Saturday, June 23, 2018

Judge Orrick upholds Samsung's anti-enforcement injunction against Huawei

The fact that Samsung und Huawei are the world's two leading Android device makers always lent some significance to their patent infringement dispute, but it wasn't really too interesting to watch until the motion process that culminated in Samsung's antisuit injunction, preventing Huawei from enforcing a couple of Chinese patent injunctions for the time being.

Huawei has since been trying to get rid of that decision, which prevents it from getting huge leverage in China in the shortest term. It asked Judge William H. Orrick of the United States District Court for the Northern District of California to revisit his decision, and it filed a Ninth Circuit appeal with the Federal Circuit. The latter then told Huawei: you can't keep two courts busy in parallel with the same matter, so please wait for your California-based judge, then we'll see.

A few days ago, Judge Orrick denied Huawei's motion for reconsideration (this post continues below the document):

18-06-19 Huawei v. Samsung - Denial of Motion to Alter Judgment by Florian Mueller on Scribd

While there's nothing unusual about a judge standing by his decision, this order is quite important in one respect: Huawei argued that Judge Orrick should have applied, in addition to the Gallo antisuit injunction factors, the Supreme Court's traditional Winter preliminary injunction factors. Judge Orrick still disagrees that Ninth Circuit law requires both, but--and that is a setback for Huawei--he explained in his order that "[the other Winter] factors would not alter [Judge Orrick's] conclusion." Judge Orrick elaborates on that part in his footnote 3:

"The analysis of these factors largely tracks that of the district court in Microsoft Corp. v. Motorola, Inc., [...](Microsoft I). Samsung faces irreparable harm in closing its manufacturing plant and ceasing the sale of infringing devices in China. See id. at 1102 ('Microsoft has provided this court with convincing evidence that it will lose market share, which will be difficult to regain, and suffer harm to its business reputation.'). The balance of equities tips in Samsung's favor because it would be placed in an untenable bargaining position, which would have lasting effects, whereas Huawei is only being enjoined for approximately six months. See id. at 1103 ('It would seem clear that a negotiation where one party (Microsoft) must either come to an agreement or cease its sales throughout the country of Germany fundamentally places that party at a disadvantage.'); id. ('By issuance of an anti-suit injunction, this court is in no way stating that Motorola will not at some later date receive injunctive relief, but only that it must wait until this court has had the opportunity to adjudicate that issue.'). And the public interest lies in this court adjudicating the propriety of injunctive relief for the parties' standard essential patents (SEPs). See id. ('The court finds that the public interest is served by issuing an anti-suit injunction and permitting Microsoft to continue its business operations without interruption until this court has had the opportunity to adjudicate the injunctive relief issue before it.'); see also Order at 15–17 (analyzing the Unte[r]weser factor of whether foreign litigation would frustrate a policy of this forum). The overlap between the Unte[r]weser factors and the Winter factors further bolsters the conclusion that the full Winter analysis is unnecessary when applying the Gallo test. See Gallo, 446 F.3d at 991 ('Gallo need only demonstrate that the factors specific to an anti-suit injunction weigh in favor of granting the injunction.')."

This ups the ante for Huawei before the Federal Circuit.

In other Huawei v. Samsung news, Samsung brought a motion for judgment on the pleadings about two weeks ago, seeking the dismissal of Huawei's FRAND rate-setting claim. Huawei has meanwhile opposed it, arguing that Samsung's consent isn't necessary since Samsung (just like Huawei) agreed to reciprocity in its FRAND declaration to ETSI (the relevant standard-setting organization), so Huawei is entitled to a license to Samsung's patents, but the terms of such a license must also involve a cross-license. I'll talk about that motion process in more detail later, but for now it's worth noting that, according to Huawei, "[the] parties have discussed the possibility of stipulating to the dismissal of Huawei's rate-setting claim without prejudice." Huawei promises to "promptly inform the Court" should such agreement still be reached. So maybe Judge Orrick won't even have to rule on that motion.

Share with other professionals via LinkedIn:


Sunday, June 17, 2018

Judge stays two Huawei patent infringement claims against Samsung due to recent Supreme Court SAS decision

In its litigation with Samsung, Huawei has been a bit hapless so far. At least it's fair to say that the chronology of events hasn't really featured the Chinese tech giant:

  • By filing its case against Samsung in the Northern District of California technically on the calendar day (though it may have been more or less the same hour) prior to its Chinese patent infringement filings, Samsung's successful anti-enforcement injunction was brought in an earlier-filed (or at least simultaneously-filed) U.S. case.

  • Huawei then tried two things, again near-simultaneously, to overturn the antisuit injunction: a motion to alter the decision as well as an appeal to the Federal Circuit. The Federal Circuit didn't like this and had a simple message to Huawei: let Judge Orrick in San Francisco rule on your motion, and if you don't like the outcome, you can ask us for help, but not before.

