In the second California litigation between Apple and Samsung, which has a trial date in 2014, the outcome will probably be similar as the one of the trial held last summer. At the claim construction stage Apple is on the winning track -- to a near-complete extent that is rarely seen in disputes involving two players of this nature and stature but less surprising when considering that one of the two parties has already been found to have deliberately copied inventions made by the other.
Late on Wednesday, Judge Lucy Koh issued a claim construction order relating to four of Apple's and three of Samsung's patents-in-suit. Here's the order (this post continues below the document):
Claim construction means that the court defines how certain terms appearing in the asserted claims must be properly understood. Any (non-)infringement and (in)validity contentions are later evaluated against the background of the court-determined claim construction. For example, the court's constructions are also provided to the jury, with the instruction to use them.
I have analyzed the order in detail. Here's a summary:
Apple prevailed on each and every disputed term in its own four patents, with the court in each case adopting Apple's proposed construction without any modification. Apple's related patents are U.S. Patent No. 5,666,502 on a "graphical user interface using historical lists with field classes" (which in Judge Koh's words "aims to provide solutions to improve the speed and efficiency of data entry into user interface fields"), U.S. Patent No. 5,946,647 on a "system and method for performing an action on a structure in computer-generated data" (the famous "data tapping" patent, which Apple successfully enforced against HTC and which Judge Koh already found Samsung to be likely to infringe in a preliminary injunction decision concerning the Galaxy Nexus, with injunctive relief being denied for equitable reasons), U.S. Patent No. 7,761,414 on "asynchronous data synchronization amongst devices", and U.S. Patent No. 8,014,760 on "missed telephone call management for a portable multifunction device".
Samsung consistently tried to narrow the scope of the claims in order to have a better basis for disputing infringement, while defendants sometimes also seek to broaden them with a view to invalidation. These efforts on Samsung's part were all rejected by the court because they weren't supported by the patent specifications, prosecution history, or extrinsic evidence. As a result, Samsung will face an uphill battle at next year's jury trial when disputing infringement.
Samsung wanted the history list of the '502 patent to be "shared between different applications", which may be the case, but need not be. For the '647 data tapping patent, it wanted the "action processor" to be "separate from a client", while Apple argues that it just needs to be a program routine, or set of routines, performing the user's selected action on the detected structure. Here, too, sharing (of the action processor by multiple applications) was not deemed a requirement. In connection with the '414 synchronization patent, Samsung proposed to interpret "concurrently with" as "at the same time as", which may at first sight appear plausible but would have narrowed the meaning: for example, if a network has "150 concurrent users", this means that it can handle 150 simultaneous users, but it doesn't mean that there have to be 150 users, neither 149 nor 151, at each point in time. The court agred with Apple that this term, which refers to the execution of parallel threads, merely requires that the threads be active "during an overlapping time interval" (but not all the time). With respect to the '760 missed-call patent, the parties modified their proposed constructions at the claim construction hearing and provided some clarification, and the narrowed dispute was resolved in Apple's favor.
The only patent in connection with which Samsung prevailed is a standard-essential one: U.S. Patent No. 7,756,087 on a "method and apparatus for performing non-scheduled transmission in a mobile communication system for supporting an enhanced uplink data channel". Samsung made an essentiality declaration concerning this patent to ETSI in May 2006. Apple wanted to add a negative limitation (a claim element that says something must not be there or be done) through its proposed construction, and the hurdle is very high for that. The court agreed with Samsung. This ups the ante for Apple's efforts to avoid an infringement finding, but due to Samsung's FRAND licensing obligation, this is not a patent Apple has to be particularly afraid of. If Samsung prevails, it won't get an injunction, and damages and future license fees will be limited.
Samsung will have a hard time proving infringement of its two non-SEPs addressed by the claim construction order. This is consistent with its track record so far: after two years of litigation, in which Samsung mostly focused on SEPs anyway, none of its non-SEP assertions anywhere in the world has succeeded. U.S. Patent No. 7,577,757 on a "multimedia synchronization method and device" and U.S. Patent No. 5,579,239 on a "remote video transmission system" (asserted against, among others, FaceTime) are patents Samsung acquired from third parties, further demonstrating that its own innovation in the past was not really strong in the fields of technology relevant to Apple's business apart from cellular industry standards, and even in that field Samsung's track record, with only one out of eight assertions succeeding (typically just in Korea), is really bad. Samsung may be doing some very interesting stuff now, and maybe it will have some really powerful non-SEPs in a few years. But right now, its non-SEPs are totally underwhelming.
While the court found that "neither party's construction is completely consistent with the '757 Patent", Apple achieved the strategic breakthrough it apparently needed to have a strong non-infringement argument, and the order even notes that "[d]uring the claim construction hearing, Apple agreed with the Court's suggestion". Basically, Samsung wanted the term "zone specific storage and interface device" to be interpreted so broadly that it would even relate to mobile devices. Apple originally proposed a requirement that the device be "fixed in a room, or similar bounded location". The court agreed with Apple's proposed requirement, just not with its terminology -- and Apple then agreed that the court's proposed wording ("resides") or the court's alternative suggestion "remains" would be better choices.
The '239 video patent involved two means-plus-function terms. These are sometimes found indefinite at the claim construction stage and thrown out. The outcome isn't that bad for Samsung, and a software-specific limitation that Apple wanted to add was also rejected by the court, but Apple successfully added a couple of other limitations. To avoid a finding of infringement, it's sufficient to show that one limitation (claim element) is not practiced. It appears that Apple can really achieve this now.
Claim construction is an important juncture after which the parties have valuable guidance as they look for further ways to narrow the case. In this case, with the result being such a near-complete victory for Apple and near-complete defeat for Samsung, the guidance would actually be for Samsung to drop its two non-SEPs with respect to which the court provided constructions, and for Apple not to drop any one of its four patents addressed by the claim construction order. That's what would make sense if the criterion is whether or not a given patent infringement is likely meritorious regardless of whose patent it is. But Samsung will almost certainly refuse to stipulate to asymmetric withdrawals.
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