Sunday, November 25, 2012

Samsung attacking Apple's screen-to-speech functionality with German patent

At the end of my post on Apple's Black Friday motion to bring infringement claims against six more Samsung products in California I promised that I would report on the two Samsung v. Apple trials that took place in Mannheim on the same day. I'll start with the one relating to a non-standard-essential patent. DE10040386 (B4) is the German equivalent of U.S. Patent No. 6,937,700 on a "device for and method of outputting data on display section of portable telephone". The lengthier English title of the underlying patent application is "speech output device for data displayed on mobile telephone converts data from display into speech data for output via loudspeaker". In a nutshell, it's a patent on pushing a button and getting the screen content, including not only text but also icons, read aloud to you.

I haven't seen Samsung assert the aforementioned U.S. patent yet. I believe it would be very, very hard for Samsung to obtain a favorable claim construction in the U.S. given what its patent attorneys stated during prosecution. In order to get this patent granted, they argued that the patent sets itself apart from the prior art by teaching that there be two different kinds of memory, one for the screen content and a separate one for the audio data that is generated, but Samsung's infringement theory against Apple is that it's sufficient to have two different blocks of memory (even if we're talking about the same physical memory unit). Apple's lead counsel in this action, Dr. Frank-Erich Hufnagel of Freshfields Bruckhaus Deringer, said he had never before seen such an extreme case in which a patentee claims in an infringement action the exact opposite of its position during the original examination process. But he did recognize that prosecution history doesn't have much of a bearing on claim construction in Germany -- which is exactly why I believe Samsung decided to assert this particular patent in Germany and not in the United States. Samsung is a global player of increasing sophistication in tactics commonly referred to as "forum-shopping".

Apple also has other non-infringement arguments, the first one of which is that the claim language requires an "audio output key", a limitation that Apple believes is not practiced if audio output is triggered by tapping on an on-screen button, considering that the patented invention was very much about helping the visually impaired. Samsung reacted to that non-infringement argument by presenting an additional infringement theory on Friday, arguing that the iPhone can be configured in such a way that triple-pressing the Home button results in speech output of the screen content. This introduction of a new infringement theory at trial time might delay adjudication of this case.

I don't think too highly of this particular patent, but Samsung made a smart tactical choice by bringing this assertion in Germany. The question of two different memory units -- "a memory for storing data displayed on the display section of the portable telephone" and "an audio memory for storing audio data corresponding to the audio output mode of the portable telephone" -- is probably going to be outcome-determinative. Under German law, Samsung may indeed get away with a flagrant contradiction between the prosecution history and its infringement contentions. But even if it does succeed on the infringement side and the court accepts that the distinction between two kinds of memory must be made from a software and not hardware angle, the case may well be stayed over doubts concerning the validity of this patent in light of such a broad construction. In this regard, Apple made an argument that is specific to the European legal framework: since computer programs "as such" aren't patentable under the European Patent Convention, computer-implemented inventions must make a technical contribution to the state of the art, and a mere distinction between two logical memory blocks doesn't have a technical effect. It would be a software patent "as such". This is the first time that I saw Apple argue on the basis of Article 52 of the European Patent Convention.

Apart from the question of patent-eligible subject matter, there is also some prior art, but Samsung argues that earlier inventions simply provided text-to-speech output but were unable to convert such information as "87% battery power", which may be represented through icons, into speech. Dr. Joel Naegerl of Zimmermann & Partner, a patent attorney representing Samsung in this matter, conceded that "the scope of this patent is, if you will, minimal", but noted that "it is being practiced". This takes us back to the question of a technical contribution, as Apple's patent attorney in this litigation, Dr. Thomas Koch of Hoffmann Eitle, noted. Dr. Koch stressed that novelty hinges exclusively on technical contributions to the state of the art, and he can't see which technical problem is solved by distinguishing between two kinds of information.

All in all I would be surprised if the decision, which has been scheduled for January 25, 2013, would go in Samsung's favor. I believe the court is more likely to either reject the infringement theory or, perhaps even more likely, stay the case pending a parallel nullity (invalidation) proceeding. Or maybe there has to be a new trial due to Samsung's late-stage introduction of a second infringement theory (triple-pressing the Home button after reconfiguring the system). But the fact that Samsung wasn't given short shrift at the trial because of a blatant contradiction between its position during examination and its infringement theory against the iPhone shows how plaintiff-friendly the German legal framework is. Knowing that many of my readers are interested in the intricacies of parallel multijurisdictional litigation, I'll elaborate now on the relevance of prosecution history to German infringement cases.

In all jurisdictions, any claim construction analysis naturally begins with the claim language itself, and is followed by what the specification states. The patent should serve as its own dictionary. But in the United States, proseuction history is part of the intrinsic evidence considered in claim construction, i.e., it's part of the most important category of evidence. Let me quote two paragraphs from one of Judge Koh's claim construction orders in Apple v. Samsung (case no. 11-cv-1846, N.D. Cal., Doc. No. 1266, filed on July 20, 2012):

"The court may also consider the patent’s prosecution history, which consists of the complete record of proceedings before the United States Patent and Trademark Office ('U.S. PTO' or 'PTO') and includes the cited prior art references. The court may consider prosecution history where it is in evidence, for the prosecution history “can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it otherwise would be.' Id. at 1317 (internal citations omitted).

