Wednesday, December 30, 2015

Google switches to open-source license for Java APIs in Android: will this limit Oracle's case to past damages?

I've seen comments on Internet discussion boards according to which the long-running Oracle v. Google copyright infringement dispute has been practically settled, given that Google has just confirmed to VentureBeat that its upcoming release of Android (Android N) will come with Java language libraries that follow "an OpenJDK-based approach." The OpenJDK is licensed by Oracle under the GPLv2 with a so-called Classpath Exception.

It's too early to agree with those who believe it's a virtual settlement (except that damages for past infringement might still have to be determined in court). I do remember that Oracle's lawyers released a statement ahead of the 2012 trial in which they basically said that Google had two options for using Java in Android--a proprietary license or using it on open source terms with the obligation to contribute back to the open source community--but, by simply using Java without either kind of license, Google had committed copyright infringement. That was more than three-and-a-half years ago. Why wouldn't Google have taken this step long before, if such a seemingly simple solution to the legal problem as OpenJDK had existed all along?

There are two possibilities:

  • It could be that Google is now (that Android has unstoppable momentum) indeed fine with GPL'ing all of Android and just wanted to avoid it earlier on. Android already uses Linux, which is available under only the GPL (no proprietary option there). Now it's also going to use the OpenJDK libraries. So maybe Google doesn't care about applying copyleft--the rule that derivative works incorporating GPL-licensed code must also be published under the GPL (or they must not be published at all)--to Android as a whole. It previously preferred the Apache Software License, which gave Google and its partners more flexibility in terms of throwing closed-source components into the Android mix.

  • Without knowing how Oracle views this and what Oracle will do, I consider a second possibility no less likely than the first one. It could be that Google still isn't going to put Android as a whole under the GPL. Maybe Google interprets the copyleft rule in the GPL (in this case, in conjunction with the Classpath Exception) in a way that differs from the way Oracle would interpret it. Maybe Google believes it can just replace those Java APIs with something based on the OpenJDK but still doesn't have to put any additional components of Android under the GPL. In that case, Oracle would likely disagree. And that disagreement could then give rise to another lawsuit.

The first possibility is, for now, a possibility. Maybe Oracle will look at Android N (when it's released) and say: this is in compliance with our rules, we just want to get damages for past infringement (including older Android versions that are still out there).

The second possibility, however, would lead to the most significant and dramatic GPL enforcement litigation in history. With the greatest respect for what the likes of Harald Welte and the Software Freedom Conservancy have done on that front, a lawsuit with which Oracle would seek to force Google to release the whole of Android under the GPL would dwarf everything that has ever been done to enforce the GPL.

As a litigation-focused blogger, I can't resist from speculating about what this scenario would mean in procedural terms.

So far, GPL enforcement lawsuits have typically been settled. To the extent that judicial decisions have come down, there is no indication that one can successfully seek what is called specific performance and have a court of law order a GPL infringer to release something under the GPL. It appears that the original right holder can at best obtain an injunction against continuing to distribute the derivative work without making it available on GPL terms.

Let's assume for a moment that Oracle defeats Google's "fair use" defense at next year's trial. It could then seek an injunction against further use of the proprietary Java API declaring code. If Judge Alsup and/or the appeals court agreed, Google would then be barred from continuing to distribute the proprietary Java APIs as part of Android unless it takes a license from Oracle.

But Google would then say: that five-year-old lawsuit is about the proprietary Java APIs, and new Android versions follow what Google now calls its "OpenJDK-based approach."

In that case, Oracle might argue that the injunction still applies, and seek sanctions against Google. So there would be an enforcement dispute.

If Oracle prevailed on the enforcement question, the whole OpenJDK thing wouldn't have helped Google in the end.

However, in order to enforce an injunction arising from the five-year-old lawsuit against Android N, Oracle would have to convince the district court (and/or the appeals court) that this is really an issue that was decided in the original lawsuit. Google, of course, would argue that the copyleft implications of its use of OpenJDK are a completely different matter. I don't want to state a position on this yet, but if the dispute reaches this presently-hypothetical point, I will say what I think (based on the facts that will be on the table at that point, and one of those facts would be the exact wording of the hypothetical injunction Oracle would have won in the meantime).

