Saturday, June 29, 2013

Apple and Samsung drop two patents each from California litigation, still a dozen patents-in-suit

Late on Friday Apple and Samsung took the second step in accordance with Judge Koh's order to narrow their second California lawsuit, which is scheduled to go to trial on March 31, 2014. Ultimately, by February 6, 2014, the parties will have to limit their asserted patents claims to five (per side) and their accused products to ten (per side).

The first step occurred in mid-May: each party listed 22 accused products (the lists are at the end of this post). But they also disagreed on how to count the accused products. They're still trying to resolve at least some of their related disagreements. Last week they asked Judge Koh to postpone a case management conference (but not to delay the overall case schedule) because "the parties continue to confer regarding case issues relating to the Case Management Conference and believe that additional time to meet and confer regarding these issues would be helpful in narrowing the points that may be in dispute at the Case Management Conference".

In the Friday (June 28) filings, the list of accused products (per party) was narrowed to 18 items. For the most part, the parties threw out the oldest ones of the accused devices. Apple is no longer targeting in this action the Galaxy Player 4.0 and 5.0, and the Galaxy Tab 7.0 Plus and 8.9. Samsung dropped the iPhone 3G, the original iPad, and the third-generation iPod while still accusing newer generations of those products, but what's interesting is that Samsung previously accused the first and the third generation of Apple TV, and it has now dropped the third generation to focus on the first. This suggests that some technological change has occurred that makes it harder (or impossible) for Samsung to prove infringement. Otherwise it makes no sense to drop a newer technology and accuse an older one. Therefore, the only context in which Apple TV will play a role in this case is damages. An injunction doesn't matter if a workaround is already in place.

This week the court didn't allow the addition of the Galaxy S4 to this case.

As per Judge Koh's order, the parties had to narrow the lists of asserted patent claims to 15 claims per side, and had to select those from six patents, requiring each party to drop at least two patents. These are dismissals without prejudice, enabling the parties to pursue claims in subsequent cases.

On this basis, Apple has withdrawn U.S. Patent No. 5,666,502 on a "graphical user interface using historical lists with field classes" and U.S. Patent No. 8,086,604 on a "universal interface for retrieval of information in a computer system". The '502 history-list patent, which in Judge Koh's words "aims to provide solutions to improve the speed and efficiency of data entry into user interface fields", had actually been construed according to Apple's proposals, so if this is ever reasserted, Apple may prevail on it (unless Samsung has a strong non-infringement argument even under Apple's construction). But it's going to expire in 2015, so there probably won't be a window of opportunity for obtaining an injunction (since reassertion would probably not occur until after the spring 2014 trial). The '604 "Siri-style unified search" patent won Apple a preliminary injunction against the Galaxy Nexus last year, which the Federal Circuit reversed. Apple claims that even under the Federal Circuit's modified claim construction there's still an infringement. Apple has not given up on unified search in this action: it's still asserting U.S. Patent No. 6,847,959, which is from the same patent family as the '604 patent (and raises the same claim construction issue on which the Federal Circuit spoke out last year). It was obvious that, given the narrowing pressure the court puts on the parties, Apple would not take two "Siri" patents, from the same patent family, to trial.

Samsung dropped U.S. Patent No. 7,672,470 on an "audio/video device having a volume control function for an external audio reproduction unit by using volume control buttons of a remote controller and volume control method therefor" U.S. Patent No. 7,232,058 on a "data displaying apparatus and method". These patents were not addressed by the aforementioned claim construction order.

Between now and the trial, either party needs to withdraw only one more patent. Usually each party would choose five claims from five different patents for trial, unless summary judgment rulings and other circumstances create a situation in which a party doesn't even have five sufficiently strong patents left, in which case it can afford the "luxury" of asserting more than one claim per patent. The record of pretrial decisions clearly favors Apple in both California cases (as does the overall worldwide litigation track record between these parties), so Samsung would be more likely than Apple to ake fewer than five different patents to next year's trial.

Updated list of patents (and patents claims) at issue in this case

Apple's asserted patents and patent claims:

  1. U.S. Patent No. 5,946,647: claims 1, 4, 6, 8, 9

    ("data tapping" patent)

  2. U.S. Patent No. 6,847,959: claims 24, 25, 27

    (remaining Siri-style unified-search patent)

  3. U.S. Patent No. 7,761,414: claims 11, 20

    (asynchronous data synchronization)

  4. U.S. Patent No. 8,014,760: claims 10, 11, 19

    (missed telephone call management)

  5. U.S. Patent No. 8,046,721: claim 8

    (slide-to-unlock image)

  6. U.S. Patent No. 8,074,172: claim 18


Samsung's asserted patents and patent claims:

  1. U.S. Patent No. 7,756,087: claims 10, 35 40

    (non-scheduled transmission over enhanced uplink data channel; declaration of standard-essentiality to ETSI in May 2006)

  2. U.S. Patent No. 7,551,596: claims 1, 13

    (signaling control information of uplink packet data service; declaration of standard-essentiality to ETSI in May 2010)

  3. U.S. Patent No. 7,577,757: claims 1, 14, 15

    (multimedia synchronization)

  4. U.S. Patent No. 6,292,179: claims 1, 7

    (related to software keyboards)

  5. U.S. Patent No. 6,226,449: claims 25, 27

    recording and reproducing digital image and speech

  6. U.S. Patent No. 5,579,239: claims 1, 7, 15

    (remote video transmission system)

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

Share with other professionals via LinkedIn: