Saturday, September 29, 2012

Google loses appeal, continues to be barred from enforcing German injunction against Microsoft

A U.S. appeals court has dealt the latest setback, and the most important one to date, to Google's hopes that it could address Android's huge patent infringement problems through the abusive pursuit and enforcement of sales bans based on Motorola Mobility's standard-essential patents, forcing the holders of non-standard-essential patents violated by Android into cross-license deals or mutual non-assertion pacts. The noose keeps tightening and it appears to be only a question of when, not if, Motorola will have to extend a standard-essential patent license to Microsoft on truly FRAND terms.

On Friday afternoon by Pacific Time, the United States Court of Appeals for the Ninth Circuit issued its opinion dismissing Motorola Mobility's appeal of a preliminary injunction by the United States District Court for the Western District of Washington that enjoined and, after the appeal was just turned down, continues to enjoin the Google subsidiary from enforcing a couple of German H.264-related patent injunctions that the Mannheim Regional Court had granted in May. The preliminary injunction had been granted by Judge James L. Robart, the federal judge presiding over the Microsoft v. Motorola Mobility FRAND contract dispute in the Seattle-based district court. The Ninth Circuit has now found that Judge Robart applied the correct legal standard and did not abuse his discretion in barring Motorola from enforcement in Germany.

The appeals court's ruling follows a September 11, 2012 hearing in San Francisco and means that Google must wait until Judge Robart resolves the FRAND contract issues raised by a Microsoft complaint filed in November 2010.

A bench trial in Seattle will commence on November 13 and will result in a FRAND royalty rate consistent with the FRAND promise Motorola once made to the ITU, a United Nations standard-setting organization that played a key role in developing the H.264 video codec standard in which roughly 80% of all digital video is encoded these days. Google does not want Judge Robart to resolve this contract issue as planned because it knows that its entire SEP enforcement effort against Microsoft would be brought to an end. In the opinion on the preliminary injunction, the Ninth Circuit does not want to address Motorola's objections to Judge Robart's course of action, but it comes fairly close to formally endorsing some of its key elements:

"We emphasize that we do not (indeed, we may not) decide whether the district court's partial summary judgment, or its determination that it would adjudicate a [F]RAND rate, was proper — if an appellate court is to review those determinations, it will have to do so on a final, not an interlocutory, appeal. But we do hold this much: The district court’s conclusions that Motorola's [F]RAND declarations to the ITU created a contract enforceable by Microsoft as a third-party beneficiary (which Motorola concedes), and that this contract governs in some way what actions Motorola may take to enforce its ITU standard essential patents (including the patents at issue in the German suit), were not legally erroneous. Motorola, in its declarations to the ITU, promised to 'grant a license to an unrestricted number of applicants on a worldwide, non-discriminatory basis and on reasonable terms and conditions to use the patented material necessary' to practice the ITU standards. [...]"

"In particular, the face of the contract makes clear that it encompasses not just U.S. patents, but all of Motorola's standard-essential patents worldwide. When that contract is enforced by a U.S. court, the U.S. court is not enforcing German patent law but, rather, the private law of the contract between the parties. Although patents themselves are not extraterritorial, there is no reason a party may not freely agree to reservations or limitations on rights that it would have under foreign patent law (or any other rights that it may have under foreign law) in a contract enforceable in U.S. courts. [...]"

The Ninth Circuit opinion cites to different writings and decisions on FRAND, including several quotes from Judge Posner's recent ruling. It's clear that the Ninth Circuit gave a lot of consideration to FRAND issues and that it does believe FRAND promises must be honored. It is at least very skeptical of whether the pursuit of injunctive relief is legitimate in cases in which the defendant is clearly entitled to a license on FRAND terms.

The Ninth Circuit clarifies that its affirmation of Judge Robart's antisuit injunction does not imply that there is anything fraudulent about the process in Germany. The issue is not whether the Mannheim court did the right thing or the wrong thing -- it's that Motorola engaged in forum-shopping to gain leverage in Germany before the first-filed U.S. contract issue would be resolved. In practical terms, Motorola wanted to render the Seattle proceedings meaningless by gaining enough leverage in Germany that it could get a settlement on its terms before Judge Robart would even get to adjudge the case before him. Judge Robart made it clear that he wanted to thwart that plan, and the Ninth Circuit says that he had the right to do this.

By coincidence, I discussed this complicated situation yesterday, only a few hours before the Ninth Circuit opinion in a post on the fact that the Android camp is currently enforcing only one patent injunction against Apple and none against Microsoft. If you look at item 3 of that post, you can find more detail on the procedural history of the German H.264 patent injunctions that Motorola will most likely never get to enforce.

At the start of this post I was talking about Google's strategy for addressing Android's massive patent infringement. In light of this unsuccessful appeal to the Ninth Circuit, Google should think even harder about taking a license to all those Microsoft patents that read on Android. Google should ask itself, very seriously, whether it really has a workable plan to get away with wide-ranging unlicensed infringement.

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Friday, September 28, 2012

The Android camp is enforcing only one patent injunction against Apple (and none against Microsoft)

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:

  1. 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.

  2. 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.

  3. H.264-essential patents: EP0538667 on an "adaptive motion compensation using a plurality of motion compensators" and EP615384 on an "an "adaptive compression of digital video data"

    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.

  4. 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).

  5. 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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Samsung wins remand of Galaxy Tab 10.1 ban to Judge Koh's court

The United States Court of Appeals for the Federal Circuit just granted Samsung's motion for a limited remand of its appeal of the design-patent-based preliminary injunction against the Galaxy Tab 10.1. Apple had opposed this request. This means that Judge Koh will now have to weigh the harm Samsung is allegedly suffering from further enforcement of the injunction against the likelihood of success of the D'889-related part of Apple's Rule 50 ("overrule-the-jury") motion. The D'889 patent is the tablet design patent on which this preliminary injunction is based. On August 24, a jury did not deem it infringed, contrary to previous assessments by Judge Koh and the Federal Circuit.

Samsung's preference would have been for Judge Koh to declare the injunction automatically dissolved (by the August 24 jury verdict) or to dissolve it directly, or as Samsung's third choice, to issue an indicative ruling that she would dissolve it after a remand (by the Federal Circuit) of Samsung's appeal of that preliminary injunction to the district court. Judge Koh didn't support the first three proposals but nevertheless helped Samsung to some degree by issuing an indicative ruling that the recent jury verdict, which involved a finding of non-infringement of the D'889 design patent, raised a substantial issue that she would evaluate after a remand. Judge Koh steered clear of indicating that a remand would result in dissolution. Apple's Rule 50 motion is not as steep a challenge in this particular case (in light of the previous findings, including the position taken by the appeals court) as an attempt to get a jury's liability finding overruled is in most other cases. But what Judge Koh did indicate is that the sooner the remand happens (i.e., the more time will pass between her reevaluation of the preliminary injunction and her decision on the parties' Rule 50 motions, which will come down some time after a December 6 hearing), the more likely Samsung is to win a dissolution of this preliminary sales ban. It could nevertheless be reinstated in or after December, but in the form of a permanent and not a preliminary injunction.