Without stating a position on a combination of hypothetical events, I think it's not too speculative to say that a not entirely impossible outcome of such an enforcement dispute would be that the court(s) would say: sorry, Google's use of OpenJDK raises one or more new legal questions that must firstly be decided on the merits. In that case, Oracle would have to bring a second complaint against Google, which would be OpenJDK-centric. All of this would take a long time--also including any appeals--to be resolved.

I don't think it's purely coincidental that Google is going down the OpenJDK avenue just in time before Oracle has its next opportunity to obtain an injunction, which will be after the upcoming trial.

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Thursday, December 24, 2015

Apple wants a $180 million Christmas present from Samsung, seeks supplemental damages in patent case

While Apple is usually the net payer when it comes to patents (most recently vis-à-vis Ericsson), it has received $548 million from Samsung this month, though a reimbursement may be demanded later. Samsung might base a future reimbursement claim on its design patent-related appeal to the Supreme Court (if that one succeeds, which would not be a huge surprise) and/or on the fact that the United States Patent and Trademark Office has held the '915 pinch-to-zoom API-related patent invalid (a decision Apple is appealing to the Federal Circuit) and/or the increasingly likely invalidation of the D'677 iPhone design patent.

But not enough: yesterday, Apple brought a motion for supplemental damages and prejudgment interest. Most of the documents are hidden from the general public for now, but a declaration by Apple's damages expert Julie Davis was published (this post continues below the document):

15-12-23 Davis Declaration ISO Apple Motion by Florian Mueller

According to the Davis declaration, Apple wants supplemental damages (damages for infringements after the cutoff date of the jury trial) amounting to $178.7 million and prejudgment interest totalin $1.2 million, i.e., $180 million in total. Samsung is not going to fork that money over without a fight. The amount seems high to me given that the products at issue in this case (the first litigation between the two companies) were already somewhat outdated by the time of the 2012 trial.

While I strongly disagree with Apple's enforcement of patents held invalid (and also with its position that an unapportioned disgorgement of profits is the appropriate remedy for design patent infringement), yesterday's motion could not be accurately described as adding insult to injury: it's merely a logical step of the overall enforcement efforts Apple has started. It does make the underlying issues economically more significant, but it's just more of the same in terms of Apple's attitude. If Apple had decided not to bring this motion (for which it had sought permission), it would have had to backtrack. Again, I think it should have backtracked because no one in this industry, including Apple, would want invalid patents to be enforceable in any way, but a withdrawal is something unrealistic to hope or ask for at this stage.

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Wednesday, December 16, 2015

Federal Circuit denies injunction rehearing: will Apple v. Samsung become the next eBay v. MercExchange?

By sharply disagreeing with the majority of the panel ("This is not a close case."), Federal Circuit Chief Judge Sharon Prost practically invited Samsung to file a petition for a rehearing on Apple's injunction appeal. Samsung indeed filed the petition and received some impressive support from industry, NGOs, and academia. I actually thought a rehearing en banc (full-court review) was fairly likely to be granted, but no: today the notoriously patentee-friendly Federal Circuit merely modified its opinion slightly and denied a rehearing en banc.

The modification now establishes the following rule:

"Apple did [...] show that 'a patented feature is one of several features that cause consumers to make their purchasing decisions.' [...] We conclude that this factor weighs in favor of granting Apple's injunction."

The Federal Circuit has withdrawn the original decision and replaced it with the modified one (which also includes an amended dissent). Here's how Chief Judge Prost criticizes this modification:

"Perhaps recognizing its error, the majority reissued its opinion in this case to remove the implication that even an insignificant connection might be enough to satisfy the causal nexus requirement. While this change is a more accurate reflection of our law, it does not obviate the central problem with the majority's conclusion in this case. As we stated in Apple III, '[t]he question becomes one of degree, to be evaluated by the district court.' [...] Here, the district court weighed the evidence and found it lacking."

The amazing part here is "even an insignificant connection." This is just so inconsistent (of the panel majority, not of Chief Judge Prost) with the Supreme Court's eBay v. MercExchange ruling. Just like Chief Judge Prost's original dissent invited Samsung to request a rehearing, today's modified opinion--especially with the modified dissent--is almost a cert petition (request for Supreme Court review) in and of itself.

Just the day before yesterday, Samsung filed a petition for writ of certiorari in connection with design patents (on a couple of closely related issues on which Chief Judge Prost agrees with Apple, while she still believes Apple simply has no case for an injunction). Could today's denial of a rehearing lead to the next cert petition? I don't know what Samsung plans to do, but I hope that it will give it a try.

I don't think there's been a similarly splendid opportunity for the Supreme Court to provide some clarifications again on patent injunctions since eBay v. MercExchange. One might even argue that the Supreme Court's great work on eBay would have been in vain if the Federal Circuit's Apple v. Samsung ruling was allowed to stand.

Presumably it's not an easy decision for Samsung to ask the Supreme Court for help twice in a short time frame and in connection with the same dispute (though these are two different cases, one of which was filed about a year before the other).

The organizations and individuals who supported Samsung's petition for a rehearing with amicus curiae briefs would likely be interested in a cert petition, given the enormous importance of the issue. And at that stage, some others might also be prepared to chime in.

The first informal amicus curiae brief in support of a petition for writ of certiorari already exists: Chief Judge Prost's dissent.

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Monday, December 14, 2015

Apple v. Samsung: petition for Supreme Court to take first look at design patent case in 122 years

As it announced in August, Samsung has filed a petition for writ of certiorari (request for Supreme Court review) today in its almost five-year-old litigation with Apple. While it's statistically very hard to get the attention of the top U.S. court, I actually think the design patent-related issues Samsung's lawyers (of the Quinn Emanuel firm) raise here are extraordinarily certworthy:

  1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

  2. Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?

The first question is about properly defining the scope of a design patent. If functional elements such as rounded corners (everyone carrying a phone in a pocket would agree that they have a practical benefit) were deemed to be "owned" by a design patent holder, juries could easily identify "infringements" where there aren't any, or they could consider design patents valid when the only relevant characteristics--the ornamental features--are not new. In other words, design patents would attain unreasonable strength.

The second question relates to the determination of damages. In Apple v. Samsung, the California jury was told that Apple was entitled to an unapportioned disgorgement of whatever profits Samsung made with products considered to infringe one or more Apple design patents. The Computer & Communications Industry Association as well as 27 law professors, among them three scholars who supported Apple's positions on FRAND licensing of standard-essential patents and a law professor who previously studied art and design and is now particularly interested in design patents, asked the Federal Circuit to ensure reasonableness in design patent damages. So did Google, HP, Facebook and others, who warned that a company could lose its entire profits over a design patent covering a single icon. But the appeals court claimed to have no choice under the law than to side with Apple.

There are two things to consider when reading Samsung's cert petition and thinking about its prospects:

  • Fate has it that Samsung is now the petitioner and that Apple will oppose. Apple simply wants to collect many hundreds of millions of dollars (in pretrial and supplemental damages) and hopes to have leverage to achieve a settlement with Samsung on its terms. If Apple's shoe were on the other foot and Samsung had prevailed on a design patent (if it had, as it did not, asserted one in its counterclaims), or if Apple faced this issue in a dispute with anyone else (such as a patent troll), there isn't even the slightest doubt that the world's most profitable company would now be doing the same thing.

    Even some people who are Apple's allies on other issues can't support its positions here with a straight face. I mentioned above that three law professors who had filed an amicus brief in support of Apple against Motorola (on SEPs) filed one in support of Samsung's position in this case. And even a mere blogger like me just couldn't support Apple on this one. Generally speaking, I have disagreed with both Apple and Samsung on their offensive cases and agreed with them on their key positions as defendants. In Samsung's case I took a critical position right away because its pursuit of injunctive relief over SEPs had me concerned; in Apple's case I used to be somewhat sympathetic for a while but the longer it took and the more apparent the shortcomings of Apple's patents as well as Apple's positions on remedies became, the more I spoke out in favor of the defendant's positions--as I do in connection with Ericsson v. Apple.