  • And now the Supreme Court's recent decision in SAS v. Iancu, according to which the Patent Trial & Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO) must reexamine all challenged claims if a petitioner shows a reasonable likelihood of invalidatio for just one challenged claim, enabled Samsung to obtain a stay of two patent infringement claims brought by Huawei (this post continues below the document):

18-06-13 Order Granting Stay of Huawei Infringement Claims by Florian Mueller on Scribd

Samsung challenged multiple claims of two of Huawei's patents-in-suit. The USPTO decided to institute reexamination with respect to some of them, but it had to issue a supplemental order in the wake of SAS and look--nolens volens--at all challenged claims, though it encouraged Samsung to drop its challenge to the ones with respect to which the USPTO was originally unconvinced.

Huawei had actually focused, for the purposes of infringement litigation, on the claims the USPTO viewed more favorably, but the SAS decision changed everything.

As I wrote in my commentary on SAS, this isn't good for the efficiency of the PTAB inter-partes review (IPR) process, but the conservative Supreme Court majority was right that the way the law was worded didn't leave room for any other decision, short of legislating from the bench, which most justices declined to engage in.

Judge William H. Orrick of the United States District Court for the Northern District of California still didn't necessarily have to stay the related infringement claims. He had previously stayed a Samsung infringement claim at Huawei's request, but in that case, the USPTO instituted reexamination of the relevant patent claim because it held that Huawei had shown a reasonable likelihood of invalidation. Not so here.

Nevertheless, Samsung obtained its stay. All things (including the state of proceeding) considered, Judge Orrick felt that it made sense, and that the focus of this case was on FRAND licensing issues. Also, either party will have to narrow its case to five patent claims for the trial, and Huawei still has plenty of claims in play.

It's an interesting example of the procedural impact that the SAS ruling can have on patent infringement lawsuits.

Share with other professionals via LinkedIn:


Saturday, June 9, 2018

USPTO holds key claims of core Twitter patent invalid: Indian inventor was first

Yesterday the United States Patent and Trademark Office had bad news for a particularly broad member of Twitter's key patent family, U.S. Patent No. 9,088,532 on a "device[-]independent message disribution platform." As I reported in March, the '532 patent is being reexamined based on a patent application by independent Indian inventor Yogesh Rathod as well as a couple of other prior art references. The reexamination requested related to claims 1-3, 8, 9, 13-15, 17, 20, and 21, all of which are being reexamined. In a (first) Office communication since opening the reexamination proceedings, the USPTO has held all of the reexamined claims invalid, challenging Twitter to persuade the examiner that its patent claims should be upheld. Here's the Office communication (this post continues below the document):

18-06-08 USPTO Rejection of Twitter Core Patent Claims by Florian Mueller on Scribd

All of the claims under reexamination have been found to have been anticipated by Yogesh Rathod's international patent application. In addition, all claims but one (claim 17) are deemed non-novel in light of U.S. Patent Application with publication no. US 2011/0289574 by three Northern Californian inventors (Mark Hull, Randall Farmer, and Ellen Perelman).

Note that rejection rates are very high at this stage of proceeding. Some examiners simply reject all challenged claims in their first action in order to challenge the patentee to make the strongest case possible in defense of the patent in question. Some patent claims are rejected multiple times before finally being confirmed by the USPTO.

That said, things are looking bleak for Twitter's patent claims. To salvage those claims, Twitter would have to

  • overcome the non-novelty holding with respect to two different patent applications (Yogesh Rathod's application and the application by Mark Hull et al.); and then

  • additionally overcome any obviousness argument (the first Office action already notes that, even if one disagreed on non-novelty, a person of ordinary skill in the art could combine either one of those references with a third patent application, publication number US 2007/0105536, by George Tingo.

As for the commercial implications, let me refer you to my March post.

Share with other professionals via LinkedIn:


Tuesday, June 5, 2018

No quick win for Qualcomm over Apple in Germany: stipulated stay

Four months back, Qualcomm's lead counsel in the German Qualcomm v. Apple cases, Quinn Emanuel's Dr. Marcus Grosch, hoped to obtain a Germany-wide patent injunction against Apple this summer. The related case (one of various patent infringement claims Qualcomm has brought against Apple in Germany) went to trial this afternoon, and it's unlikely that anything, if ever, will happen in that particular matter before the summer of 2019.

The patent-in-suit, EP2954737 on a "power tracker for multiple transmit signals sent simultaneously," is under massive pressure because of Apple and Intel's opposition to its recent grant. Of the four prior art references cited, Alcatel Lucent's European patent application EP2442440A1 poses the greatest--though not the only--threat to Qualcomm's patent.

At today's trial it turned out that Qualcomm itself recognized that this patent, granted only about a year ago, is not the most defensible one. After reviewing Apple and Intel's petition for revocation, Qualcomm decided to narrow the claim scope by filing an application for a divisional patent that would (if granted, which is a huge IF) be limited to wireless devices. However, Presiding Judge Dr. Holger Kircher of the Mannheim Regional Court indicated in his initial summary of the court's preliminary position that he and his two colleagues were inclined to stay the case pending the EPO's decision on Apple and Intel's opposition--and the divisional patent that Qualcomm was seeking to obtain wouldn't have affected the court's validity assessment where we stand, given that a new filing, which may or may not result in a patent grant, just doesn't enjoy the strong presumption of validity that applies to actually-issued patents.