Judge Koh now faces a probabilistic challenge. Without actually ruling on the D'889-related part of Apple's Rule 50 motion, she has to assess its chances of success. She will still be free to decide differently after the December 6 hearing, after reading and hearing more argument from the parties. But if she then does decide differently, she has to admit that she may have misassessed the chances of success of the parties on this item at this stage. Given that Samsung itself denied publicly that there is any serious harm from the current enforcement of this preliminary injunction, its argument just boils down to principle: a baseless injunction is an "instrument of wrong". That is an important argument. And Judge Koh may indeed dissolve the preliminary injunction now simply by pointing to the fact that Rule 50 motions are hard to win since juries get a lot of deference, even if in this case Apple's motion has better prospects than the vast majority of overrule-the-jury requests.

In today's ruling, the appeals court also clarifies that its decision to grant a limited remand does not imply anything for the decision Judge Koh will have to make now. Here's the full text of the remand order:


Samsung Electronics Co., Ltd. et al. move for a limited remand for the purpose of permitting the United States District Court for the Northern District of California to consider Samsung's motion to dissolve the preliminary injunction. Apple Inc. opposes the motion.

We grant the motion and remand for the purpose of allowing the trial court to consider Samsung's motion and Apple's arguments in opposition thereto. The appeal is held in abeyance pending further ruling from the trial court. The parties are to inform this court promptly of the trial court's ruling on the motion and propose how they believe the appeal should proceed in light of such ruling.

In granting the motion, the Federal Circuit takes no position on the proceedings the trial court should employ in considering the motion to dissolve the preliminary injunction or on the merits of the motion.



The motion to remand is granted. The court retains jurisdiction over the appeal at this time.

Presumably there will now be an expedited briefing process (unless Judge Koh feels the parties have already written enough about this matter) and, if necessary, a hearing in the very near term.

I think Samsung has pretty good chances of winning a dissolution of the preliminary injunction at this stage, but even if it does, Apple could still win a permanent injunction against further infringement of the D'889 patent later. An "on again, off again" injunction would be odd, but it's procedurally possible.

Near-term sales of the Galaxy Tab 10.1 are a non-issue. But Apple certainly doesn't want to see Samsung launch future iPad lookalikes in the U.S. market, and it needs a permanent injunction for that purpose. Should Apple win a permanent injunction in or shortly after December, it won't have much of a problem with the temporary dissolution of the preliminary injunction. But fighting against the dissolution of the preliminary injunction is a matter of principle and, more importantly, an opportunity for Apple to make its case against the D'889 infringement-related part of the jury verdict.

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Wednesday, September 26, 2012

Android devices have already been found to infringe 17 valid Apple and Microsoft patents

Roughly three months ago I listed 11 Apple and Microsoft patents that courts in different countries had deemed valid and infringed by Android-based devices. This list has grown by more than 50% during this calendar quarter, so I wanted to update it.

With respect to each patent-in-suit, my list reflects the most recent state of affairs. For example, a couple of Apple patents over which one Australian judge granted an injunction that was lifted as a result of a review by the full court do not appear on my list.

So here's my updated list of the related findings by courts and the ITC (a trade agency with quasijudicial authority) according to which Android devices infringe no less than different Apple and Microsoft patents that the same courts deemed valid, in chronological order (of the first decision on each patent):

  1. EP2059868 on a "portable electronic device for photo management"

    I call this one the "photo gallery page-flipping" patent.

    The Rechtbank 's-Gravenhage (a court in the Dutch city of The Hague) deemed this patent valid and infringed in an August 24, 2011 decision granting Apple a preliminary injunction against certain Samsung smartphones. On March 1, 2012, the Munich I Regional Court granted Apple a permanent injunction over this patent against Motorola Mobility, which became a wholly-owned Google subsidiary in May 2012.

  2. U.S. Patent No. 7,469,381 on "list scrolling and document translation, scaling, and rotation on a touch-screen display"

    This is the "overscroll bounce" or "rubber-banding" patent. I once called it "Apple's favorite make-Android-awkward patent". Apple has convinced courts on three continents (North America, Europe and Asia) that Android-based devices infringe this patent.

    The United States District Court for the Northern District of California deemed this patent valid and infringed in a December 2, 2011 decision denying an Apple motion for a preliminary injunction against four Samsung devices. The denial was based on an insufficient showing of the nexus between the identified infringement and the alleged harm to Apple's business.

    On August 24, a jury rendered a verdict according to which this patent is valid and infringed by all 21 Samsung devices accused of infringement of this patent. Apple can still win an injunction on this basis (it formally requested one on Friday). Even if no injunction was granted, Apple could, at a minimum, seek monetary compensation.

    Approximately 20 hours before the California verdict, Samsung was found to infringe this patent by a court in its own country, the Seoul Central District Court.

    On September 13, the Munich I Regional Court ordered a German patent injunction against Google's Motorola Mobility over this patent.

  3. U.S. Design Patent No. D618,677 on an "electronic device"

    This is an iPhone-related design patent.

    In the aforementioned December 2, 2011 decision, the United States District Court for the Northern District of California deemed this design patent valid (with a narrowed scope) and infringed, calling it a "close question" and denying an injunction for balance-of-hardship reasons.

    On August 24, 2012, a jury deemed this design patent valid and infringed by 11 Samsung smartphones (mostly Galaxy devices). Apple is pursuing a permanent injunction on that basis.

  4. U.S. Patent No. 5,946,647 on a "system and method for performing an action on a structure in computer-generated data"

    I dubbed this one the "data tapping" patent, a term that has since been adopted by a number of journalists.

    The United States International Trade Commission (ITC) deemed this patent valid and infringed in a December 19, 2011 order of a U.S. import ban against HTC.

    I published the winning claim chart.

    In a June 29, 2012 order of a preliminary injunction against the Galaxy Nexus smartphone, the United States District Court for the Northern District of California deemed this patent valid and infringed, but denied an injunction on the basis of this patent for balance-of-hardships reasons.

    Motorola Mobility failed with summary judgment motions in a litigation in the Northern District of Illinois to prove this patent invalid or not infringed. The recent dismissal of that lawsuit was based on other reasons than the merit of Apple's infringement claims.

  5. EP1964022 on "unlocking a device by performing gestures on an unlock image"

    This is the first slide-to-unlock patent.

    On February 16, 2012, the Munich I Regional Court granted Apple an injunction over this patent against Motorola Mobility.

  6. U.S. Patent No. 6,370,566 on "generating meeting requests and group scheduling from a mobile device"

    On May 18, 2012, the ITC ordered a U.S. import ban against Motorola's Android-based devices that infringe this Microsoft patent.

  7. EP1304891 on "communicating multi-part messages between cellular devices using a standardized interface"

    On May 24, 2012, the Munich I Regional Court granted Microsoft an injunction over this patent against Motorola's Android-based devices. This was the first Microsoft v. Google decision ever. It came down only days after Google completed its acquisition of Motorola Mobility. The ruling is already being enforced in Germany.