  • At this stage, it's not about who's right or wrong. It's only about whether the legal questions raised merit Supreme Court review, which has legal as well as economic implications.

    If the Supreme Court denied certiorari, the Federal Circuit ruling would be the last word on the issue, and as a result, design patents would be stronger than they should be and give their holders leverage beyond their reasonable value. A patent troll might acquire a design patent and sue a company like Google or Facebook--or Apple--for 100% of its profits. Worse still, and as Samsung's petition explains: the next patentee with a different design patent that is also a tiny part of a product could ask for the same. And so could potentially thousands of design patent holders, driving even the healthiest company into bankruptcy in such a scenario. If this here wasn't an issue of major importance to the U.S. economy, what would be?

There are strong and compelling arguments and interesting facts in all parts of today's cert petition, but they didn't save the best for last. Instead, the very first paragraph of the introductory section stresses that the case law surrounding U.S. design patents needs to be adjusted in the 21st century because of how products have changed since the late 19th century:

"[The Supreme Court] has decided many utility-patent cases in recent terms, but has not reviewed a design-patent case in more than 120 years. Late nineteenth-century [Supreme Court] cases considered design patents on such products as a spoon handle [1871], a carpet [188], a saddle [1893], and a rug [1894]. [...]

[...] A patented design may be the essential feature of a spoon or a rug. But the same is not true of smartphones, which contain countless other features that give them remarkable functionality wholly unrelated to their design. By combining a cellphone and a computer, a smartphone is a miniature internet browser, digital camera, video recorder, GPS navigator, music player, game station, word processor, movie player and much more."

On page 27 of the petition I found an argument that was exactly what I felt when I saw the Federal Circuit opinion on unapportioned disgorgement:

"The [appeals] court provided no basis for [that] interpretation, much less the strong justification needed where interpretation of a statute produces absurd results."

I mean, isn't that what judges are for? Interpreting the law reasonably. Identifying ridiculous results. I don't mean to argue that judges should be lawmakers. But when a law is very old and the world has moved on, when the products that lawmakers had in mind when they wrote and passed the law are very different from the products at issue in a case like Apple v. Samsung, then there must be a way to arrive at the result that the same lawmakers would have intended if they had known what was going to happen over a century later.

On page 31, absurdity is discussed again:

"As noted, the Federal Circuit's contrary interpretation of Section 289 produces absurd and anomalous results. The Federal Circuit's holding would require awarding Apple all of Samsung's profits for sales of a smartphone containing any Apple design patent, even a trivial one. [a footnote then points to an actual Apple design patent of that kind, which basically covers a musical not in a circle and also had the Patently-O blog stunned] And under this holding, profits on an entire car--or even an eighteen-wheel tractor trailer--must be awarded based on an undetachable infringing cup holder."

The petition then goes on to give examples of multiple disgorgements of total profits. Two easy-to-understand examples:

"[A] boat manufacturer whose boat infringed separately owned windshield, rooftop and seat designs, or a shoemaker that infringed separately owned design patents for the sole, heel and lace. Even if the first such award were deemed to have exhausted all profits, and the second and third patent holders in the race to the courthouse could obtain only a reasonable royalty, the infringer would still have to pay more than its full profits. Congress could not have intended such absurd results."

Actually, I think the petition even understates the potential scope of the problem. There aren't just "thousands" of designs in modern high-tech products that could infringe a design patent. There could be tens or even hundreds of thousands. If you think of all the apps preinstalled on a smartphone, and consider that each icon or even a part of an icon, each screen or even part of a screen, could be covered by a design patent, then the possibilities--in a negative sense--are pretty limitless.

