate parallel cases, but for the purpose of this overview, they present the same issues (except that the first one of them will expire in less than three months from today). On May 2, 2012, the Mannheim Regional Court granted Motorola Mobility injunctive relief against Microsoft over these two patents. English translations of these rulings became available later that month. By the time the injunction was ordered, the United States District Court for the Western District of Washington had already barred Motorola, which previously offered in the United States a worldwide license to all of its H.264 (and IEEE 802.11) SEPs to Microsoft, from enforcing any such German injunctions. In mid-May, the related temporary restraining order (TRO), which Motorola appealed a few weeks later, was converted into a preliminary injunction (with Motorola's appeal obviously continuing).
The Ninth Circuit (since this is a contract matter, not a patent infringement or validity case) held a hearing on this appeal on September 11, 2012. A decision on the appeal could come down anytime now. But at least for now, Motorola cannot enforce those H.264 patent injunctions, and even if its appeal to the Ninth Circuit succeeded, it would still face significant hurdles in Germany.
EP1188269 on an "apparatus for encoding a transport format combination indicator for a communication system"
On June 20, 2012, Samsung finally won its first offensive case against Apple in The Hague, Netherlands, over this 3G/UMTS-essential patent. But the court had previously ruled out injunctive relief over this FRAND-pledged patent. Samsung will receive some money for Apple's past infringement and future use of this patent, but it won't be much (the market is small and the court indicated that Samsung's 2.4% royalty demand was way out of the FRAND ballpark).
Two Korean 3G-essential patents
On August 24, 2012, approximately 20 hours before the California jury verdict, the Seoul Central District Court granted Samsung two injunctions over 3G/UMTS-essential patents. No enforcement has happened so far, and Apple has moved for a stay, which local observers believe is likely to be granted. The Korean antitrust authority is investigating Samsung's related conduct, showing that the Korean government is aware of the wider-ranging negative implications of SEP abuse.
These are the facts as per the moment of publishing this post. I will also update this list from time to time.
In light of the facts, claims that there have been "wins and losses on both sides" or suggestions that Motorola is in a strong position against Apple in Germany are grossly misleading. A more accurate portrayal is that the Android camp's most significant wins have been defensive (fending off claims as opposed to successfully asserting one's own patents against a rival), that the entire Android camp is presently enforcing only one patent against Apple and none against Microsoft, and that SEP abuse has not proven to be a viable strategy (it has not resulted in any presently-enforceable injunction, but it has triggered multiple antitrust investigations). Implying a balance where (such as in this case) there isn't one is just as wrong as claiming an imbalance that doesn't exist (such as in some other contexts).
Just to be clear, it's not just about numbers: the key question is what the actual business impact is. In that regard, what matters more than anything else is injunctive relief. No one can seriously argue that the enforcement of a push notification against Apple in Germany (which is a temporary nuisance to some users but doesn't affect Apple's sales) effectively counterbalances Apple's and Microsoft's enforcement of injunctive relief over nine patents in different jurisdictions. Arguably, even Apple's ITC import ban against HTC over the "data tapping" patent, which is not devastating, has at least as much impact as (if not more than) the push notification patent, which is the only one over which the Android camp is presently enforcing injunctive relief against a rival anywhere in the world.
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