Friday, December 21, 2012

Microsoft defeats push patent in UK that Google's Motorola is also using against Apple in Germany

Bloomberg reports that Judge Richard Arnold of the UK High Court has today ruled that Google's (Motorola Mobility's) EP0847654 on a "multiple pager synchronization system and method", which is already being enforced against Apple's iCloud email service and over which Google is suing Microsoft (both in Germany), "is invalid and should be revoked".

I've always been skeptical of this patent. The claimed invention was made to address synchronization issues involving pagers and relates to a situation in which a user has different pagers attached to different garments. It's a bit of a stretch to assert it against today's push notification services. If interpreted that broadly, it should be held invalid as Judge Arnold determined today.

The decision comes ahead of a trial scheduled by the Mannheim Regional Court for February 1, 2013, which will be the second trial (after a reopening of proceedings following the first one) in this Motorola v. Microsoft case. There are also two upcoming opportunities (both likely in 2013) for Apple to leverage this ruling in connection with an injunction against the iCloud's push email feature. Motorola won that injunction in early February 2012, started to enforce it only three weeks later, and an Apple motion (brought with the appeals court in Karlsruhe) to stay the injunction was denied in mid-March.

While courts in different European countries decide independently, they do take note of each other's rulings on the same (in)validity and infringement issues. There are no less than three German court hearings (all of them either scheduled for, or about to be scheduled and likely to take place in, 2013) at which today's UK court ruling will be leveraged by Apple and Microsoft:

  • The aforementioned Mannheim trial on February 1, 2013. A first trial over Motorola's attempt to enforce this patent against ActiveSync in connection with Microsoft Exchange, Hotmail and Xbox Live (and products implementing the related services) was held in mid-March 2012, and Microsoft raised a multiplicity of defenses. One of those defenses, prior user rights, persuaded Judge Andreas Voss ("Voß" in German), who also presided over the Apple case involving this patent, to reopen proceedings. The court considered it a possibility that Microsoft already made use of the patented technique, in Germany, before Motorola filed its patent application -- not in a way that would necessarily count as prior art, but which might be sufficient to support a prior user rights defense.

    At the time, Judge Voss said the court had proposed that the parties provide further briefing on this defense and that the court would then issue a ruling without another trial. But just this week I found out from the court that a second trial has been scheduled for February 1. A ruling would then likely come down in late March or in April, and the UK ruling supports Microsoft's motion for a stay pending a parallel nullity (invalidation) proceeding at the Munich-based Federal Patent Court. A stay would only have to be decided if an injunction would otherwise be granted.

    German courts stay infringement proceedings only if they are convinced of a high probability of invalidation. Apple was denied a stay, but Microsoft would be able to point not only to the UK ruling but even more importantly to the fact that the Federal Patent Court's decision would come down not much later.

  • The aforementioned nullity action before the Federal Patent Court will likely also be decided in 2013. The Federal Patent Court's decision can (and absent a settlement will) be appealed by the losing party to the Federal Court of Justice. In that case, the patent, which has an August 1995 priority date, might expire before a final non-appealable ruling on its validity in Germany.

  • At some point in 2013 (I have not yet been able to find out the exact date, and it may not have been set yet) there should also be the hearing at the Karlsruhe Higher Regional Court on Apple's appeal of Motorola's injunction. The fact that the appeals court didn't stay the injunction doesn't mean that Motorola is going to win. The hurdle is reasonably high for German appeals courts to order stays. (It is often underestimated by observers because stays get more attention than denials.) The appeals court could stay the appeal, and simultaneously the enforcement of the existing injunction against Apple, until the end of the nullity (invalidation) action, possibly including its appeal to the Federal Court of Justice.

It is worth noting that the patent which Microsoft defeated today is the only patent over which an Android device maker is presently enforcing an injunction anywhere in the world against Apple. A couple of injunctions that Samsung won in Korea are currently stayed (for the duration of the appeals). HTC never won anything against Apple, and Motorola also won some injunctions over standard-essential patents (SEPs) against Apple (a cellular patent) and Microsoft (two H.264 patents in Germany, one of which has expired), but can't enforce those: Apple is licensed, except that the court has yet to determine the FRAND royalty rate on which the parties can't agree, and Microsoft won an anti-enforcement injunction in the United States that was recently replaced by a summary judgment ruling, both of worldwide effect because Motorola originally offered the relevant patent families on a worldwide basis to Microsoft in a letter sent from the Chicago area to the Seattle area and Microsoft brought a U.S. contract action eight to nine months before Motorola's German lawsuits.

The push notification patent is not essential to an industry standard set by a consortium (and not subject to the FRAND contract case in the U.S.), but there might be a licensing issue because of Google's assertion of this patent against ActiveSync given that Google at some point took an ActiveSync patent license. So did Motorola, a fact that was discussed at the first Mannheim trial.

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