In a summary judgment order entered late on Tuesday (January 21, 2014), Judge Lucy Koh, the federal judge presiding over two Apple v. Samsung patent cases in the Northern District of California, found Samsung's Android-based devices to infringe an Apple patent on word recommendations (autocomplete) and declared a Samsung patent on multimedia synchronization invalid. Judge Koh denied a couple of other summary judgment requests by Apple and the entirety of Samsung's related motion, leaving those issues to a federal jury. This decision increases, not hugely but significantly, the likelihood of Apple emerging victorious in a multi-patent trial scheduled to begin on March 31, 2014.
Prior to this ruling, Apple and Samsung were asserting five patents each in this two-way patent spat that started in 2012, roughly a year after the worldwide dispute between the two market leaders broke out in the same district (it subsequently turned out into a global battle with filings in ten or more countries). After the summary judgment decision, Apple still has five patents in play, one of which has just been found infringed (leaving to the jury only Samsung's invalidity defense), while Samsung is down to four patents.
The outcome of the new summary judgment ruling is reminiscent of what happened ahead of the summer 2012 California trial between these companies. At the same stage of that litigation, all of Samsung's summary judgment requests were denied as well, while Apple was cleared of infringement of one of Samsung's patents. This time around the outcome is even better for Apple because it now holds an infringement finding in its hand and merely has to defend the validity of the autocomplete patent at the spring trial.
The patent the judge determined was infringed so clearly that there was no need to have the jury evaluate Samsung's denial of infringement is U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations" (i.e., autocomplete, a feature that is rather important on devices that don't have physical keyboards). Apple was at this stage asserting only claim 18, which the court found infringed. Here's the claim language:
A graphical user interface on a portable electronic device with a keyboard and a touch screen display, comprising: a first area of the touch screen display that displays a current character string being input by a user with the keyboard; and a second area of the touch screen display separate from the first area that displays the current character string or a portion thereof and a suggested replacement character string for the current character string; wherein; the current character string in the first area is replaced with the suggested replacement character string if the user activates a key on the keyboard associated with a delimiter; the current character string in the first area is replaced with the suggested replacement character string if the user performs a gesture on the suggested replacement character string in the second area; and the current character string in the first area is kept if the user performs a gesture in the second area on the current character string or the portion thereof displayed in the second area.
If Samsung infringes this autocomplete patent (which is what Judge Koh concluded), then other Android device makers also have a problem. Google, which may be (possibly in close cooperation with Samsung) involved with an anonymous reexamination request against the word recommendations patent, will clearly be unhappy about this finding by its own home court.
The Samsung patent the judge tossed is U.S. Patent No. 7,577,757 on a "multimedia synchronization method and device". Samsung was asserting three claims from this patent. Apple successfully argued that this patent should not have been granted in light of an earlier-filed one, U.S. Patent No. 7,587,446 on "acquisition and synchronization of digital media to a personal information space". Samsung had acquired the '757 patent in September 2011 -- five months after the patent dispute with Apple started, suggesting that the primary motivation was to leverage it in an offensive counterclaim (particularly those over non-standard-essential patents) against Apple.
The fact that Apple is on the winning track again will likely affect the companies' negotiating positions and tactics when their CEOs meet for settlement talks within four weeks. In order to have signficant leverage, Samsung would need to bring more to the table than a few findings of infringement of standard-essential patents encumbered by FRAND licensing obligations. Samsung has not prevailed on a single non-SEP claim against Apple after almost three years of Earth-spinning litigation, and the latest summary judgment ruling again calls into the question the merits of Samsung's allegations that Apple, too, infringed (the use of SEPs through the implementation of industry standards is not really a violation as long as Samsung does not make a cash-only offer on FRAND terms).
The strategically most important issue complicating a settlement is a conditio sine qua non: Apple will only sign a license agreement if it contains restrictions to the scope of the license including, in particular, an anti-cloning provision. This stance was clarified again last week in a court filing.
Here's the detailed summary judgment ruling (49 pages):
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