  8. U.S. Design Patent No. D504,889 on an "electronic device"

    This is an iPad-related design patent.

    On June 27, 2012, the United States District Court for the Northern District of California granted Apple a preliminary injunction against the Galaxy Tab 10.1 following a partly-successful appeal to the Court of Appeals for the Federal Circuit. A jury deemed it valid but not infringed by Samsung. On this new basis, Samsung is pursuing the dissolution of the preliminary injunction, while Apple has asked the court to overrule the jury on this item. I decided to leave it on this list because judges overrule juries and not the other way round, and ni light of the Federal Circuit's take on this patent. The jury's finding contradicts Judge Koh's earlier decision and the position the appeals court took in its opinion on Samsung's preliminary injunction appeal, and Judge Koh did not dissolve the injunction immediately since the chances of Apple's Rule 50 ("overrule-the-jury") motion have yet to be evaluated. Even if the preliminary injunction was dissolved at some point, a new and permanent one could issue after a December 6 hearing.

    In the summer of 2011, the Düsseldorf Regional Court had granted Apple a preliminary injunction against the same product over the European equivalent, a so-called Community design, of this U.S. design patent. The appeals court, the Düsseldorf Higher Regional Court, later upheld the injunction but did so on the basis of German unfair competition law, not on the grounds of the asserted Community design. Later, in July, it granted Apple a cross-border injunction against the Galaxy Tab 7.7 based on that Community design. Yesterday, the regional court looked at the matter again. It stayed the main proceeding and expressed doubts about Apple's infringement allegations. Apple previously lost cases over this patent in the Netherlands and the UK.

  9. U.S. Patent No. 8,086,604 on a "universal interface for retrieval of information in a computer system"

    This is a patent on Siri-style unified search.

    On June 29, 2012, the United States District Court for the Northern District of California granted Apple a preliminary injunction against the Samsung/Google Galaxy Nexus smartphone over this patent.

    Oddly, earlier that week Google placed a lot of emphasis on voice search at its Google I/O developer conference, where it announced that more than 1 million Android-based devices are now activated on a daily basis.

    Samsung appealed the injunction to the Federal Circuit, which held a related hearing on August 20 and, by the time I'm writing this post, has not yet made a decision.

  10. U.S. Patent No. 8,046,721 on "unlocking a device by performing gestures on an unlock image"

    This is the second slide-to-unlock patent.

    In its aforementioned Galaxy Nexus decision, the United States District Court for the Northern District of California deemed Samsung and Google to infringe on this patent, which it considered valid. The injunction was not based on this patent only for balance-of-hardship reasons. Apple may still win a permanent injunction or, at least, seek damages if the preliminary findings of infringement and validity are upheld.

  11. U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations"

    This is an autocorrect patent.

    In its aforementioned Galaxy Nexus decision, the United States District Court for the Northern District of California deemed Samsung and Google to infringe on this patent, which it considered valid. The injunction was not based on this patent only for balance-of-hardship reasons. Apple may still win a permanent injunction or, at least, seek damages if the preliminary findings of infringement and validity are upheld.

  12. EP0618540 on a "common name space for long and short filenames"

    On July 27, the Mannheim Regional Court granted Microsoft a German patent injunction against Google's Motorola Mobility over this file system patent. It decided the infringement question in Microsoft's favor and did not find Google's invalidity arguments strong enough to order a stay.

  13. U.S. Design Patent No. D539,087 on an "electronic device"

    While Judge Koh said in her preliminary injunction decision in December 2011 that Samsung had raised substantial questions concerning the validity of this patent, a jury later (on August 24) found it valid (and also infringed). Unlike Judge Koh's strong conviction of infringement of the tablet design patent, she did not rule out that Apple could prevail on this patent at trial, and Apple did prevail. More importantly, the appeals court rejected Judge Koh's ruling that this patent is likely invalid, and upheld the denial of a preliminary injunction over this patent solely for equitable reasons. With the jury verdict in its favor, Apple is now pursuing a permanent injunction based on this patent.

  14. U.S. Patent No. 7,844,915 on "application programming interfaces for scrolling operations"

    This Apple patent is inevitably infringed by any reasonable implementation of the pinch-to-zoom gesture. On August 24, the California jury found 21 Samsung Android devices to infringe this patent, which it also deemed valid.

  15. U.S. Patent No. 7,864,163 on a "portable electronic device, method, and graphical user interface for displaying structured electronic documents"

    On August 24, the California jury found this Apple "tap-to-zoom" patent valid and infringed by 16 Samsung Android devices.

  16. U.S. Design Patent No. D604,305 on a "graphical user interface for a display screen or portion thereof"

    This Apple design patent is software-related. It's about the arrangement of icons. On August 24, the California jury found 13 Samsung devices to infringe this patent, and deemed it valid.

  17. EP1040406 on a "soft input panel system and method"

    On September 20, the Munich I Regional Court granted Microsoft a German patent injunction against Google's Motorola Mobility over this operating system patent. This was already the third time a German court found a Microsoft patent infringed by Motorola Mobility's Android-based devices, and the fourth time worldwide. Microsoft is embroiled in litigation with only one Android device maker, while Apple is also suing Samsung and HTC. Relative to the number of adjudged patents, Microsoft has a higher hit rate than Apple.

The list above is limited to Apple and Microsoft patents (13 from Apple, 4 from Microsoft). I don't follow litigation by non-practicing entities anymore, and I'm not aware of any particular decision in favor of an NPE against Android, but many cases are pending and haven't come to judgment yet. As far as other major players than Apple and Microsoft are concerned, Oracle is certain to appeal its case against Google to the Federal Circuit, British Telecom is still suing Google, Nokia has recently asserted dozens of patents in the U.S. and Germany against HTC and Viewsonic, and BlackBerry maker Research in Motion (RIM) is in such dire straits that it's probably only a matter of time (the company appears to be in a serious disarray right now) until it also asserts some of its wireless email patents against Google and/or Google's hardware partners. A smaller but nevertheless interesting plaintiff is Skyhook Wireless, which just brought a second patent infringement action against Google, alleging infringement of eight more patents by Android and Google Maps.

Only a minority of all patent assertions brought against Android-based devices have been adjudicated so far. The number of patents held to be infringed will keep growing, and I'll probably have to update this list a couple of times before the end of the year.

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Apple calls Samsung's allegation of jury misconduct 'frivolous on its face'

Late on Tuesday, Apple filed a first response to Samsung's allegations of jury misconduct. Apple does not oppose Samsung's motion to seal all of its related accusations but wonders why Samsung brings such a motion after it "failed to redact enough material from its jury misconduct motion and supporting papers to keep the substance of its allegations secret", a failure that enabled the media to identify that Samsung's attacks target jury foreman Velvin Hogan. What Apple does oppose is Samsung's request that the parties be barred from contacting members of the jury. That request doesn't make sense to Apple given that the media would still be free to talk to any of the jurors, and in light of the willingness of several jurors to give interviews.

