While I found Apple's motion to present evidence regarding its practicing some of the asserted patents and for curative instructions largely reasonable, Judge Koh has largely denied it and requested further briefing on a limited part of the issue that presumably won't help Apple.
I don't think this outcome is the right one because the result is that Samsung said Apple conceded something that it didn't concede to the extent Samsung said it did. In that regard, I side with Apple. But on the very important non-legal question in the public debate of whether it's appropriate for Apple to accuse Samsung of "copying", the motion practice on this issue has reaffirmed my belief that "copying" is absolutely not the right word. Apple had stipulated that Apple's products don't practice the asserted claims of the '959, '414 and '172 patents. Here's the related sentence from the "undisputed facts" section of the parties' joint pretrial statement (click on the image to enlarge):
If Samsung had made a direct copy of Apple's features, then Apple would not have to sue Samsung over claims it doesn't even practice itself.
It would be an exaggeration to say that asserting patent claims it doesn't even practice itself makes Apple a "patent troll", but it's accurate to say that Apple is a "non-practicing entity" with respect to at least three of the patent claims-in-suit (the parties disagree on the other two). It won't help Apple later if it pursues an injunction. And it's definitely another blow to the credibility of Apple's allegations of "copying". In a widely-read blog post I yesterday discussed a certain "sense of entitlement" in the Apple camp that goes way beyond the scope and strength of Apple's intellectual property. I will continue to support Apple where I believe it has a point, and despite Judge Koh's denial of its motion, I still think it should have been allowed to make a we-do-practice argument based on unasserted patent claims. But with the exception of design patents (a category of intellectual property rights that is not at issue in this trial) and, so far, only one feature (rubber-banding), I can't find any evidence or rulings in all those cases I watch that would support Apple's claims that Samsung has "copied" Apple. I honestly can't. Inspiration isn't copying.
I'm sorry if conclusions like that have people "including executives at Apple headquarters" puzzled, but they've now had plenty of time -- more than four years of suing Android device makers and almost exactly three years of suing Samsung -- to deliver proof of "copying" that goes beyond design patents (something that happened years ago and hasn't happened since as far as I can see) and just one feature (rubber-banding). During all of that time, the Android camp actually proved that it was able to work around all Apple patents while maintaining, with the sole exception of rubber-banding, essentially or even precisely the same functionality from an end user perspective.
Slide-to-unlock, which I've previously described as a patent family that is symptomatic of Apple's problems, is a perfect example of this: for experienced users, many Android devices now actually have better (more flexible) slide-to-unlock mechanisms in place than Apple's products. It also says something that even the vaunted "Steve Jobs patent" (that's what Apple's lawyers wanted to to call it at a Chicago trial against Motorola) is being enforced against Samsung in a legal sense (through an ITC import ban) but no end user appears to have noticed any change and Samsung continues to do well in the U.S. market. If even marquee patents like slide-to-unlock and the "Steve Jobs patent" can be worked around in ways that don't adversely affect the functionality and popularity of Samsung's products, they don't support Apple's claims of copying. If even such star patents don't support Apple's allegations of copying, what else (apart from rubber-banding and, years ago, design patents) ever will?
Getting back to the procedural issue in the ongoing trial, here's the order (this post continues below the document):
In its response to Apple's motion, Samsung pointed to two prior occasions on which Apple elected to waive the kind of argument it wants to make now about asserting certain claims, but all of that related only to patent claims not asserted in this trial. There still is a possibility of Apple arguing to the jury that it practices the asserted claims of the '414, '172 and '959 patents, but Apple previously said that it doesn't practice those particular claims, so it's doubtful that further briefing will result in anything that has impact in the courtroom. In fact, Apple stipulated (as I showed further above) that "Apple's products do not practice claim 25 of the '959 patent, claim 20 of the '414 patent, or claim 18 of the '172 patent".
I can now see, based on the record including quotes from hearing transcripts, why Judge Koh largely rejected Apple's motion (and so quickly). The order itself does not cite any reasons, but Samsung's response does. It's like "you make your bed and you lie in it". It's all related to the case management order that the parties should take only a maximum of five patent claims each to this trial. The case narrowing order could not have precluded anyone from bringing non-duplicative claims, so, in light of the Katz case law, it was a voluntary decision on Apple's part in order to go to trial more quickly than otherwise (I explained this in a recent post). When presented with the choice to drop claims it's asserting against Samsung or to make a "we practice our patents" kind of argument based on additional claims (of the same patents), Apple chose to focus on its offensive case. Samsung cites to hearing transcripts that prove Apple knew and accepted that Samsung would say it does not practice its claims, but still preferred to focus on its offensive assertions.
Apple may still be allowed, after further briefing, to make a we-do-practice argument, but only based on the same claims it's asserting against Samsung, and I'm skeptical that this will help Apple. It wanted to base its we-do-practice argument on different claims. Apple wanted to say it practices claim 34 of the '959 patent, claim 27 of the '172 patent and claim 11 of the '414 patent, but it's asserting claims 25, 8, and 18 (respectively) against Samsung.
For example, at a March 5 hearing, counsel for Apple said this:
"They can argue, if you rule that, they can argue that Apple practices no claim in all these patents, and, therefore, that the iPhone is a noninfringing alternative, if that's your ruling, we will abide by it, and we would like to stick with our five claims."
Based on this, Apple is now limited to its five asserted claims if it wants to counter Samsung's argument.
While Judge Koh and Samsung have a point from a "you make your bed and you lie in it" perspective, this is a case in which I think a court was too strict and basically took advantage, for the purpose of case narrowing, of a plaintiff's desire to take a case to trial quickly. I observed the same in Oracle v. Google, where Judge Alsup also wrought some procedural concessions from Oracle (withdrawal of patents with prejudice; something Judge Koh never required Apple or Samsung to do) because Oracle wanted to get quickly to a decision while Google wanted to delay.
If Apple had argued that it practices additional claims that are not asserted here, then Samsung would have had to be allowed to challenge the validity of those claims as well. And on that basis Judge Koh told Apple it could not use an unasserted claim "as a sword and a shield and say we are shielding it from any validity challenge, but we're using it as a sword to prevent you from using it as a non-infringing alternative". There is no doubt that the court saved a significant amount of time by precluding Apple from relying on unasserted claims, but it is an odd situation that, as a result of those judge-wrought concessions, Samsung was allowed to make the broad representation that Apple admits it does not practice "the asserted patents", and Apple is unable to counter a representation that goes beyond what Apple believes.
Samsung says that its counsel stated at the beginning that this related to claims, not entire patents, and subsequently just referred to "patents", which does make a difference.
I still think it was not accurate to say that Apple conceded it doesn't practice those patents in their entirety when it merely promised not to rely on unasserted claims. This is not the right outcome.
But apart from what arguments should or should not be allowed, or what evidence should or should not be presented, this story once again calls into question Apple's repeated claims of "copying" of features by Samsung.
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