A month ago Apple succeeded (not entirely, but to a remarkable extent) with its appeal of the ITC's March 2012 dismissal of Apple's complaint against Motorola. Based on the appellate opinion, Apple has the chance to prevail on two of its patents-in-suit -- a touchscreen hardware patent and a touchscreen software patent (ellipse fitting). And these patents are also of significant concern to other Android device makers, particularly Samsung. But in order for the ITC investigation to be resumed by way of a remand, Apple needs the United States Court of Appeals for the Federal Circuit to issue a mandate, and Google (Motorola Mobility's owner) is still trying to prevent this from happening.
Today Google filed with the Federal Circuit a petition for a panel rehearing and for an en banc (full court) rehearing (this post continues below the document):
I wanted to report on this quickly, so I haven't been able to check the record (including the recording of the appellate hearing) for the issues the petition raises. There are two arguments in the petition that I'd like to comment on nevertheless:
The touchscreen hardware patent was brought back to life on the basis of secondary considerations of non-obviousness. The best way to illustrate that concept is a passage from the dissent-in-part of a circuit judge who would have upheld the entire patent (not just one independent claim) on that basis:
"The Smartphone has defined modern life. Be it in the workplace, the home, airports, or entertainment venues across America, individuals are tethered to their handheld devices. Not long ago, users primarily spoke into these devices. Today, fingers tapping, grazing, pinching, or scrolling the screen is a ubiquitous image that reflects how we conduct business, work, play, and live. The asserted patent in this case is an invention that has propelled not just technology, but also dramatically altered how humans across the globe interact and communicate. It marks true innovation."
Google's Motorola now argues that market success of the claimed invention must be analyzed on a claim-by-claim basis: Apple's devices may practice claim 1, but with respect to that one the Federal Circuit didn't overrule the ITC's finding of invalidity; however, the ITC, argues Motorola, did not find Apple's iPhone to practice claim 10 -- the independent claim that survived and will be at issue on remand.
It's an interesting point and even someone with no intention of stalling (though Google/Motorola is obviously not interested in a resumed ITC investigation) might raise this issue. Rehearings are rare, and I still don't think a rehearing is too likely here, but you never know.
In the same context Google also wants to raise the bar with respect to evidence of a causal nexus: it wants granular proof of a particular patent claim, as opposed to prior art features, driving (or, in this case, having driven) demand. This is a similar logic and terminology (though in a different context) as in Apple's appeal of the denial of a permanent injunction against Samsung. At the appellate hearing (held about four weeks ago) the Federal Circuit didn't appear to support a standard so exacting that this hurdle would be practically insurmountable. And I don't think it will happen here, in the (non-)obviousness context. But it worked for the same law firm before, so they decided to try it again.
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