On Sunday I posted my overall assessment of Apple's and Samsung's Rule 50 motions and noted that at least one item of the table of cited authorities revealed mudslinging against Mr. Hogan. I brought up only that one citation and then went on to comment on numerous other aspects of the parties' Rule 50 motions. ThomsonReuters' Alison Frankel and Dan Levine engaged in more extensive research on the jury misconduct question and, among other things, found out that a dispute with Seagate apparently drove Mr. Hogan into bankruptcy in the early 1990s. They also talked to him about it, and his comment was that Samsung's lawyers have "a job to do", which he says he doesn't hold against them. Nevertheless I doubt that he was happy to see this kind of story surface.

That very well-researched ThomsonReuters story is only one of the media reports Apple attached to its brief. The first article to be referenced by Apple's filing is this San Jose Mercury News story as an example of widespread "reporting that Samsung is attacking the jury verdict based on alleged juror misconduct". Apple points to this CNET article to show that "Samsung's attack on the jury's verdict began with Samsung's issuance of a stinging press release after the reading of the verdict on August 24". A Korea Times article serves to show that the jury foreman "is the target of Samsung’s jury misconduct motion". And in connection with the willingness of some jurors to talk to the media, Apple points to a Wall Street Journal article.

Apple condemns Samsung's attempt to get a new trial on the basis of jury misconduct:

"Samsung's attacks are baseless, and its jury misconduct motion frivolous on its face."

Apple's contradiction is based on several arguments. One of them is timing: "Among other failings, Samsung's motion does not even address, let alone disclose, when Samsung learned the facts on which it bases its misconduct allegations, and in particular, whether Samsung impermissibly delayed raising this issue, as the facts Samsung does disclose suggest." In this regard, Apple points to a ruling in which an appeals court deemed jury misconduct arguments waived since the information disclosed at the time of jury selection (late July, by the way) would have permitted discovery of the information underlying the allegation. Apple wants this timing issue to be clarified. Footnote 1 of its filing says:

"On the afternoon of September 24, Apple asked Samsung to disclose how and when it learned of each of the facts underlying its allegations and notified Samsung of its intent to file an expedited motion to compel such disclosure if Samsung does not provide it voluntarily. Apple is waiting for Samsung's response."

It's pretty clear that Samsung only took issue with the jury after it received a verdict that it understandably doesn't like.

Apple has no problem with the court granting Samsung's sealing request, but it's clear that Apple doesn't see a point in it. If Samsung had really wanted to hide this whole misconduct issue from the public, it could also have redacted its table of authorities. It's not just about which parts of Samsung's motion must be filed but also about Apple's forthcoming reply. Apple is flexible. It has nothing to hide and is willing to file its response publicly.

What Apple is absolutely against is a court order that the parties not talk to members of the jury. Again, the timing of Samsung's motion doesn't make sense to Apple. And more fundamentally, "[t]his [requested] relief is not the proper subject of an administrative motion and can be denied on that ground alone", but if the court considers it anyway, Apple wants that part of the motion to be denied on its merits.

Apple's first argument is that "Samsung's requested order would not serve Samsung's stated purpose of protecting jurors from 'extra-judicial scrutiny and public criticism.'" The order would enjoin only the parties, not the media. Apple says it "has no intention of subjecting jurors to unwanted scrutiny or criticism, and Apple's Rule 50 and 59 motion did not provide any grounds for doing so", but "Samsung offers no basis for the Court to prevent Apple from contacting jurors until Samsung's JMOL Motion is fully resolved, which presumably includes any appeal". Apple is concerned that Samsung may have contacted some jurors and now wants to deny Apple the same opportunity. In that event, Samsung would already have obtained all the information that is useful to it, and the rest of the world would remain free to talk to any of the jurors, but only Apple would be restricted in its ability to defend its rights.

Apple also points to other cases in which post-verdict interviews were deemed proper under certain circumstances.

What I like about Apple's motion is that Apple is at the same mindful of the jurors' privacy and not at all afraid to discuss in public what needs to be addressed because of Samsung's initiative. I continue to be very skeptical of Samsung's chances of winning a new trial on the grounds of misconduct. It wouldn't even be easy to hold a hearing at which the jurors have to testify. Federal Rule of Evidence 606(b) allows only some very limited exceptions under which jurors may serve as witnesses on what happened in the same case. As Professor Brian Love noted on Twitter, even "[e]vidence jurors drank heavily [and] used marijuana [and] cocaine at lunch breaks [is apparently] not enough", pointing to the pretty astounding Tanner v. United States affair (Wikipedia summary, full text of Supreme Court decision). If you're looking for a story on a jury that really misbehaved in unbelievable ways, Tanner is an example next to which anything Samsung appears to allege in Apple v. Samsung pales in comparison, if there can be any comparison at all.

Maybe Judge Koh will find a way to ensure that this sideshow ends sooner rather than later.

On a related note, a Korea Times article said that Samsung and Google were going to have a high-level meeting in Seoul today, with the patent situation being on the agenda.

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Upcoming Wisconsin trial in Apple-Google FRAND case to be held without a jury

Last year, Apple brought FRAND counterclaims against Motorola's first ITC complaint, and since the ITC cannot adjudicate counterclaims, they were immediately removed to a district court -- in this case, the Western District of Wisconsin. Meanwhile Motorola Mobility has been acquired by Google, and Apple made significant headway when Judge Barbara Crabb, the federal judge presiding over this FRAND case in Wisconsin, granted key parts of an Apple motion for summary judgment on multiple issues.

In a filing with the ITC, Google unsurprisingly disagreed that this was a win for Apple, stressing the fact that Apple's antitrust claims were dismissed for a lack of damage beyond litigation costs. But with the court having found that Apple has contractual rights as a third-party beneficiary of Motorola's FRAND pledges to standard-setting organizations, Apple has a better opportunity than before to prevail on its breach-of-contract claims.

This FRAND case is relatively opaque, but at least the summary judgment process brought to light some of the claims, issues and arguments in the case.

In the ITC investigation, Apple has been cleared of violation of all patents-in-suit except a non-standard-essential one. The Wisconsin FRAND case nevertheless needs to be resolved. The issues Apple raises there are relevant regardless of whether it is actually found to infringe any Motorola SEP. The Google subsidiary is going to appeal the unfavorable parts of the final ITC ruling, just like it is appealing the FRAND-related part of Judge Posner's ruling. And it could bring new lawsuits over SEPs anytime.

A trial was scheduled a while ago to start on November 5, 2012, and it was originally going to be a jury trial. But on Monday, the following text entry showed up on the docket for this case:

Unopposed Motion for Bench Trial (Sealed Document) by Plaintiff Apple Inc.. Response due 10/1/2012.

The document itself was and still is sealed. But the headline is clear: Apple asked the court to hold the trial over the remaining issues without a jury, and Google's Motorola Mobility is fine with that request.

On Tuesday afternoon, Judge Crabb entered the following text-only order granting the motion:

"ORDER granting [255] Unopposed Motion for Bench Trial by Plaintiff Apple Inc. The parties are to comply with the requirements of the order in non-jury cases assigned to Judge Crabb that they received following the July 21, 2011 pretrial conference before Magistrate Judge Crocker. Signed by District Judge Barbara B. Crabb on 9/25/2012."

This is an interesting development. I believe that FRAND issues are even less amenable to jury trials than the technical issues relating to patent infringement and validity. I've previously expressed this opinion, especially in connection with Apple v. Samsung. But in a Seattle lawsuit over FRAND licensing obligations brought by Microsoft, Motorola Mobility recently spoke out against a bench trial (Microsoft argued that Motorola had already agreed to one at a hearing). That case in the Western District of Washington has some parallels to the Wisconsin Apple case. By coincidence, it is also scheduled to go to trial in November.

Since the losing parties in such high-profile cases always appeal, it may take some time before there is a final non-appealable ruling on the Apple-Motorola FRAND issues. Nevertheless, the upcoming Wisconsin trial will be a key milestone. In Germany, the only FRAND issue left to be sorted out between these parties is how much Apple will ultimately have to pay for its license to Motorola's wireless SEPs.

Motorola Mobility recently brought a second ITC complaint against Apple over seven patents, none of which appears to be standard-essential. Last week the ITC decided (as expected) to investigate this complaint. Yesterday Apple's counsel in that action notified the ITC of the appointment. Interestingly, that one is the first smartphone patent litigation (to the best of my knowledge) in which Apple is working with Sidley Austin, a firm that has already handled a number of Microsoft patent disputes. Apple's lead counsel in the second Motorola case, Sidley's ITC expert Brian Nester, is also defending Microsoft against a Motorola complaint. Apple is embroiled in so many lawsuits that it obviously needs to work with a growing number of top-tier law firms to handle all of this. There aren't too many litigators who have handled ITC cases in this industry, and this Sidley team in Washington DC now has a lot of experience in dealing with Google/Motorola. I thought this was worth noting, but except for the parties, it's unrelated to the Wisconsin FRAND action.

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Tuesday, September 25, 2012

Apple asks Federal Circuit to deny Samsung's request for remand of Galaxy Tab 10.1 injunction

Today Apple filed its opposition to Samsung's motion for a swift remand of the Galaxy Tab 10.1 preliminary injunction to the district court, following Judge Koh's indicative ruling that the jury verdict, which did not hold Samsung to infringe the D'889 tablet design patent on which the sales ban is based, raised a substantial question. Apple points to a recent criminal case in which a circuit court (in that case, the United States of Appeals for the Eighth Circuit) "denied a similar request for remand despite an indicative ruling that the criminal defendant's motion to adjust his sentence raised a 'substantial issue,' and that the district court would apply a new sentencing approach if the case was remanded".

In order to have the Galaxy Tab 10.1 ban lifted, Samsung needs a remand, and it needs a quick one since Judge Koh indicated that the longer it takes, the more she'll be inclined to firstly decide on Apple's Rule 50 ("overrule-the-jury") motion. (I looked at both parties' Rule 50 motions and commented on them in this recent post; click here to go directly to the part on design patent infringement).

When Judge Koh denied Samsung's request to stay the injunction a few months ago, she referred to Samsung's statements on the absence of major harm, for example, "that 'sales of the accused Galaxy Tab 10.1 will soon fall to zero' because it is near 'the end of its product lifecycle,' and that the injunction would not have 'a significant impact' on its business since 'the successor model to the Galaxy Tab 10.1 is already on the market.'" Apple's brief today notes that Samsung wanted to have those passages redacted, but Judge Koh decided that these should be in the public record.

On July 1 I already pointed to Samsung's public statements and how they contradicted its motion for a stay. Those statements are now held against Samsung once again, and if Apple can dissuade the Federal Circuit from a quick remand of the case to Judge Koh, Samsung's position of there being no serious harm would likely be a key factor.

I continue to be underwhelmed by Apple's argument that the jury found the Galaxy Tab 10.1 to infringe three software patents, so it may have to be banned one way or the other. Injunctions don't declare entire products illegal -- the question is always how much it takes to work around them. While those software patents (especially collectively) are strategically more important than the tablet design patent, Samsung and Google have had a lot of time since the filing of the lawsuit to develop a workaround, and changing the software is easier than modifying the casing of the product.

Apple argues that it's fighting for a judgment as a matter of law (JMOL) not only with respect to the D'889 patent but also with respect to its tablet trade dress. While it's never easy to get a part of a jury verdict overruled, I actually think this is a stronger point than the one concerning the three software patents (with respect to which Samsung faces the Rule 50 hurdle). That's because an effort to design around the D'889 design patent would be comparable to, and overlap in important parts with, what is needed to work around the related trade dress.

I have said before that I believe the Rule 50 stuff should be resolved, and in my view, the Rule 50 briefing concerning the D'889 patent should simply have been put on a faster schedule in light of the existing preliminary injunction. But since that wasn't done, the question is now whether the Federal Circuit will remand the case and, in Apple's words, "give Samsung a windfall of over two months of infringing sales that this Court and the district court have already held will cause Apple irreparable harm".

Interestingly, the situation in the U.S. proceeding has some striking parallels with the one in Germany, where Apple also won a preliminary injunction (originally based on a European equivalent of this design patent, and later on the basis of unfair competition law) but is on the losing track after today's trial. In Germany, like in the United States, the preliminary injunction remains in force for now. I would expect Samsung to move once again for a stay in Germany, but since Samsung has been selling the modified and court-approved Galaxy Tab 10.1N for some time, there's even less of a commercial need to have the German injunction stayed than in the United States. In both jurisdictions, it doesn't really matter too much whether this relatively old product can still be sold in the months ahead. It's all about who will be in a stronger position with a view to the next steps.

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Samsung's new prior art likely to trump Apple's new design rights in German tablet case

More than a year after Apple won a German preliminary injunction against the Galaxy Tab 10.1 on the grounds of a design right infringement, indications were given today by the Düsseldorf Regional Court that Apple is heading for a defeat in the full-blown main proceeding. But a formal ruling likely won't come down for the next few years, and when it does, it will be appealable. If Apple indeed loses its German tablet design lawsuit, it will be liable for the damages it caused Samsung in Germany through the enforcement of a preliminary injunction that is not affirmed and converted into a permanent one.

For the detailed procedural history of Apple's tablet design rights enforcement against Samsung in Germany, let me refer you to this section of a recent blog post. I obtained information from a local source on what happened at today's trial:

The accused products are the Galaxy Tab 10.1 in the original version as well as the 10.1N and 10.1V variants, as well as the 7.7-inch and 8.9-inch Galaxy Tabs.

