Tuesday, July 30, 2013

Apple and Google's Motorola drop 14 patents from litigation in the Southern District of Florida

In connection with the patent dispute between Apple and Motorola Mobility, the Google subsidiary's assertions of FRAND-pledged standard-essential patents (SEPs) have recently received most of the attention (allegation that Motorola demanded more than 12 times the royalty from Apple that it charged others, finalization of FTC-Google consent decree, upcoming Federal Circuit hearing on the "Posner appeal"). But Motorola is also asserting some non-SEPs against Apple (and, of course, all of Apple's assertions against Motorola relate to non-SEPs), such as the infamous, clinically-dead push notification patent is is still enforcing against Apple in Germany. In the United States, a Motorola ITC complaint against Apple involving SEPs and non-SEPs was dismissed (and is being appealed). And between 2010 and 2012 Motorola asserted a dozen non-SEPs against Apple in the Southern District of Florida, where Apple countersued over the same number of patents.

The 24-patent Miami litigation is currently scheduled to go to trial in August 2014. Judge Robert N. Scola, the federal judge presiding over this case, was thoroughly disappointed that the parties couldn't agree on how to narrow their case without asking the court to provide a large number of claim constructions as guidance to aid that process. As a result, he pushed back the case by four months, which is more of a problem for Google (which still has nothing to show in U.S. litigation in terms of leverage from the $12.5 billion Motorola deal) than for Apple, whose focus is clearly on the dispute with Samsung.

Yesterday (Monday, July 29 2013) Apple and Motorola filed a stipulation to dismiss a total of 14 patents from the Miami case. Apple had previously dropped two patents (though it reserved some rights subject to what happens on appeal), so the case was down from 24 to 22 patents. Under yesterday's stipulation, Motorola drops eight patents and Apple withdraws six, restoring parity. Subject to the court's (very likely) approval of this stipulation, either party will be asserting four patents going forward. Some of the dismissals are with prejudice and some without. To the extent that there is prejudice, it only bars reassertions of those patents against the accused products/services in this action and those that are no more than colorably different. In other words, if new infringement issues arise in the future relating to the same patents, they can be litigated again.

A couple of Apple's withdrawals relate to Motorola's set-top box business, which has meanwhile been divested.

It appears to me that the parties are, not surprisingly, focusing on patents that could give them some leverage should they obtain injunctive relief and have put some patents with reasonably-promising damages claims on the back burner, knowing that damages awards are unlikely to have too much impact on the terms of a future Apple-Google settlement. There's one notable exception: Apple's '560 patents (for details see list of remaining patents-in-suit further below) has already expired, but it might give Apple a damages claim against the acquirer of Motorola's set-top box business.

For the complex procedural history of this case, let me refer you to my previous posts, and the two posts on the Miami litigation that I just linked can serve as a starting point. I'm now going to list the patents that the parties dropped and the ones that are still in the case.

Patents dismissed by Apple under yesterday's stipulation

Dismissals with prejudice:

  • U.S. Patent No. 5,594,509 on a "method and apparatus for audio-visual interface for the display of multiple levels of information on a display"

  • U.S. Patent No. 5,621,456 on "methods and apparatus for audio-visual interface for the display of multiple program categories"

  • U.S. Patent No. 7,657,849 on "unlocking a device by performing gestures on an unlock image" (this is the original slide-to-unlock patent; a newer, optimized version, the '721 patent, is among the patents dismissed without prejudice)

Dismissals without prejudice:

Patents dismissed by Google (Motorola) under yesterday's stipulation

Dismissals with prejudice:

Dismissals without prejudice:

The parties' eight remaining patents-in-suit

Motorola's patents-in-suit:

Apple's patents-in-suit:

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