[Update] Hours later the court denied Apple's motion for the largest part and requested further briefing regarding a limited part. [/Update]
There's a first fallout from the opening statements made in Apple v. Samsung II yesterday: Apple just brought a "motion for permission to present evidence that Apple practices the '414, '172 and '959 patents and curative instructions".
The short version is this summary of the relief Apple requests:
"Apple seeks an Order permitting Apple to present testimony and evidence demonstrating that Apple has practiced and continues to practice the '414, '172, and '959 patents in order to correct the false impressions created by Samsung’s counsel. Apple also requests that the Court recognize Apple's continuing objection to any further misleading or false statements by Samsung. And Apple asks the Court to issue curative instructions, both now and with the final jury instructions, to curtail the harm and prejudice caused by Samsung’s improper statements to the jury."
I agree with Apple that it should be allowed to present such evidence in light of Samsung's counsel's repeated claim that Apple does not even practice several of the asserted patent claims, though this could (since this would take time, and Samsung's rebuttal would also take time, and Apple's rebuttal of the rebuttal would take time, too) delay the trial by a day or two. Further below I'll share my opinion on the background of this.
It's not unreasonable either for Apple to ask that the jury be told that even if it finds an infringement, Apple won't necessarily obtain a sales ban. The question is just how this should be explained to the jury without prejudicing Samsung. Maybe the court finds a way to strike a balance.
I followed the opening arguments via Twitter and other online media, and either party's counsel said things I considered misleading and prejudicial. I've previously expressed my dislike of Apple's unsubstantiated and unsupported suggestion that it could meritoriously assert ten times as many patents against Samsung. That's what I considered the worst statement in both opening arguments (because it could really lead a jury to render a devastating verdict that is not warranted by what's actually at issue in a given case), but I also think that the claim of Samsung having "copied many many features" is problematic because most features of a smartphone can be implemented in alternative ways to what is covered by a particular patent. I read that Samsung's counsel referred to the price at which a smartphone sells after carrier subsidies (not a big difference in the context of $28,000 per-phone patent royalties because subsidies wouldn't change the picture too much, but still debatable) and mentioned some Apple maps issues in Australia that aren't really related to what's at issue in this trial.
Here's the complete motion Apple filed today (this post continues below the document with further commentary):
Apple's motion quotes the following passage from a pre-trial order by Judge Koh (emphasis removed):
"Apple may present the invention story of [the '414, '172, and '959] patents, but may not contend that it practices the patents. Apple may not rebut any Samsung contention that Apple products constitute an acceptable non-infringing alternative to the '414, '172, or '959 Patents by contending that Apple practices an unasserted or asserted claim of the '414, '172, or '959 Patents."
Apple complied with this and "expected that Samsung would also comply with the Court's order during trial and would state, at most, that Apple does not contend that it practices the '414, '172, and '959 patents or that the jury would see no evidence that Apple practices those patents". But "not to contend" that something is the case is not the same as admitting that something is not the case.
Only the fact that Apple does not claim to practice those claims was referred to in the preliminary jury instructions, and then Samsung's counsel describes this as Apple "admit[ting] that three of the five patent claims that it is suing on were not in that iPhone and have never been in any iPhone since".
It appears reasonable to me that Apple would want to address this representation by Samsung's counsel. At the same time I wish something could be done about Apple's "50 patents" allegation.
At this point I don't want to take positions on whether Apple practices the '414 synchronization and '172 autocomplete patents (or did so in the past). There are two things I'd like to mention about the '959 unified search patent, however:
Apple filed the related patent application in 2000, and ten years later acquired Siri Inc., an app development company. While there's obviously a difference between patents and implementation, the ten-year span between the filing of the patent application and the acquisition of another company that had a related product does show a certain disconnect between the patent on the one hand and Siri on the other hand. This doesn't mean that it's impossible that Siri might practice the patent, but this is not the kind of case in which a company files for a patent on a technology and then implements it relatively soon. In this case, someone else implemented something, and Apple now claims that everyone else who does something similar infringes on a patent that the Siri developers presumably didn't even know.
Apple also takes issue -- and this is additionally related to the question of whether Apple practices the '959 patent -- with a reference by Samsung's counsel to the Federal Circuit's Galaxy Nexus decision reversing a preliminary injunction:
"What happened is they sued on a different search patent. They sued on the '604 patent, not this one, and they went to court and they got an injunction against our doing this type of search. We didn't think it was right. We didn't agree, but we complied. And so we – it wasn't hard to do. I mean, we turned that off. We appealed it, and the court of appeals reversed and said we were right, Apple was wrong, we're entitled to do it, and then dropped that patent."
The word "entitled" indeed overstates slightly what the appeals court decided. For example, the Federal Circuit did not find Samsung licensed to the technology at issue. But it held (beyond the finding that Apple was not entitled to injunctive relief) that Apple was, after a modified claim construction, not likely to succeed on the merits of its infringement claim. Therefore, Samsung's decision to turn the feature on again was not an act of reckless infringement. I believe there was a good-faith basis for Samsung to provide that feature at that stage.
Apple points out that the '959 patent it's asserting in this case is different from the '604 patent that was at issue at the preliminary injunction stage. Theoretically it would be possible for Apple to obtain an injunction over the '959 patent even though it's from the same patent family as the '604 patent. But the '604 history can't just be ignored when discussing Samsung's temporary deactivation of unified search.
Also, the '604 patent was apparently Apple's first choice: that's why it relied on it in its preliminary injunction motion. The '959 patent only took center stage after Apple didn't succeed, at the preliminary injunction stage, with the '604 patent, not only on the question of whether there should be a sales ban but also because of the Federal Circuit's narrowing claim construction.
Apple wants the jury to be instructed that "[t]he court of appeals has not considered or ruled on whether Samsung infringes the '959 patent", and that this is for the jury to decide. That part seems reasonable to me.
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