Finally, the court is also authorized to consider extrinsic evidence in construing claims, such as “expert and inventor testimony, dictionaries, and learned treatises.' Markman, 52 F.3d at 980 (internal citations omitted). Although the court may consider evidence extrinsic to the patent and prosecution history, such evidence is considered 'less significant than the intrinsic record' and 'less reliable than the patent and its prosecution history in determining how to read claim terms.' Id. at 1317-18 (internal quotation marks and citation omitted). Thus, while extrinsic evidence may be useful in claim construction, ultimately 'it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.' Id. at 1319."

Now contrast this with a quote from Lord Justice Jacob in the UK that Judge Voss ("Voß" in German) mentioned on Friday: "the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide". In Europe, the law does not require courts to look at prosecution history. Proposals were on the table but not adopted. In Germany, there's only one scenario in which the positions taken by a party in prosecution can result in some kind of estoppel in an infringement proceeding: a statement made in defense of the patent in a parallel nullity action can be held against an assertion made in the infringement proceeding, but only between the same parties -- and infringement cases are adjudged more quickly than nullity actions, which further reduces the likelihood of this being any useful.

There are two key reasons for which the case law in Germany disfavors references to the prosecution history. The first one is also part of the above quote from Lord Justice Jacob -- the prosecution file isn't publicly accessible over here. I don't think that argument deserves much weight, if any at all, given that a defendant against an infringement allegation could still make use of it in a legitimate way after having been sued. The other argument is that the prosecution history involves not only documents but also oral communication that cannot be researched or verified later on. This is a better point than the first one, but I still believe it would be better policy to take prosecution history into consideration, given that a patentee can always take measures to ensure that relevant statements are well-documented for future use and that some statements are so very clear, such as Samsung's position on the two kinds of memory, that there can't possibly be any oral statements that substantially affect their meaning.

Unlike in the U.S., where lawyers can unapologetically argue based on prosecution history, defendants' lawyers in Germany can only argue (except in the situation outlined above in which the parties to a nullity and an infringement proceeding are the same ones) that the patent examiner is an example of a person skilled in the art whose understanding is, therefore, a relevant indication. But this only benefits a defendant if the claim language coupled with the specification supports a given non-infringement theory, with prosecution history providing just another indication of the defendant's proposed claim construction being the correct one.

This is a mental detour and clearly diminishes the weight of prosecution history. But I see defendants in Germany argue on the basis of prosecution history all the time, presumably because they believe that for psychological reasons the persuasive value of arguments based on prosecution history is greater than its formal legal weight. For example, Dr. Marcus Grosch of Quinn Emanuel, who represents Google and its Motorola Mobility subsidiary in its German patent disputes with Apple, Microsoft and Nokia (in the Nokia lawsuits against HTC and ViewSonic, Google is a third-party intervenor), points to prosecution history in most of the cases in which he acts for a defendant. Another Quinn Emanuel partner, Dr. Johannes Bukow, is Samsung's lead counsel in this screen-to-speech case and obviously argues the other way on this occasion.

In the overall context of European patent harmonization and the creation of a unified European patent judiciary, some of these issues that matter to defendants may spark further political debate in the years ahead. There is concern in the industry that the opportunity for patent holders to win Europe-wide injunctions under the German patentee-friendly framework could result in an explosion of European patent litigation. Those who advocate a more balanced framework should definitely make a greater weight for prosecution history one of their top five objectives.

As for this particular case, the court didn't give any indication that was clearly negative for Samsung, but I just see a combination of non-infringement and invalidity arguments here that make it hard for Samsung to win an injunction right away. I've been watching Judge Voss's court a lot lately. I've visited Mannheim roughly 30 times since November 2011. I blogged about most of the hearings, trials and announcements I attended there, except for a couple of trials I followed only as a consultant to third parties. Initially I thought this was the Eastern District of Texas on steroids, an impression based in no small part on the court's rather limited receptiveness to the FRAND defense, but I have come to adjust my opinion over time and I have the greatest respect for the court's competence. Judge Voss understands technical issues extremely well, and his panel appears to be a great team. Its other members also ask really great questions. If a patent holder asked me about my opinion on Mannheim as a venue, I would never recommend against that choice (though it's obviously not the only option here), but Judge Voss wouldn't easily hand down injunctions based on spurious infringement allegations or patent of dubious validity. If he's too skeptical, he tends to at least order a stay.

In one case -- Apple's photo gallery patent -- Judge Voss ordered a stay even though courts in The Hague and Munich had granted Apple injunctions. I was initially surprised, but his decision made a lot more sense to me once I found out that his claim construction was broader than that of the other courts. The broader a patent is (or is deemed to be), the more likely it is to be invalid.

There's been only one case so far in which I strongly disagreed with the Mannheim court's decision, and that was one of the first ones I watched in that venue: Motorola's (thus far) successful assertion of a push notification patent against Apple. That patent is from the era of pagers and the invention was very much about that technology, which is different from email in various ways. While the claim language can be interpreted broadly, I think it shouldn't be because a 20-year monopoly on all push notifications is overreaching in light of the background of this patent. I'm not affected by it at this point since I use GMail and (Hotmail), not the iCloud email service. But for many German Apple customers Motorola's enforcement of that patent is a hassle that could have been avoided by either interpreting the patent more narrowly or doubting its validity based on a broader claim construction. This exception aside, I never disagreed strongly with Judge Voss's infringement findings and validity assessments, and in two months we'll see what comes out of this screen-to-speech case.

In a subsequent post (probably the very next one) I'll also report on the standard-essential patent case that was discussed, for a second time, on Friday.

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