In the preliminary injunction proceedings, Apple based its design rights claims on Community design no. 000181607-0001, a European equivalent of a U.S. design patent. That Community design had been registered in 2004, more than five years before the iPad was launched. But the appeals court, the Düsseldorf Higher Regional Court, upheld the preliminary injunction on a different legal basis (violation of German unfair competition law) and did not identify a likely Community design infringement. Apple changed its strategy and withdrew the originally-asserted Community design, but amended its infringement contentions by throwing in three newer Community designs. At this stage of the proceedings, Apple's design rights claims against Samsung's tablets are based primarily on Community design no. 00188454-0013 or, in the alternative, Community design no. 000188454-001, or in the alternative to the latter, Community design no. 0001222905-0002. The first two of these design rights were registered in July 2011, claiming priority to dates in January and February of that year. The third one was registered in July 2010. Samsung is challenging all of these Community designs in a nullity action before the Office for Harmonization of the Internal Market in Alicante, Spain. That action was filed in May 2011.

Apple's claims were not the only aspect of this lawsuit to evolve. Samsung kept searching for prior art. The presentation of additional prior art references already contributed to the appeals court's decision to find a design right infringement insufficiently likely, and by the time of today's trial, even more prior art references formed part of the evidentiary record. Against this expanded background, Presiding Judge Johanna Brueckner-Hofmann ("Brückner-Hofmann" in German) indicated at today's trial that she is not inclined to find an infringement of any of the asserted Community designs. Furthermore, Judge Brueckner-Hofmann is at this point unconvinced of a violation of German unfair competition law.

In light of Samsung's tireless uncovering of additional prior art, the evolution of the positions taken by the two Düsseldorf-based courts is plausible.

Since Samsung brought a declaratory judgment counterclaim in the Düsseldorf case that relates, among other things, to the validity of the asserted Community designs, the court decided to stay this two-way litigation pending the definitive resolution of Samsung's challenge to the validity of the asserted Community designs. After the proceedings in Spain, either party may appeal the matter to the Court of Justice of the European Union. This could take years to resolve.

In the meantime, the preliminary injunctions Apple has won in Germany against Samsung'S tablet designs formally stay in force. I don't know whether Samsung plans to request a stay. In practical terms, Samsung can avoid further damage by selling design-around products such as the Galaxy Tab 10.1N. Should Apple be liable for enforcement of a preliminary injunction (at the end of these multi-year proceedings), the parties will likely disagree on the amount Apple owes Samsung. German courts have a conservative approach to damages. Since Samsung can hardly prove that it would have sold many hundreds of thousands or even millions of Galaxy Tab 10.1's in Germany in the few months before it launched the 10.1N anyway, I guess any damages would likely amount to only a few million euros.

By seeking a preliminary injunction, Apple took the risk of winning a preliminary injunction on the basis of an incomplete body of evidence and losing it later if Samsung managed to strengthen its defenses. This is a business risk Apple can live with, and in financial terms the stakes are low compared to the billion-dollar damages figure a California jury awarded Apple last month.

Regardless of the outcome, enforcing its design rights has positive effects on Apple's business. It's a clear message to its competition that it has to keep its products reasonably distinguishable from Apple's gadgets. If Apple didn't even try to enforce its rights, the market would be flooded with iPhone and iPad lookalikes.

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Monday, September 24, 2012

Assessment of prospects of Apple's and Samsung's requests for overruling the jury

Late on Friday, Apple and Samsung filed various post-trial motions in their first California litigation, especially their Rule 50 motions (i.e., motions asking the court to overrule the August 24 jury verdict on certain issues or at least grant a new trial on some issues). I have already commented on Apple's motion for willfulness enhancements and supplemental damages and on Samsung's reverse-engineering of the damages part of the verdict.

This post is a somewhat ambitious undertaking because I want to take a look not only at Apple's and Samsung's chances in the post-verdict process (before Judge Koh and, looking past the district court, the Federal Circuit) but also draw some comparisons to other smartphone patent cases that have already been appealed to the Fed. Circuit (or, in the particular case of Oracle v. Google, will be appealed shortly). I won't go into as much detail on those other cases as on Apple v. Samsung, but the public debate over these issues needs more rationality.

It doesn't make sense that some of the same people who claimed Oracle was just going to waste its money on an appeal of Judge Alsup's ruling now look at the California jury verdict as something that is almost certain to be overturned. Both Oracle and Samsung are going to continue to defend their interests vigorously. Both know that they face significant hurdles because it's always preferable to win as much as possible and as early as possible. Both may win something on appeal or lose on appeal. But if one looks at the parameters of those appeals, the likelihood of a fundamental reversal is actually higher in Oracle v. Google because the appeals court only has to disagree with Judge Alsup on one central question on which he's probably not going to be afforded much deference (or next to none if the appeals court considers this a legal question of first impression), while Samsung is more likely to have to content itself with some gradual improvement as far as liability is concerned (the damages figure could change substantially, in either direction, but that's only a secondary consideration in the fight between Apple and Samsung).

It's not just that more consistency is needed when comparing Oracle v. Google and Apple v. Samsung (by coincidence, Morrison & Foerster's Michael Jacobs is playing a key role on behalf of either plaintiff, and both lawsuits were filed and tried in the same federal district). There are actually a number of other important appeals involving Android that nobody even mentions in the public debate but I'm still following them and every one of them has the potential to considerably exacerbate Android's patent worries:

Any one of the lawsuits listed above would get a similar level of attention if there had been a billion-dollar jury verdict.

Prior to the August 24 verdict, the drop-out rate of U.S. patent infringement claims against Android was very high. The ITC has proven to be difficult terrain for everyone (also for the counterclaims of Android companies and in disputes without any Android connection), Judge Alsup has strong views on weak copyright in connection with APIs, and Judge Posner is an outspoken critic of the patent system. That's why there are some ongoing or impending appeals that could improve the situation in favor of Apple, Microsoft and Oracle, while there's no question that after the August 24 verdict, Samsung stands more to gain in the further process related to that verdict than Apple, which would probably be prepared any day of the week to sign a deal under which the verdict becomes the final ruling on liability and damages (and would then pursue, on that basis, some enhancements and, as the top priority, injunctive relief).

It's also worth noting that a number of German court rulings on smartphone patents have been appealed already. I will report on those cases when there are hearings (there will be at least two hearings at the Munich Higher Regional Court before the end of the year) and decisions. Also, the Mannheim Regional Court stayed three Apple lawsuits against Samsung for the duration of parallel nullity or revocation proceedings. In those three Mannheim cases, the court identified infringements (otherwise it wouldn't have stayed), so if the asserted intellectual property rights (two utility models and one patent) survive those challenges to their validity, they can come back with a vengeance at some point.

After this broad and even cross-jurisdictional overview, let's get back to the post-trial proceedings and inevitable appeal in this particular Apple v. Samsung lawsuit in San Jose and make references to other cases only where analogies are useful in a specific context. I just wanted to make sure that a consistent standard be applied to all of these issues. It doesn't make sense to consider all of the claims that were dismissed or stayed prior to August to have been resolved definitively while ignoring the enormous amount of deference that, right or wrong, the California jury is now going to get.


Anything can always happen on appeal. These large organizations appeal each and every decision they disagree with. But it is nevertheless possible to form an opinion from the outside on the probability of a major reversal in a given case:

  • The very first question is the standard of review, i.e., how much deference the appeals court will afford the lower court (or, in the very next step, how much deference Judge Koh will afford the jury). This is a much more complex question than some people think. Generally speaking, the questions that have to be answered in a complex litigation are usually a mix of factual and legal issues, factual findings get more deference than legal conclusions, and juries get more deference than judges.