I'm going to talk about this cert process more in the weeks and months ahead. I believe Samsung will get a lot of support from amici curiae, presumably even more than it did in the Federal Circuit proceedings. Apple will also get some support but hardly any from other information and communications technology companies. Still, there will be letters by "friends of the court" to talk about.

For now, I just wanted to highlight a few more things that I found interesting in Samsung's petition (and that one might easily overlook):

  • I agree with the warning that the Federal Circuit's ruling, if allowed to stand, would turn design patents into "a weapon to take profits from others, even where those profits are attributable to their own innovations that have nothing to do with the patentee's ornamental design."

  • It's an interesting fact that the Federal Circuit threw out the trade dress-related part of the decision in Apple's favor because of the functional aspects of the relevant trade dress, but allowed the design patent part to stand, though there is hardly a difference between what both types of intellectual property rights were meant to cover in this case.

  • While design patents and utility patents are different, the petition does make some interesting references to Bilski, a Supreme Court decision on patent-(in)eligible subject matter.

  • Samsung's lawyers draw analogies to the limits imposed on the scope of, and the damages for infringing, other intellectual property rights such as trademarks and copyright.

  • At first sight (and I'll think about this some more), Samsung's argument on disgorgement appears to put the definition of "article of manufacture" front and center, which was at the heart of CCIA's amicus brief mentioned further above.

  • Circuit conflicts are not as key for patent-related cert petitions as for most other cases, given that the Federal Circuit is now the only circuit to hear U.S. patent appeals, but still, Samsung's lawyers cite some old decisions by various circuits that are, as far as I can see, rather different from the Federal Circuit's position on unapportioned disgorgement.

Finally, here's the a copy of the petition (as uploaded to Scribd by Re/code's Ina Fried):

Samsung vs Apple - Samsung's Appeal to the Supreme Court by inafried

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Thursday, December 10, 2015

Why would a patent office be afraid of bloggers? Only if it has something to hide. Like the EPO.

Over the years I've learned not to take things personally, but there are situations when it's hard. I did take it personally when I faced a shitstorm in 2012 after a totally erroneous decision by a judge who still doesn't correctly state the law on the copyrightability of declaring API code. And this morning I saw something that is just absurd. I'm talking about the last bullet point in the following quote from the EPO's official allegations against Elizabeth Hardon, a staff union leader they're now trying to fire:

"(1) actively cooperated with the campaign conducted by C [suspended in-house judge] against the EPO, members of the Administrative Council, and individual EPO staff members.

Specifically, the evidence demonstrates that she:

  • discussed with C the strategy for his campaign and provided instructions to him;

  • provided C, on at least one occasion, with non-public contact details for all delegates of the Administrative Council, which C used to send anonymous defamatory email messages;

  • was in personal contact with at least one blogger habitually attacking the EPO, Mr. FM of FOSS Patents, which resulted in the publication on FOSS Patents of attacks regarding alleged corruption of delegates of the Administrative Council;"

First, I don't disclose sources unless they wish to be disclosed. Also, I sometimes get messages from anonymous sources. Therefore, I can neither confirm nor deny any allegations of someone having been in contact with me, regardless of how truthful or untruthful an allegation is. As for "personal contact", I can generally say that no SUEPO (staff union) person has ever met me or even talked to me over the phone--I listened to some of their speeches at demonstrations in Munich, without approaching them. I only talked to two persons at an EPO demo. I asked one guy to let me take a picture of a banner, and I said hello to an EPO in-house judge I happen to know for a reason that has nothing to do with the labor dispute.

Second, I comment on the EPO situation from time to time (not even very frequently), but "habitually attacking the EPO" is really not the way I view it. On one major issue I even agreed with the president of the EPO (though an expert on suicides tends to agree with SUEPO).

