Sunday, January 5, 2014

Samsung wants U.S. court to consider more recent settlement talks with Apple in injunction context

On December 26, 2013, Apple renewed, after a pretty successful appeal, its motion for a U.S. permanent injunction against Samsung with respect to three multi-touch software patents and proposed that an injunction hearing be held on January 30, 2014. Samsung has meanwhile requested an extension of time for its opposition to Apple's motion, which would normally be due on January 9. Samsung wants an extension until January 23, but in reality it wants a lot more. As it told the court on New Year's Eve, it wishes to conduct some further discovery relating to Apple's willingness to license the patents underlying the injunction motion, which in turn would probably delay the process to an even greater extent. (Also, the situation surrounding the '915 pinch-to-zoom API patent, which the USPTO's Central Reexamination Division rejected last month, could lead to further complications, as I discussed in my post on the renewed motion.)

Since the parties already briefed the court extensively on the eBay v. MercExchange injunction factors in 2012, it's not easy for Samsung to raise any new discovery issues. But it believes that it has found an opening in the following sentence from the Federal Circuit's opinion:

"Indeed, the district court's focus on Apple's past licensing practices, without exploring any relevant differences from the current situation, hints at a categorical rule that Apple's willingness to license its patents precludes the issuance of an injunction."

Samsung argues that the Federal Circuit's "remand instructions as to this issue require consideration of 'Apple's past licensing practices' [the agreements with IBM, Nokia, HTC, and possibly others] and 'any relevant differences from the current [i.e., Samsung] situation,' [...] including resolution of factual disputes regarding the scope of Apple's past licensing offers to Samsung". And there have been, quite obviously, further settlement talks between Apple and Samsung since the 2012 injunction briefing. A few days ago the Korea Times quoted a high-ranking Samsung executive who confirmed that working-level settlement talks are ongoing. So Samsung wants to ensure that Judge Lucy Koh will get to see any relevant evidence when she makes her post-appeal injunction decision. In particular, Samsung wants to depose one or more Apple witnesses on the following questions:

"1. YOUR settlement discussions with SAMSUNG from October 19, 2012 to the present.

2. Any discussions between YOU and SAMSUNG from October 19, 2012 to the present regarding licensing or potentially licensing the 7,469,381 [rubber-banding] patent, the 7,844,915 [pinch-to-zoom API] patent and/or the 7,864,163 [tap-to-zoom-and-navigate] patent to SAMSUNG.

3. YOUR willingness to grant Samsung a license to the 7,469,381 patent, the 7,844,915 patent and/or the 7,864,163 patent during the period from October 19, 2012 to the present.

4. Any discussions between YOU and any third parties from October 19, 2012 to the present regarding licensing or potentially licensing the 7,469,381 patent, the 7,844,915 patent and/or the 7,864,163 patent."

Apple said in a filing on Friday (January 3) that "Samsung's request for more time to oppose the motion is yet another delay tactic". While there can be no doubt about the dilatory impact of further discovery (and I have criticized some of Samsung's stalling tactics on various occasions), I don't think Samsung's proposed course of action -- discovery on more recent settlement negotiations followed by its opposition brief -- is unreasonable.

Apple argues, among other things, that its proposed schedule (which wouldn't work if the court granted Samsung the requested extension) would "allow the Court to hear Apple's renewed request for a permanent injunction along with the parties' other post-[damages re]trial motions at the hearing already scheduled for January 30, rather than requiring a separate hearing on Apple's motion". I don't think the court will give this much weight, if any. Convenience is a secondary consideration at best. The relevant facts must be on the table. I have policy concerns about a scenario in which a party's willingness to engage in constructive settlement talks can adversely affect its access to injunctive relief -- that's where I disagree with Samsung. But Samsung interprets the appellate opinion and remand instructions accurately. The district court -- the court of equity, and injunctions are an equitable remedy -- will have to distinguish the Apple-Samsung situation from Apple's past license deals with the likes of IBM, Nokia, and HTC. (With respect to HTC, the mere existence of an "anti-cloning" provision appears sufficient to prove distinguishability, and that's also how I read the Federal Circuit opinion, but if Apple ever offered Samsung a license deal without such a clause, then it's a different situation.)

Not only is convenience less relevant than substance but there's also no scarcity of opportunities in the coming months to hold an Apple-Samsung injunction hearing in California at a point in time when the court and parties' counsel meet for some other reason. On March 31, the trial of the second California litigation between these parties will begin. After that trial, there will be some post-trial proceedings. And in early May the court will hold a hearing on Apple's motion for costs.

Samsung has a point with its request for further discovery, though I guess that if I had all the facts before me, I probably wouldn't find anything in those more recent settlement negotiations that would weigh significantly against Apple's renewed motion. At this point the court doesn't know, and I doubt that Apple can convince the court of the absolute, definitive, a priori irrelevance of the discovery questions raised by Samsung.

Finally I'd like to add some information concerning what is actually a more important issue in this context than discovery and scheduling: the more-than-dubious validity of the '915 (pinch-to-zoom API) patent. On December 30, Samsung filed a notice informing the court of Apple's notice of appeal (which I had already mentioned in my post on the renewed injunction motion). I was thoroughly disappointed that Samsung's lawyers had claimed in an emergency motion during the recent damages retrial that at that point (November 2013) "Apple's only option [was] to file a Notice of Appeal, else, 'the prosecution of the present ex parte reexamination proceeding WILL BE TERMINATED and a Notice of Intent to Issue Ex Parte Reexamination Certificate will be mailed in due course". In its (successful) opposition, Apple highlighted the fact that the USPTO communication Samsung's motion was based on explicitly mentioned the possibility of other steps Apple could have taken. Judge Koh, however, had allowed a renewed motion for a stay only in a situation in which Apple's only option left would be a notice of appeal.

Samsung's notice of Apple's appeal says that "Apple did not take any of the actions Apple described other than filing a Notice of Appeal, because it could not have meaningfully taken such actions, precisely as Samsung stated". Back in November I didn't doubt that Samsung might very well be right and Apple would ultimately have to appeal. And yes, Samsung was also right that Apple did not do anything other than appeal. But Samsung's emergency motion did not contain the word "meaningfully" (or any similar limitation), which is the whole problem. At the time Samsung made that prediction (which it misrepresented as a definitive fact), it was just that: a prediction. A reasonable one for sure. One that has now turned out to have been accurate. Still, between the filing of Samsung's motion and the appeal, there could have been other steps, if Apple's lawyers had suddenly come up with arguments that appeared promising, and reexamination wasn't formally closed.

Apple's appeal may succeed. Even if the USPTO-internal appeal didn't succeed, an appeal to the Federal Circuit might. But the validity of the '915 patent is highly doubtful now because the same institution that once granted it now believes that it shouldn't have done so. I strongly criticized Google/Motorola for the enforcement (against Apple's iCloud email service in Germany) of an email notification patent even after different courts had expressed negative opinions on its validity (in November, the Federal Patent Court of Germany indeed declared it invalid as granted). In that case, Apple was on the receiving end of such enforcement, which needlessly inconvenienced many Germany-based Apple customers. In the California case, I believe Apple, which experienced this problem in Germany, should stipulate beforehand to a stay of any U.S. injunction it may win over the '915 patent.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Share with other professionals via LinkedIn: