Wednesday, October 24, 2012

Microsoft asks appeals court to ban Motorola's Android-based devices over four more patents

In May, Microsoft won a U.S. import ban against Motorola's Android-based devices over a meeting scheduler patent. In the meantime, Microsoft has won three German injunctions against Motorola over patents relating to text messaging, file systems and input methods.

In June, both Microsoft and the wholly-owned Google subsidiary appealed the ITC decision. While Motorola Mobility is attempting to get the import ban lifted (in order to be able to re-implement the feature covered by Microsoft's patent), Microsoft appealed certain parts of the ITC ruling that didn't work out in its favor and prevented it from scoring a multi-patent win in an effort to convince Motorola Mobility of the need to take an Android-related patent license from Microsoft as Samsung, HTC, LG and others have done.

Today the public redacted version of Microsoft's opening brief entered the public electronic record. Microsoft picked four patents for this appeal. It could have appealed the ITC ruling with respect to a couple more patents but decided to focus. For example, one of the patents on which it isn't trying to prevail at this stage is so close to expiration that even a successful appeal would make actual enforcement unlikely (justice delayed is justice denied). From a timing perspective, this appeal to the Federal Circuit is most likely Microsoft's nearest-term opportunity to prove Android's infringement of more of its U.S. patents and to reach a tipping point at which Google, Motorola Mobility's owner, may agree that a royalty-bearing license deal is the commercially most intelligent choice. All of Microsoft's claims against Motorola in federal court have been stayed (just like Motorola's claims against Microsoft) in order to focus on certain FRAND contract issues. It's unclear when the district court will finally adjudge those claims, but Federal Circuit appeals of ITC decisions take only about a year from docketing, making this appeal likely to be resolved before any infringement ruling by the United States District Court for the Western District of Washington.

These are the four patents at issue in this appeal (in the order in which they appear in Microsoft's brief):

For each patent, Microsoft has to overcome a finding of non-infringement. For three of the four patents, the ITC also denied the existence of a domestic industry, which is a requirement for an ITC import ban. One key issue in the domestic industry context is that Windows Mobile devices sold in the U.S. by third parties were not recognized as domestic industry products, and that Microsoft's substantial U.S. investments in exploitation of its patents weren't recognized either. Considering that the Federal Circuit clarified in a different case (in which InterDigital, a non-practicing entity, was the appellant) that the domestic industry requirement is not limited to the sale of products implementing a patent (because Congress would otherwise have said so in the statute governing the ITC), there's case law from this same appeals court that may very well help Microsoft. This is just one issue, but an important one for one of the patents, and with more favorable claim constructions, Microsoft could prove a domestic industry -- and infringement -- for all four patents. For one of the patents (the '762 patent) Microsoft disagrees with the ITC's claim construction but doesn't challenge that interpretation on appeal, focusing instead on its position that the accused products infringe the asserted claims of that patent even under the ITC's construction.

These are the issues presented by Microsoft's appeal -- as you can see, claim construction plays a key role, and it's particularly easy to reverse on appeal:

  • Technical Prong of Domestic Industry:

    1. Did the Commission err by construing section 337(a)(3)(C), contrary to its language, legislative history, and prior decisions of the Commission and this Court, to require the production and sale of domestic products that embody the patented invention?

    2. Did the Commission err in any event by finding that Microsoft had failed to establish that domestic products practice its '762, '376, and '054 patents?

  • U.S. Patent No. 6,578,054 ("the '054 patent"):

    1. Did the Commission err in construing the "resource state information" limitation of the asserted claims contrary to its ordinary meaning?

    2. Did the Commission err in finding that the Accused Products do not utilize "resource state information"?

  • U.S. Patent No. 7,644,376 ("the '376 patent"):

    1. Did the Commission err in construing the "notification broker" and "client applications" limitations of the asserted claims contrary to the intrinsic evidence?

    2. Did the Commission err in finding that the Accused Products do not infringe even under its claim construction?

  • u.s. Patent No. 6,826,762 ("the '762 patent"):

    1. Did the Commission err in finding that the Accused Products do not infringe the asserted claims as construed by the Commission?

  • U.S. Patent No. 5,664,133 ("the '133 patent"):

    1. Did the Commission err in holding that limitations requiring that menu selections be "related to" or "associated with" data objects or containers require not only that the menu selections bear some relationship to the objects or containers, but also that the relationship be established or determined before the menu selections are retrieved?

    2. Did the Commission err in construing the limitation requiring that a menu be displayed "in the proximity" of a graphical representation of a data object to require that the menu be "deliberately" placed in that position?

    3. Did the Commission err in finding that the Accused Products and MMI's "Alternate Design" do not infringe the asserted claims?

As far as the standard of review is concerned, I said before that claim constructions are easily overturned. A high percentage of claim constructions in U.S. patent litigation are modified on appeal. For infringement findings (the application of a given claim construction) the hurdle is higher. But there are other factors that determine the likelihood of success of an appeal.

For the '054 patent, the ITC arrived at a narrow claim construction (requiring version information in objects that only serve to inform a software component of the fact that the state of another object has changed). Unless the ITC, with Motorola's support, can defend that peculiar construction, the finding of non-infringement may also be reversed. It appears that there isn't a genuine dispute over any of the other claim elements.

Microsoft has two ways to prevail on the '376 patent. It either needs a less narrow claim construction or a new infringement finding under the ITC's own construction.

For the '762 patent I explained above that Microsoft focuses just on the infringement finding under the ITC's claim construction. It's a given that Motorola Mobility will point the Federal Circuit to the Mannheim Regional Court's recent finding of non-infringement with respect to a European member of the same patent family. But this will have limited weight since these are different jurisdictions and the Federal Circuit would view a German appeals court as its peer. I didn't see the written Mannheim ruling (these decisions are rarely published in Germany), but I attended the trial and there's at least a possibility of differences in claim construction.

Microsoft would need two claim construction wins with respect to the '133 patent, but again, claim constructions are frequently reversed.

An observation I'd like to share in closing is that Microsoft's asserted claims (one patent can have many times and a plaintiff can assert multiple claims from the same patent) include a couple of method claims, and Microsoft's argument concerning those claims makes reference to the ITC ruling on now-HTC-subsidiary S3 Graphics' complaint against Apple, which also plays a key role in the remanded investigation of Motorola Mobility's complaint against Microsoft. In a footnote, Microsoft clarifies that it supports the ITC position that post-importation infringement of method claims, without an infringement through importation itself, can't give rise to import bans. But since the appeal of the S3 Graphics case is before the same court now and a few months ahead, the Federal Circuit will most likely rule on that one before it decides any of the Microsoft-Motorola cases. In the event that the Federal Circuit disagrees with the ITC, Microsoft just wants to ensure that the same standard also be applied to the method claims it's asserting against Motorola.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Share with other professionals via LinkedIn: