Wednesday, April 30, 2014

Workarounds: When will the first mass media report on Apple v. Samsung II discuss the real issue?

The jury began its deliberations yesterday, and since it has not handed down a verdict on the same day, there is hope that it may be more thoughtful (or, at least, less thoughtless) than the 2012 jury.

Several reporters who watched the Apple v. Samsung II trial in San Jose, California provided excellent Twitter coverage right out of the courtroom under the #appsung hashtag (the #icourt hashtag, which was more popular during the 2012 trial, has become displaced). I want to thank them for their tweets, also on behalf of those of my Twitter followers who appreciated the #appsung tweets I retweeted. Real-time coverage was great, and asynchronous web reports also provided a really good account of what was said inside the courtroom, but -- with the greatest respect -- the articles on the trial that I saw could have done more to connect the dots between the courtroom action and some other important stuff that was, for various reasons including legal restrictions, not discussed in court, yet could have been easily identified by reporters.

I'll start with a simple example before I address a more fundamental issue. If you run a Google News search now for the combination of the keywords "Apple", "Samsung", and "reexamination", you will not find any article that discusses the reexamination history of two of Apple's five patents-in-suit (the '647 "quick links" and '172 "autocomplete" patents). Reexaminations by the United States Patent and Trademark Office do, however, result in plenty of publicly-accessible documents, and since I reported on those issues here on this blog, one didn't have to go the USPTO's Public Pair (Patent Application Information Retrieval) web portal to find out about this. In case of the '647 patent, it's less of an issue because Apple's ongoing appeal relates to other claims than the one asserted in California. But in the case of the '172 patent, it's absolutely essential information that the USPTO itself now has doubts about the validity of (among many others) the claim of this patent that Apple is asserting.

The jury was not told of the fact that the USPTO recognizes the existence of a substantial new question for the patentability of the asserted '172 claim because this is not a final decision, so this is considered evidence that would cause too much prejudice to Apple's case because the jury might not understand that this is not a final invalidity ruling. However, no such restrictions apply to the media covering the trial. Judge Koh found, on summary judgment, that this patent had been infringed. This means invalidity is Samsung's sole remaining defense. The general public, regardless of questionable rules that require a court to withhold key facts from a jury, has the right to know.

The most important objective, besides reciting what is said by whom inside the courtroom, should be to help the outside world understand what the case is really about, and what practical implications for companies and consumers its outcome may have. There is often a discrepancy between the two, and there is precedent for this in connection with the Apple-Samsung dispute:

When Apple obtained from the ITC (a U.S. government agency with quasijudicial competencies) a U.S. import ban against Samsung over the '949 "Steve Jobs patent" and a hardware patent in August 2013, numerous media reported. But few gave attention to the fact that the ITC had simultaneously cleared various designarounds (workarounds) presented by Samsung: noninfringing alternatives. The worst part here is -- a dramatic #fail in Twitter lingo -- that to the best of my knowledge there was never any mass media report that looked at the actual, practical effects of the import ban, which would have been possible for more than six months (!) now as it entered into effect in early October 2013.

The fact of the matter is that Apple's widely-reported U.S. import ban has had absolutely no business implications. No consumer has noticed any change. No product has disappeared from the marketplace as a result of the ruling ahead of the end of its natural lifecycle. No sales that Samsung could otherwise have made in the U.S. were lost.

It would have been difficult to predict this outcome with certainty when the ruling came down. The ITC's clearance of Samsung's workarounds was not very detailed (because Apple didn't bring specific infringement allegations against the workarounds but merely wanted the ITC to turn a blind eye to them at that procedural stage). But after the import ban entered into force in early October 2013, any effects would have had to become identifiable -- at the latest, whenever Samsung launched new products (ITC import bans are not limited to the products accused in an investigation).

It should have given a lot more people pause -- and was not the only reason but the most important reason for which I realized during the first quarter of this year that I had overestimated the leverage Apple could ever get out of its patent infringement suits against Android devices -- that even the formal enforcement of the patent Apple's own lawyers in the "Posner case" wanted to call the "Jobs patent" had no impact. None whatsoever.

History could now repeat itself in connection with the Apple v. Samsung II trial. What the parties' lawyers were allowed to discuss with the jury in the courtroom this month was only a subset of the real issues. Whatever the jury decides will be only a milestone but not the end of the proceedings.

The 2012 verdict has not had any business impact yet either: no money has changed hands yet (pending an appeal), and no injunction was granted, and if one had been ordered and had entered into force, then we would all have had to look at how good Samsung's workarounds were. For rubberbanding, the workaround was basically a "throwout", but this feature alone (the only one of which Apple has so far established its ownership in court) won't result in a global settlement. For the tap-to-zoom-and-navigate feature, the workaround is simply to leave out the "and navigate" part, which doesn't really matter. For the '915 pinch-to-zoom API patent, I had doubts about Samsung's alleged workaround, but this will probably never be clarified because the USPTO has since rejected the patent (Apple is still appealing that one and it will take time for reexamination to play out with all the appeals, but in the meantime Samsung's appeal of the "final judgment" in the first case will be adjudicated and is reasonably likely to result in a declaration of invalidity of the asserted claim of the '915 patent).

Back from 2012 to 2014. The whole jury trial, despite Apple's out-of-this-world damages claim, is not going to change anything in strategic terms unless Samsung is ultimately forced to modify its products in ways that reduce consumer demand. The question of which workarounds are legally above-board and commercially viable without any significant effect on demand is a rather complicated technical and legal one. I don't mean to blame mass media for not having a definitive answer to this, though to me after all of my patent litigation monitoring it's clear that it just take some "copying" on Samsung's part to deal with whatever issue Apple may prevail on in this case. But I do believe it's necessary for the media to pay attention to the workaround question -- one can raise and discuss a question without claiming to have a definitive answer -- after the verdict comes down, should there be any liability findings.

Those reporting and/or commenting on the verdict should keep a few workaround-related facts in mind that can be reasonably easily researched and understood:

  • The verdict form itself reflects the fact that there are products in this case against which Apple is not even asserting its slide-to-unlock patent, such as the Note 2. Therefore, Samsung just needs to "copy" its own alternative slide-to-unlock implementations from those newer products to be legally safe. And there is no sign that those products were less in demand than the earlier ones that the jury might (without necessarily being unreasonable) find to have infringed the asserted patent claim a long time ago.

    (Should Apple prevail on slide-to-unlock to any extent, this would contrast with the fact that all ten European judges who looked at the European member of the same patent family did not deem the claimed invention patentworthy. But reports on U.S. lawsuits and rulings rarely ever refer to related international cases, so I don't have much hope that this fact would be highlighted anywhere else than on this blog.)

  • On Friday, it didn't take long (after this blog was first to highlight the issue because I had been following the "Posner case" in detail over the years) before the appeals court ruling affirming Judge Posner's claim construction of the '647 patent was discussed everywhere, and that was good. Considering what a mess the Monday testimony and lawyer argument on the effect of the new claim construction was (because, frankly, both parties had previously hedged their bets as they didn't know what the appeals court would do), the jury is probably now very confused about it (and Judge Koh did the right thing by denying both parties' motions for judgment as a matter of law since there are reasonable arguments for and against infringement, for and against validity). But there can be no confusion about the fact that Judge Posner himself had outlined a workaround for the '647 patent based on his claim construction, which now also governs the California case:

    "[...] inventing around the '647 patent by reprogramming Motorola's smartphones to avoid at least one claim limitation, for example by simply creating copies of the code that performs structure detection and linking for each particular program rather than using a common code module for all programs, because if there is no common code there is no 'analyzer server,' as required by the patent claim."

  • Apple itself has not claimed that its more recent products practice the other three asserted patent claims. It based its "practice" argument completely on past products, partly on prototypes that were never actually sold. I very much like the headline of this CNET article by Shara Tibken: "Samsung to jury: You can't copy iPhone features that aren't in the iPhone" That is a key message by Samsung based on everything I read about the trial and in the build-up to it. Copying is, however, just a question of what was done in the past. With a view to the future, the fact Apple itself does not even claim that its current products practice three of the asserted claims also means that Apple's own products provide blueprints for workarounds that are doing very well in the U.S. market.

Only because the nature of this lawsuit is backwards-oriented -- it's not even about last year's products but even older ones --, those who report and comment on the case and its implications don't have to be completely backwards-oriented, too. The real issue in this rapidly-evolving market is what effects the case will have going forward. The name of the game is whether a patent claim that proves valid and is held to have been infringed at some point in the past really gives its owner any strategic leverage.

Remember that here is an ITC import ban in force and effect over the vaunted "Steve Jobs patent", and so far its business impact has been zero (and Friday's appeals court ruling involving this patent in connection with another case does not provide any indication that the patent could not be worked around in the way in which Samsung has already worked around it). With the benefit of 2020 hindsight, there was much ado about nothing when the decision came down. This blog at least pointed out (in its headline, about 15 minutes after the ITC published its ruling) that workarounds were the key question.

No report on the upcoming jury verdict will be incorrect per se if it just talks about whatever findings of past infringement -- over pre-2013 products -- there may be. Workarounds are nevertheless the name of the game. For definitive clarity on workarounds, there must be injunctive relief (such as in the ITC case), it must be actually enforced, products must enter the market after enforcement begins, and there must not be an enforcement proceeding (in federal court, that would usually start with a contempt motion) that casts doubt on whether a workaround that is sold is legally acceptable (or, if there is an enforcement dispute, it must be adjudicated). That will take time. But the question of whether the verdict matters is a legitimate one the moment it comes down. And that question necessarily involves workarounds.

Even the reasonableness of a damages award cannot be assessed without looking at viable workarounds. If a patent can be worked around in ways that still allow a defendant to provide the relevant feature to consumers, it's worth much less than whatever responses a study, such as the Dr. Hauser conjoint survey, may elicit from respondents based on the alleged desirability of a particular feature. Ownership of a patent does not necessarily mean ownership of any particular feature. If that difference didn't exist, the Apple v. Samsung II trial would never have had to be held because Apple would have had enough leverage (possibly even prior to having to bring any litigation) long ago.

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