Unless Apple and Samsung reach an agreement on "anti-cloning" and other key terms of a patent cross-license agreement, an outcome for which I wouldn't hold my breath at this stage, they will spar in the San Jose federal courthouse once again starting March 31, when their second two-way lawsuit (in which the parties originally asserted eight patents each) will go to trial. Their third trial in that building, that is.
Late on Tuesday by local time (early on Wednesday here), the parties notified the court and each other of their final narrowing proposals. In April 2013, Judge Lucy Koh, the federal judge presiding over their two California litigations, had ordered a narrowing of the case in several steps so as to limit the number of patents and products the jury will have to look at. I previously reported on three rounds of semi-voluntary narrowing: in May 2013, the parties listed 22 products each; in June 2013, they dropped two patents each; and in September 2013, they provided a shortlist of five patents each that they wanted to take to trial, still with well over one claim per patent, on average. In January 2014, a further narrowing -- only of Samsung's offensive case -- occurred by means of summary judgment resulting in the (appealable, but final with a view to the upcoming trial) invalidation of one of Samsung's patents.
The parties are allowed take five patent claims each to trial. After the September narrowing, they both would have been free to choose one claim per patent, i.e., to maximize the number of different patents-in-suit, which would have been the logical choice for both. After summary judgment, only Apple was still able to do so. Samsung, however, had only four patents left. The logical choice for it was (and that's the one it made indeed) to take all four different patents to trial, but with the luxury to assert a second claim of one of the four patents (typically not nearly as useful as a whole additional patent, but better than nothing).
In the following section I will list the patent claims chosen for trial; then, the accused products, along with an explanation as to the impact on newer products that are not on the list; and finally I'll discuss a decision by the United States Patent and Trademark Office (USPTO) relating to Apple's auto-complete patent that won't affect the outcome of the spring trial in any way but could lead to further decisions that might be relevant to post-trial proceedings including an appeal.
Asserted patents and patent claims
Apple's asserted patents and patent claims:
U.S. Patent No. 5,946,647: claim 9
("data tapping" patent)
Apple is still trying to salvage some broader claims that were declared invalid by the USPTO.
U.S. Patent No. 6,847,959: claim 25
(Siri-style unified-search patent)
U.S. Patent No. 7,761,414: claim 20
(asynchronous data synchronization)
U.S. Patent No. 8,046,721: claim 8
U.S. Patent No. 8,074,172: claim 18
On summary judgment, this one was already found infringed by Samsung. Further below I'll discuss the ongoing reexamination of this patent by the USPTO.
Samsung's asserted patents and patent claims:
U.S. Patent No. 7,756,087: claim 10
(non-scheduled transmission over enhanced uplink data channel; declaration of standard-essentiality to ETSI in May 2006)
U.S. Patent No. 7,551,596: claim 13
(signaling control information of uplink packet data service; declaration of standard-essentiality to ETSI in May 2010)
U.S. Patent No. 6,226,449: claim 27
(recording and reproducing digital image and speech)
U.S. Patent No. 5,579,239: claims 1 and 15
(remote video transmission system)
Any dismissals will be without prejudice, so the parties could reassert in a future lawsuit any patents and patent claims they dropped. In fact, they still have 14 "back-burner" patents left over from their first California litigation.
Even recently I saw some filings that indicated disagreements between the parties on narrowing with respect to products. We'll see if these final proposals are now mutually acceptable or not.
Samsung products accused by Apple:
Galaxy Note II
Galaxy S II
Galaxy S II Epic 4G Touch
Galaxy S II Skyrocket
Galaxy S III
Galaxy Tab 2 10.1
Apple products accused by Samsung:
iPod Touch (5th generation)
iPod Touch (4th generation)
The parties tried hard to accuse each other's latest and greatest products, but U.S. patent litigation is slow, which is why this 2014 trial will be about 2012 and pre-2012 products. The list of accused products is relevant to two distinct remedies: damages and injunctive relief.
The market has grown, and both parties have grown, since the period of sales at issue in the first trial. In particular, Samsung's sales have increased hugely in recent years. The damages claims should be quite substantial this time around -- though there are no design patents at issue, and those accounted for the greater share of Apple's damages award(s) in the previous case ($929 million in the total of two trials) than the asserted software patents.
The companies can still file follow-on lawsuits to assert the same patents against newer products. Damages awards require a jury trial if at least one of the parties demands it. But the court would recycle some of the work done ahead of an earlier trial involving the same patents (claim construction etc.).
For injunctive relief, a new trial is not necessarily required if new products raise infringement issues involving the same patents. On Monday I explained in detail (in connection with injunction proceedings relating to the first California Apple v. Samsung case) how newer products with infringement patterns that are no more than colorably different from those found in older products would give rise to contempt sanctions even if they have new names, form factors, or new Android versions. Contempt proceedings take place before a judge, not a jury, but a new trial on the merits is needed if a new infringement pattern (even if there still is an infringement) differs significantly from one adjudicated before. There are three outcomes of a contempt proceeding against a new product: a contempt sanction (if the infringement pattern is essentially the same); a finding of non-infringement (i.e., clearance and no sanction); and a finding of a significant difference raising new issues that require a new trial on the merits.
If an injunction is denied over a particular patent, the colorable-difference issue also comes up, but in connection with post-judgment royalties (future damages, basically).
As a result of all of this, it would be mistaken to believe that the spring trial is about obsolete products. On the face of it, that appears to be the case. But that doesn't mean that it won't have serious implications for newer products, including those the parties will release in the months and years ahead.
Samsung reports some (but, for now, very limited) headway for an effort to shoot down Apple's '172 auto-complete patent
Apple is within striking distance of a favorable trial outcome concerning its '172 auto-complete patent, given that Judge Koh already ruled that Samsung infringed it and that juries don't invalidate patents nearly as often as they should (they totally overestimate the significance of a USPTO decision to grant a patent, but the clear-and-convincing evidence standard for invalidation is also too high).
In June 2013 it became known that anonymous reexamination requests had been filed against two Apple patents-in-suit: a missed telephone call management patent that Apple dropped from this case, and the '172 auto-complete patent. Samsung was probably involved with this effort -- and/or maybe Google.
In August 2013, the USPTO granted the reexamination request only in part -- and in a way that would have been useful for Samsung's purposes. But the anonymous requester(s) kept fighting for a more comprehensive review and filed a petition. That petition related to various claims the examiner refused to reexamine, particularly including claim 18, the claim-in-suit. In mid-January, the USPTO published a favorable decision on the petition, holding that the anonymous requester had indeed raised substantial new questions of patentability. This doesn't mean the USPTO now believes the patent is invalid. It merely means that reexamination is now going to take place. It's unlikely that anything spectacular will happen here before the spring trial. But further down the road there could be relevant developments in this reexamination, in which case I'm sure Samsung will notify the court again.
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