While the court was inclined to agree with Qualcomm's infringement theory and unconvinced of Apple's defenses (including its claim that Intel, its supplier, had prior use rights), validity was a lost cause for Qualcomm based on the current state of affairs. Therefore, Qualcomm's counsel didn't really see an alternative to a stipulated stay. He'd have preferred to limit the stay to the first decision by an EPO examiner on the new divisional patent application, but Judge Dr. Kircher reminded him of his procedural options: should there be other relevant developments, Qualcomm could bring a motion and the court would take another look at whether the stay might be lifted.

The parties finally stipulated to a stay. The opposition proceeding will likely result in a decision in mid-2019, given--as Samson & Partner's Dr. Wolfgang Lippich (a patent attorney on Apple's defense team) explained--the EPO's internal timelines for opposition proceedings involving patents that are being asserted in litigation.

On the infringement side, the court applied a broad claim construction, particularly with respect to the words "based on". Those words are followed by "a plurality of [components]," but despite Hoyng ROKH Monegier's Klaus Haft (lead counsel for Apple) explaining how the claim and certain paragraphs of the specification require multiple measurements to take place, the court remained convinced that this claim language dictated a rather broad interpretation (which, of course, has implications for validity as well, though validity will have to be resolved in a different forum, the European Patent Office).

By contrast, the court tends to interpret the statute governing prior use rights in Germany (§ 12 of the German Patent Act) rather narrowly. Reference was made today to an internal Intel presentation, but Judge Dr. Kircher's preliminary opinion was that Intel, while it had the relevant technical idea, had not actually implemented it to a sufficient extent by the priority date of Qualcomm's patent. He felt it was more like some people at Intel--and this must actually be about the mobile chipset division Intel acquired from Infineon--had said: "Wouldn't it be a nice idea to do this?" Unsurpisingly, Mr. Haft disagreed and pointed to the multi-year periods it takes from a firm technical decision to the actual availability of a chipset.

Apple had also raised antitrust defenses. However, Judge Dr. Kircher said that only the enforcement of an injunction would have antitrust implications, while Qualcomm could seek damages. Therefore, Qualcomm's allegedly anticompetitive behavior would not justify a stay of the entire case.

Since Apple convinced the court--and, by extension, even Qualcomm--that a stay was warranted, Apple's other defenses (such as its non-infringement theories, prior use, and antitrust defenses) are moot for the time being. Qualcomm now has to deliver a valid patent. Unless and until it does so (which will take time), this case here won't be resumed. Meanwhie, other Qualcomm v. Apple patent infringement assertions will go to trial. For the second half of the year, the Mannheim court has scheduled two Qualcomm v. Apple trials, and the Munich I Regional Court will hold three (there have already been first hearings in those cases).

Qualcomm's quest for leverage has been dealt a significant setback, but will continue without a doubt. But most likely today's stay wasn't the last one in that dispute.

Share with other professionals via LinkedIn:


Friday, June 1, 2018

Apple, Samsung trying to put patent dispute behind them through mediation

After last week's Apple v. Samsung damages verdict (largely over design patents) in the Northern District of California, counsel for both parties told Judge Koh that they were both willing to put an end to their long-running dispute, which started with a complaint filed by Apple in April 2011 and quickly escalated into a global dispute with filings in ten countries.

Late on Thursday, Samsung filed an administrative motion asking Judge Koh to keep a joint notice regarding alternative dispute resolution out of the public eye (this post continues below the document):

18-05-31 Samsung Motion to File Under Seal ADR Notice by Florian Mueller on Scribd

All that one can learn from the public filing is that there is a "forthcoming mediation." It's unclear whether a judge or a private mediator will try to work out a settlement.

What's furthermore unclear (and no one may know at this stage) is whether the parties will try to resolve both California cases (the one that went to re-retrial in May, and a second one that turned into a roller coaster) or just the first one.

High-profile smartphone disputes between handset and platform makers (unlike litigation brought by non-practicing entities or increasingly-"trollified" former phone makers such as Nokia and Ericsson) haven't recently resulted in license agreements. Instead, parties just dropped pending cases but reserved all options for bringing new complaints anytime, with some license agreements--or covenants not to sue--of extremely limited scope possibly having been part of some of those confidential deals. I would expect the same if Apple and Samsung finally called a truce. Apple obviously isn't going to extend a design patent license to Samsung; the result might involve a license (or a convenant not to sue with the practical effect of a license) to a few software patents, though some have expired and others have been worked around. But by and large the question is just whether Apple will withdraw any pending claims. And, even if this works out now at long last, no one knows when hostilities might flare up again.

Share with other professionals via LinkedIn: