More than two months ago the United States Court of Appeals for the Federal Circuit ruled on a Microsoft appeal of an ITC ruling in a patent case against Google subsidiary Motorola Mobility's Android-based devices and found that U.S. Patent No. 5,664,133 on a "context sensitive menu system/menu behavior" was infringed by Android, contrary to the ITC's finding of no violation with respect to this one. The patent is a continuation of a December 13, 1993 patent application. There won't be an import ban anymore due to expiration, but Microsoft can seek damages for past infringement in district court. When it filed its ITC complaint in October 2010 it also brought a companion (mirror) complaint in the Western District of Washington.
Google nevertheless petitioned for a rehearing, which the Federal Circuit denied yesterday (this post continues below the document):
13-12-11 Order Denying Motorola Mobility Petition for Rehearing by Florian Mueller
Petitions for rehearings are relatively long shots. Google probably petitioned only in order to cause delay.
In the smartphone patent cases I watch, the Federal Circuit generally tends to arrive at right holder-friendlier conclusions than the ITC and various district courts. Google has not received much good news from the Federal Circuit lately. Last month its petition for a rehearing on Apple's fairly successful appeal of another ITC ruling was also denied, and the ITC investigation of Apple's complaint against Google's Motorola Mobility will therefore resume shortly. And last week, Google experienced a dreadful hearing (from its perspective, not that of creatives and honest innovators) in the Android-Java case.
The Federal Circuit has not yet ruled on Motorola's attempt to overturn the import ban Microsoft won last year over a meeting scheduler patent, but at the August hearing it appeared unlikely that the patent would be found invalid. The parties have an enforcement dispute over that import ban, and I haven't seen much progress lately with respect to Microsoft's complaint over arbitrary and capricious action by U.S. Customs and Border Protection in this context, which could be due in no small part to the outstanding Federal Circuit ruling on Motorola's appeal. (Interestingly, I found out last month that Google, too, is accusing the U.S. government -- in this case, the ITC -- of "arbitrary and capricious" conduct.)
Impact of German FAT patent ruling grossly overrated
Last week's report on a decision by the Federal Patent Court of Germany to invalidate (on an appealable basis) a Microsoft file system patent (File Allocation Table, FAT) was blown out of proportion by some commentators who saw Microsoft's Android patent licensing revenue in jeopardy as a result of that decision. Two of the three reasons for which this is wrong were stated in my post, but I'll repeat them and also explain the fourth one in order to clear up the confusion:
That FAT patent, too, will expire soon. That fact alone should have given people pause. Even if they were right (and they are not, see the third bullet point) that Microsoft's Android patent licensing revenues depend very much on that one patent, a court ruling so close to expiration is not too relevant in commercial terms. License agreements (especially those involving patent portfolios as opposed to single patents) typically don't provide for a refund based on subsequent invalidation.
The German decision is specific to European law, which differs from the patent laws of other jurisdictions (especially the U.S.) because of its technicity requirement. The patent was not invalidated based on a straightforward obviousness theory, but because the elements that set the claimed invention apart from prior were not found to be "technical". Even if this holding was affirmed on appeal (which is far from certain), it wouldn't be possible to replicate this in such jurisdictions as the United States, where there is no statute excluding computer programs "as such" (i.e., without a technical contribution) from the scope of patent-eligible subject matter.
Microsoft's Android patent license deals (20 of which are known) are not single-patent license deals. Instead, companies receive broad coverage relating to any of Microsoft's patents that read on Android or Chrome. In fact, Microsoft has already asserted dozens of different patents against Android in court (mostly against Google's Motorola Mobility and to a smaller extent against Barnes & Noble in a dispute that was settled a while ago), making it clear that FAT is only a small part of Microsoft's Android-related patent holdings. I actually believe that Microsoft has dozens or even (more likely) hundreds of additional patents it could assert against Android, but it prefers to strike license deals, which is why "only" a few dozen of those patents have been asserted in court so far.
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