    With a view to some of the non-Samsung cases I listed, I'd like to mention that the ITC is a special case because its judges also do some of the work that juries do in district courts; furthermore, the ITC gets a huge amount of deference on its interpretation of its governing statute (Section 337). But ITC decisions frequently hinge on claim construction, which is considered a legal question. Claim constructions are overruled quite often.

  • Once a particular standard of review has been determined, it has to be applied to the particular argument.

  • In assessing the chances under those circumstances, it's helpful to look at a court's (or a particular judge's) track record. The Federal Circuit has a reputation of being rather patent-holder-friendly, both traditionally and recently. And before Apple v. Samsung gets there, Judge Koh has to make her Rule 50 ("overrule-the-jury") decisions, but in the build-up to the trial, Judge Koh was clearly reluctant, especially compared to Judge Posner, to make summary judgment decisions instead of deferring to the jury.

  • Decisions consist of building blocks, and if an appellant manages to destroy a cornerstone of a building, large parts of the building may collapse, while the impact of breaking a window is minimal. I wouldn't rule out at all that Samsung can tear down the damages part of the verdict (as I'll explain further below), but on the liability side there's no obvious reason why it could get rid of all infringement findings in one fell swoop.

    A chain is as strong as its weakest link, so if a defendant can get one indispensable part of a liability finding reversed, the finding as a whole goes away, while a plaintiff may have to get more than one finding reversed on appeal to get a different outcome.

I admit that this was a long introduction before I actually get to Apple v. Samsung. But some of this just had to be clarified once, and I'm sure I will reference some of the above on multiple future occasions. High-profile appeals are going to happenin the near term (certainly Oracle and Samsung), and in 2013, especially in the second half of 2013, there will be more and more attention to what's going on at the Federal Circuit.

Mudslinging against the jury

I agree with Judge Posner that patent cases should not be put before juries in the first place I understand Samsung's frustration with the verdict. I can furthermore imagine that some of what jury foreman Velvin Hogan and at least one other member of the jury told the press doesn't sit well with Samsung and its lawyers. (I'm underwhelmed by Mr. Hogan's software patents, by the way.) Samsung has every right to defend itself vigorously, and it must attack the jury. But I really wonder why Samsung's Rule 50 motion makes a reference to a personal bankruptcy case involving jury foreman Velvin R. Hogan and Carol K. Hogan (presumably his wife, at least at the time) on page 2. The related passages are redacted, but the table of authorities is unredacted and contains this entry (click on the image to enlarge):

That one appears to be a personal story, and it's almost 19 years old. That was after Steve Jobs had left Apple and before he returned. This can't possibly have any factual bearing on Apple v. Samsung. More decency, please.

I've also seen some really outrageous name-calling against the jury on Twitter and on certain blogs, not by Samsung but by people who appear to be sympathetic to its cause.

Let me show you the header of a June 30 filing by Samsung in this very litigation (I added the red arrow; click on the image to enlarge or read the text below the image):

CASE NO. 11-cv-01846-LHK



And this is what the last paragraph of that filing says:


SEC [Samsung Electronics Co., Ltd.], SEA [Samsung Electronics America, Inc.] and STA [Samsung Telecommunications America, LLC] hereby demand a jury trial on all issues.

In other words, Samsung wanted the very lottery that a jury trial is. It obviously wanted a fair trial and has every right to complain about unfair treatment. But in doing so, it should also be fair.

Neither Judge Koh nor the appeals court are going to say that they're impressed with Samsung's efforts to discredit the jury. And all of that may be legally irrelevant. But it could nevertheless have a psychological effect, and that's why Samsung is presumably doing it.

Claim construction

I already said further above that claim constructions are relatively easy to get overturned. But Judge Koh didn't actually provide a lot of constructions, and especially no particularly controversial ones. U Unlike in some of the appeals of ITC decisions I listed further above, I don't expect claim construction questions to play a key role on appeal. And it certainly won't in the Rule 50 context.

Constraints on trial time, witnesses and exhibits

One of the reasons for which Samsung demands a new trial is that "the Court's constraints on trial time, witnesses and exhibits [...] were unprecedented for a patent case of this complexity and magnitude, and prevented Samsung from presenting a full and fair case in response to Apple's many claims". Samsung had consistently objected to those limits, and it ran out of time at the trial.

I have a lot of sympathy for this argument. In fact, the Rule 50 motion itself suffers from severe constraints: Samsung's arguments appear conclusory because Samsung just has enough space to make a claim and to point to some other documents in the case, which is just about enough to preserve the record for an appeal but not enough to make a coherent and persuasive case on some fo the more complex issues. I'm generally more on the interests-of-justice than case management side, and if major economic interests are at stake, I think the courts should also make a fair amount of resources available to resolve such disputes. But it won't be easy for Samsung to persuade the appeals court that Judge Koh misinterpreted her court's patent local rules or abused her discretion to the extent that a whole new trial is needed. What I consider more realistic than a new trial being granted just for this reason is that if there is a new trial on some of the issues for other reasons, there could also be some more generous limits (relative to the scope of the issues to be addressed at a retrial).

In its appeal of the non-FRAND parts of Judge Posner's ruling, I'm sure Apple will raise a constraints issue: Judge Posner gave the parties only one chance to submit a damages report. In that case, I think it would have been fair to allow them a do-over based on Judge Posner's guidance. That guidance would have been excellent if only they had been allowed to make up for the shortcomings identified. I think the Federal Circuit is more likely to be concerned about the implications it has for patent holders if they get to do only one damages report than to conclude that Judge Koh erred or abused her discretion in imposing the tough constraints she ordered.

The old equal-treatment argument

Samsung keeps arguing that it was "treated unequally", which is what it implied a lot in recent months. It served Samsung well in a couple of contexts, while it didn't work in some others, but all in all I can see why Samsung thinks this is still a smart strategy, especially in a case involving a domestic and a foreign company. However, I believe that Samsung's demand for "evenhanded treatment of the parties" is going to be less successful at this stage of the game. Judge Koh won't conclude that she treated anyone unfairly, and the appeals court will look at this analytically, not politically.

Patent validity

I have previously said that the jury's conclusion that all 12 patents-in-suit (seven Apple and five Samsung patents) are valid as granted is at odds with statistics. Four weeks ago I described this as the biggest issue with the verdict, and it still is. Both Apple and Samsung continue to argue that each other's patents-in-suit are invalid. But Judge Koh and, subsequently, the Federal Circuit can't vacate the verdict because its validity part is statistically implausible. Instead, they will have to look at each of the 12 patent claims separately and determine whether it was invalid in a way that no reasonable jury could have disagreed with. That standard of review is high. Apple and Samsung are less likely to prevail on their invalidity defenses in the infringement case than to persuade the patent office to reject some of the claims at issue. At the USPTO, the standard to meet for this is just preponderance of the evidence. It's a potential problem here that those USPTO reexaminations take very long, and if there's an enforceable infringement ruling in the meantime, then there may be a window during which a patent that shouldn't have been granted in the first place gets enforced. There are some interdependencies. Once there are any preliminary indications by the USPTO that an asserted patent claim may be invalid, then it will also be easier to win a stay of any parts of the ruling relating to patents of doubtful validity, while a final ruling by a federal court would affect the USPTO process.