Third, regardless of who my sources are, none of my sources even tried to persuade me to allege "corruption of delegates of the Administrative Council [of the European Patent Organization]." The closest thing to corruption--and "closest" is an overstatement--that I wrote about was that the EPO allegedly pays for the visits of its supervisors (especially those from relatively poor countries) to Munich doctors. I wrote about this because I heard it at a SUEPO demo. I remember that Mrs. Hardon was among the speakers, but I also remember with certainty that the thing about medical care was mentioned by a male speaker at a demonstration about a year ago. Apart from that, I merely mentioned that Administrative Council delegates often hope to become EPO president or vice president, and that this ambition appears to prevent at least some of them from doing their supervisory job right.

Actually, it's only after the above reference to "corruption" in an official EPO document that I start to wonder whether the EPO leadership's hypersensitivity may have a factual reason that I don't know about yet.

Getting back to the first point: even if one wanted to assume arguendo that Mrs. Hardon had communicated with me, there wouldn't be anything wrong about it. Managing Intellectual Property magazine put me on their list of the 50 most influential people in IP in five of the last ten years, and Canadian IP lawyers and blogger Barry Sookman once listed FOSS Patents among the top three patent law blogs in the world. SUEPO must have the right to communicate with someone like me, just like BMW or Allianz couldn't prevent their staff representatives from talking to the general press.

The EPO leadership is just paranoid about bloggers who criticize what's wrong with the way that organization is run. But those EPO folks don't appear to understand that they're only making things worse by the day. They threatened legal action on at least four occasions against TechRights author Dr. Roy Schestowitz, who is still the most prolific writer on the EPO labor dispute. Now they blame a staff representative for my commentary without a factual basis.

What do they have to fear? They must have something to hide.

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Thursday, December 3, 2015

Samsung announces payment of $548 million to Apple but reserves right to seek reimbursement

Last month, the United States Court of Appeals for the Federal Circuit denied Samsung's petition for an en banc rehearing on the question of whether Apple could enforce payments involving (among other things) a patent--the '915 pinch-to-zoom API patent--that the USPTO has held invalid. The en banc petition looked like Samsung might further appeal this matter to the Supreme Court. But on Thursday afternoon local California time, Apple and Samsung filed a joint case management statement with the United States District Court for the Northern District of California, in which Samsung says it has "has made arrangements to complete payment to Apple." It is now waiting for Apple's original invoice, and if that payment arrives before the weekend by Korean time, it will send $548 million to Apple by December 14.

So, approximately four months before the fifth anniversary of its original complaint, Apple will physically receive money from Samsung. After years of not getting a cent, more than half a billion dollars is significant. But the case management statement (which for whatever reason I haven't been able to upload to Scribd) indicates that Samsung, while apparently not asking the Supreme Court to look at this right now, does not believe that the funds will necessarily stay on Apple's bank account forever:

"Samsung continues to reserve all rights to obtain reimbursement from Apple and/or payment by Apple of all amounts required to be paid as taxes. [...] Samsung further reserves all rights to reclaim or obtain reimbursement of any judgment amounts paid by Samsung to any entity in the event the partial judgment is reversed, modified, vacated or set aside on appeal or otherwise, including as a result of any proceedings before the USPTO addressing the patents at issue or as a result of any petition for writ of certiorari filed with the Supreme Court. Samsung notes that the Patent Trial and Appeal Board has issued a final decision of invalidity on the '915 Patent, and Apple filed a notice of appeal to the Federal Circuit in the USPTO last week."

Apple writes in its own part of the filing that it "disputes Samsung's asserted rights to reimbursement."

I tend to agree with the president of the Hispanic Leadership Fund, who wrote an op-ed for with the following title:

"Patent office sides with innovation, yet Apple double-downs on fool's gold patents"

The situation surrounding the '915 patent is not the only factor of uncertainty here for Apple. Samsung announced in the summer that it would file a petition for writ of certiorari (request for Supreme Court review) concerning design patent damages. If the top U.S. court agreed to hear that matter and agreed with what will likely be a broad industry coalition, there would have to be a retrial.

Lest I forget, one of Apple's iPhone design patents underlying the decision is also under serious pressure as the patent office feels it shouldn't have granted that one either.

So this will go on for some more time, especially since the filing also notes that a settlement conference took place on November 2, 2015 and "did not result in settlement."

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