Thursday, November 14, 2013

Federal Patent Court of Germany declares Motorola's push patent invalid as granted

Good news for German iCloud users: they won't lose the push email feature of Apple's iCloud service again. Apple reactivated the feature last month after 19 months of illegitimate enforcement by Google and Motorola Mobility. Yesterday evening (so late that I was too tired to blog about it immediately, but I did tweet about it), President (Chief Judge) Beate Schmidt of the Bundespatentgericht (BPatG, Federal Patent Court of Germany) declared the patent invalid in the form in which the European Patent Office had inexplicably and unjustifiably granted it.

The court also tossed ten different amended versions of the patent (amendments 1-9 and 9A) that Google (Motorola) submitted and Apple and Microsoft opposed. It imposed 80% of court and attorneys' fees on Google. Only the eleventh amendment passed the test, and it's of no concern whatsoever to end users of Apple and Microsoft's products and services, for the practical reasons I'll explain below.

The patent had previously been invalidated in the UK. Claim 1, which Motorola enforced against Apple, was found invalid by the UK court for four (!) independent reasons, more than any other patent in the ongoing smartphone patent disputes.

Motorola's first nine amendments would have had the effect of explicitly narrowing the patent to push and excluding pull mechanisms. Some of the prior art references related to pull techniques. While a push-only claim is narrower, it would have been broad enough to reinstate the iCloud push injunction, for example. But the Federal Patent Court still did not find the patent novel and inventive over the prior art even if limited to push notifications.

Motorola can and presumably will appeal yesterday's ruling to the Bundesgerichtshof (BGH, Federal Court of Justice). Apple and/or Microsoft may also appeal the approval of the 11th amended version (in my opinion, that one is also obvious over the prior art), but they've already accomplished their most important objective anyway: to protect their customers from Google's trollish conduct. Users of iCloud, Outlook or Hotmail will be fine. The further process is devoid of any strategic implications. It's now merely a chess game between large companies about, relative to their size, tiny amounts of money.

Unless the patent is revived by the BGH against all odds, Google will owe Apple wrongful-enforcement damages at the end of the day -- but if the amended version stands, it will probably seek damages from Apple and Microsoft for past infringement. Apple and Microsoft will presumably deny that their products ever infringed the much narrower version of the patent according to the approved amendment. The amended version comes with many lines of additional claim language, providing a basis for multiple new non-infringement arguments.

The infringement proceedings against Apple and Microsoft were both stayed in April: Apple's case was already before an appeals court, the Oberlandesgericht Karlsruhe (Karlsruhe Higher Regional Court), and it will resume at the appellate stage even though we're basically talking about a new patent now. Microsoft's case was stayed because the Landgericht Mannheim (Mannheim Regional Court) found it licensed and wanted to await the outcome of the nullity (invalidation) action before finding Motorola entitled to damages for past infringement (for the period before Google, which had an ActiveSync license deal in place with Microsoft, acquired Motorola Mobility). While it would be the normal course of action for the Karlsruhe and Mannheim courts to unstay the infringement cases before them, I wouldn't be completely surprised if they decided to wait (at least with their rulings) before the invalidation proceedings have been completed before the BGH. Maybe the parties can even stipulate to that sequence of events.

Since Microsoft was found licensed, Motorola can't obtain an injunction against Microsoft anymore. The appeals court could theoretically find that Microsoft is not licensed, but this patent will expire in 2015, so it's practically impossible for any of this to have an actual impact. An injunction against Apple could still issue over the amended version of the patent (should any past infringement of that one be identified), but it wouldn't really matter. Unlike the original version, the amended version doesn't cover all push notifications of status updates of email messages between devices: it only applies to the technique of delaying the delivery of updates so as to process two or more updates in a batch. That technique may slightly reduce network traffic and battery consumption, but end users simply wouldn't notice if Apple and/or Microsoft (if they even use the technique today, which I don't know) deactivated it. The key thing is: people get push now, they will get it in the future, and should the BGH unexpectedly revive the patent in its original form, then the patent will almost certainly have expired in the meantime.

I believe that wrongful-enforcement damages are the only context in which Motorola could practically benefit from what its lead counsel in this nullity action as well as the related infringement proceedings, Quinn Emanuel's Dr. Marcus Grosch, achieved through his tireless efforts to salvage a small portion of the patent (he even presented another amended version, 9A, derived from the original claim 2, during yesterday's nullity trial and then modified that one as well as two other amendments again based on input from the court). Should Motorola be able to prove that Apple infringed not only the invalidated original version of the patent but would equally have infringed the narrower amended version, then the determination of wrongful-enforcement damages becomes limited to the question of how much damage Google (Motorola) caused Apple's German business by enforcing a broad injunction when only a narrow one was actually warranted in retrospect. That would be a more difficult basis for establishing wrongful-enforcement damages than a scenario of an injunction over a patent that failed to survive in any way, shape or form.

The successful onslaught against Motorola's infamous push patent was led by three law firms. Apple was represented by Bardehle Pagenberg's Dr. Christof Karl (patent attorney and attorney-at-law) and Johannes Lang (patent attorney) as well as Freshfields Bruckhaus Deringer's Dr. Markus Gampp (the attorney-at-law who also got the push email injunction lifted). Freshfields also defends Microsoft against this patent: Professor Peter Chrocziel is lead counsel in the infringement proceedings and, together with his associate Matthias Beer, joined two Boehmert & Boehmert patent attorneys, Christian Appelt and Felix Hermann.

The joint defense alliance between Apple and Microsoft clearly outnumbered the QE task force consisting of the aforementioned Dr. Grosch as well as Dr. Jan Ebersohl and Dr. Katrin Gerstenberg. QE's approach of not teaming up with patent attorneys in these types of proceedings is as unusual as it is controversial in the German IP law community, but in the proceedings I watch there is no indication of them being less effective on their own.

All three parties (Apple, Google, Microsoft) also dispatched in-house counsel from the United States, which speaks to the significance of this case.

The U.S. equivalent of this patent is still at issue in a Motorola v. Apple case in the Southern District of Florida which is scheduled to go to trial in the second half of year.

Today the BPatG is holding a nullity trial on Google's (Motorola's) challenge to a Microsoft "soft input panel" patent over which the Munich I Regional Court had granted an injunction last year (the third German injunction Microsoft won against Motorola). I recently obtained from the BPatG a preliminary ruling in which it determined that the patent failed to meet the technicity requirement of European patent law, where software as such is not patentable (didn't I just say that QE does well even without patent attorneys on board?). For now I'm operating under the assumption that this holding will also become the final decision on the patent. There's so much going on around the globe that I decided not to attend today's hearing. I will try to find out about the outcome later. Should the result unexpectedly be that the patent surives in its original or an amended form, then I will report on it. Otherwise you can just assume that this matter, too, will be appealed to the BGH. End users weren't affected by that soft input panel patent to my knowledge, unlike the push notifications story, which resulted in the deactivation of a feature on millions of devices that people had already bought.

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