Utility patent infringement

The jury verdict is a bit lop-sided in finding that Samsung infringed all three Apple utility patents while clearing Apple of infringement of all five Samsung utility patents. I thought Samsung was going to prevail on at least one of its offensive claims. But the outcome is not completely implausible since there's evidence of Samsung having copied Apple and not the other way round.

On a patent-by-patent basis, it's not going to be easy to get any of the jury's infringement findings overruled because there's no single case in which the jury found what no reasonable jury could have found in my opinion.

Design patent infringement

Apple prevailed on its smartphone design patents but lost on the tablet-related one. Before the jury verdict came down, Judge Koh (in a preliminary injunction ruling last year) and many observers (including me) thought that Apple had a stronger case with its tablet design patent, while the smartphone design patent case looked like a closer call. But now there is a jury verdict and the question is whether no reasonable jury could have found this way. I would argue that the combination of these two outcomes related to design patents doesn't make sense, but Apple's smartphone design patent case is strong enough that a jury can find that way, and the tablet design patent case is so strong that Apple may very well get the jury overruled either by Judge Koh or on appeal.

In its Rule 50 motion, Apple points to the Federal Circuit's position on infringement:

"On appeal, Samsung argued that 'Apple failed to demonstrate likely success in proving that the Galaxy Tab 10.1 infringes the D'889 patent.' (Kim Decl. Ex. A at 61.) The Federal Circuit considered this argument so insubstantial that it did not specifically address it in concluding that Apple 'was likely to succeed on the merits.' Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012); see also id.[ ]at 1323 (opinion focuses on issues that 'present close questions' and does not address findings 'not subject to serious challenge')."

Apple's motion doesn't even point to Circuit Judge O'Malley's dissenting opinion, which speaks out very clearly on infringement.

The argument I just quoted is valid in principle, but there is a caveat. Preliminary injunction decisions get more deference than final rulings. In the Federal Circuit opinion, the passage "not subject to serious challenge" is actually followed by "particularly in light of the exacting standard of review that applies to this appeal". While the Federal Circuit's (non-)treatment of Samsung's non-infringement contention makes it fairly or even very likely that this appeals court would also conclude that no reasonable jury could not have deemed the D'889 patent infringed, that outcome is not a foregone conclusion. Due to the different standards of review, even a very clear case under the exacting standard of a preliminary injunction review could (in a minority of cases, but still) fall short of being something that no reasonable jury could ever have decided the other way.

From a damages point of view, the smartphone design patent part of the case is the real moneymaker for Apple here, but this is about stopping infringement more so than about money, and from an IP enforcement point of view, the D'889 patent is presumbly no less important to Apple than those iPhone design patents.

Trade dress infringement

It looks (also based on the jury's approach to damages) like the jury decided the trade dress part like it was just an enhancement of design patents. The jury may not have paid close attention to all the legal differences between design patents and trade dresses. Samsung's Rule 50 motion claims that there are constitutional issues involved. I have not yet formed an opinion on that argument.


Samsung wants to get rid of the willful infringement findings the jury made, while Apple also wants to prevail on willfulness with respect to the few items on which it didn't. Samsung's argument is that if willfulness was established at all, it was only the case for the '381 "rubber-banding" patent since Samsung was put on notice of its alleged infringement of that one in 2010, but the other patents-in-suit were not on a list of patents Apple provided two years ago. Judge Koh didn't appear to be too impressed with that argument before. I believe this is more of an argument for the appeal than for the next few months.


In my previous post I said that the jury's damages award relating to the Galaxy Prevail smartphone appears to be, quite clearly in fact, contrary to law.

Since the day the verdict came down I've been saying that some adjustments are very likely, while it will be hard to get the damages award thrown out entirely. But there's one argument that Samsung makes and which the Korea Times quotes:

"Because the jury verdict form didn't allow identification of damages on a claim-by-claim basis (per Apple's request), if even one patent infringement or trade dress issue is overturned on a judgment as a matter of law (JMOL), then the Court needs to vacate the entire damages amount."

It's an interesting point, but Samsung's own disaggregation of the jury's damages will be held against it in this context. Also, that quote refers to "the entire damages amount", but at the most there would be a need to reevaluate damages for a particular product or set of products.

I actually think Apple was full well aware of this risk, but decided to focus on getting a favorable verdict first and on defending it later. Before the trial, Apple was definitely concerned about the risk of a hung jury or of the jury ruling against many claims simply because of an unwillingness to deal with all the complexities.

If any parts of the damages verdict have to be revisited, Apple also asks for another $150 million, which could offset in whole or in part any adjustments in Samsung's favor. Furthermore, Apple is seeking willfulness enhancements, supplemental damages and prejudgment interest totaling more than $700 million. If the court makes adjustments, the overall amount may not change as much as Samsung would like it to. And in the event of a new damages trial, Apple could lose the billion-dollar verdict it has in its hands today but a new jury could even award it two billion dollars or more.

Patent exhaustion

Patent exhaustion is a matter of license agreements, the place where a sale of a component is made, and technical questions concerning which components of the accused product fully implement a patented invention. With respect to Apple products incorporating Intel chips, the jury found in Apple's favor. Qualcomm-based products were not at issue here.

If Samsung wants to change this finding, it will probably have to show that its license agreement with Intel doesn't result in exhaustion. Contract interpretation is something judges do all the time. Concerning the country in which the sale was made, it appears that Judge Koh sided with Apple when deciding on her jury instructions, and on the technical side, the jury will get a huge amount of deference (whether or not it really figured the technical issues out).

FRAND issues

Apple's FRAND defenses are alive and will be heard on December 6 despite the fact that the jury did not find in favor of certain FRAND-related counterclaims.

Apple would nevertheless like to prevail on those counterclaims. That's not going to be easy, but FRAND issues involve (and sometimes completely come down to) questions of equity, which are the judges' prerogative. I think both Judge Koh and the appeals court will be more willing to overrule the jury on a FRAND issue than on, for example, a patent validity or infringement question.


There are numerous issues in this case, and while the jury does not deserve some of the name-calling that has occurred and may occur in the future, it certainly made some mistakes and a numnber of adjustments of different kinds will likely happen between now and the final ruling. But as far as liability findings are concerned, Samsung's best shot is to prove some of the patents invalid, which would be easier to accomplish at the patent office than it is to get a jury verdict overruled.

After Judge Koh is done with this case, both parties will appeal to the Federal Circuit all those parts that weren't resolved in the respective party's favor. There are already some other interesting smartphone patent cases pending at the Federal Circuit, and at the end of all those appeals, there will have been some improvements in favor of defendants but also some in favor of plaintiffs. The appeals process can cut both ways, and I'm sure it will.

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