Saturday, September 7, 2013

Apple, Samsung drop one patent each from second California case (spring 2014 trial)

Apple and Samsung are preparing two California trials (as well as working on litigation in other jurisdictions including Australia, where a trial over standard-essential Samsung patents will be held soon) in parallel:

  1. On November 12, 2013, Judge Lucy Koh's court in San Jose will hold a limited damages retrial, at which a replacement for roughly $400 million of last year's $1.05 billion damages award in the parties' first lawsuit has to be determined, with Samsung hoping for a reduction while Apple has decent chances of actually getting more money.

  2. On March 31, 2014, the trial in the second Northern California trial will begin, and that one is far more interesting than the first case in terms of the impact of an injunction sought by Apple because the patents are, on average, considerably more powerful.

Late on Friday, Apple and Samsung filed a stipulation to drop one patent each from the second California case, as a narrow-your-case-step-by-step order by Judge Koh, issued in April 2013, required them to do. The order originally set a September 2 deadline for this, but it was extended until Friday. 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).

In late June, the parties withdrew (without prejudice in each case, therefore allowing reassertion on a later occasion) two patents each, and still had six patents-in-suit per party, which I listed. With the Friday filing, either party is down to five patents. From here on out, they will still have to drop claims and the court might throw out patents on summary judgment (and there will be reductions of invalidity contentions), but the April case management order per se wouldn't preclude the parties from taking all of the remaining patents-in-suit, which I now list further below, to trial (by asserting one claim per patent).

Apple has now dropped U.S. Patent No. 8,014,760 (missed telephone call management), a patent that the United States Patent and Trademark Office started to reexamine a couple of weeks ago. I guess at least part of the consideration here was that Apple wants to avoid all those reexamination-related requests for a stay. Should the patent be affirmed in whole or in part at the end of reexamination, reassertion may very well happen in a future lawsuit, unless the parties settle in the meantime. Apple had prevailed on claim construction of this patent. By the way, Apple is, for the time being, still asserting that patent in a Southern Florida litigation with Google's Motorola Mobility.

Samsung has withdrawn U.S. Patent No. 6,292,179, which is related to software keyboards. Samsung's track record with non-standard-essential patent assertions against Apple is that it has consistently failed whenever it tried. It also has a high-drop out rate with its SEPs, but won at least a few infringement findings. Samsung's "final five" patents list now contains two SEPs -- that's 40%, despite the fact that it knows it can hardly obtain an injunction over them.

Last month Apple withdrew its FRAND antitrust counterclaims from the second California case (without prejudice, as always), but it still has a strong set of FRAND defenses in this case.

Given that this is an important juncture in the case-narrowing effort for Apple v. Samsung II, I'm now going to provide an updated list of the remaining patents-in-suit. It will be a useful reference in the months ahead.

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

  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. 8,046,721: claim 8

    (slide-to-unlock image)

  5. 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. 6,226,449: claims 25, 27

    recording and reproducing digital image and speech

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

    (remote video transmission system)

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