Friday, July 1, 2022

First good news for Apple in current patent dispute with Ericsson: U.S. trade judge deems two Ericsson patents (asserted in Ericsson's smallest ITC complaint) indefinite

About six months into the Ericsson v. Apple 5G patent dispute (if we count from the filing of the first infringement actions rather than Ericsson's pre-emptive FRAND complaint last fall), things have not gone well for Apple. As I wrote on Tuesday, the iPhone maker tried various tactical games--and failed. The Office of Unfair Import Investigations (OUII, commonly requerred to as the "(ITC) Staff") finds Ericsson's--not Apple's--proposed claim constructions in a standard-essential patent (SEP) case persuasive.

If one had wanted to find any good among the bad here before yesterday, the harvest would have been meager. Essentially, Apple avoided an anti-antisuit injunction in the Netherlands, but the fact that it was forced to state it didn't intend to seek an antisuit injunction is still a significant disincentive. Apple hasn't moved for an antisuit injunction so far. Then, Ericsson requested preliminary injunctions in two South American jurisdictions (Brazil and Colombia), and the judges there basically said "not so fast, please." That's obviously better than being enjoined, but merely means that judgment is deferred.

Realistically, with a dispute of this scale, spanning (at least) six countries, it's impossible for all the important decisions to go only one way. Relatively speaking, the first significant good news for Apple comes from the ITC and may result in the withdrawal of an Ericsson patent--and of at least a couple of claims from another patent--asserted in the third and smallest one of Ericsson's ITC complaints. However, Ericsson's third patent in that case is faring a lot better and continues to pose a threat to Apple, as do--potentially--the non-indefinite claims from another.

Yesterday, Administrative Law Judge Cameron Elliot entered the following claim construction (Markman) order, which I'll discuss further below:

Without digressing too much into comparative law, ALJ Elliot's order is one good example of many for the systematic approach to claim construction in the U.S. under the Markman doctrine--and a significant percentage of patent injunctions in other jurisdictions, including but not limited to Germany, would never issue if courts followed the same discipline.

The order addresses the three patents-in-suit (by comparison, there are four patents in Ericsson's aforementioned SEP case, and five in another non-SEP case) in the order of the complaint. The first one of those patents is still "hot" in the sense that Ericsson may very well win a U.S. import ban over it. The other two patents, however, have indefiniteness issues in ALJ Elliot's opinion that may now result in a voluntary narrowing of the case.

U.S. Patent No. 8,792,454 on "secure and seamless WAN-LAN [wide area network, local area network] roaming"

The parties disagree on the construction of four terms from the asserted claims of this patent. A couple of arguments made by Apple were flatly rejected by the judge as "beside the point" and "entirely unpersuasive." In particular, Apple tried to read a Make-Before-Break requirement (meaning you connect with an additional network and only then disconnect from a previous one) into the claim language that is clearly optional based on the specification, ALJ Elliot says.

Apple also couldn't convince the judge of the additional requirement of a Windows-based network interface card named "1x/rtt card 514" being required components.

With respect to a third claim construction dispute relating to this patent, "[a]dditional evidence is required" as "Ericsson has offered evidence that, in essence, merely articulating the function amounts to an algorithm, because programming a computer to perform the function requires 'at most, a two-line program in any high-level programming language.'"

The fourth part is trickier. It's a means-plus-function claim limitation ("means for transitioning communications from said first network to said second network") with a corresponding hardware structure that can be a controller or equivalents thereof. ALJ Elliot has described the part that is now likely going to be outcome-determinative as follows:

"[I]f the controller is found to qualify as a general-purpose computer, then the only disclosed programming algorithm is a high level description of Make-Before-Break; conversely, if the controller is found to not qualify as a general-purpose computer, then the claim element is not limited to the Make-Before-Break process."

So there still is a chance for Apple to successfully argue that the claim is limited to a Make-Before-Break sequence of actions. But based on yesterday's order, there still is quite a possibility that Ericsson may prevail on the '454 patent.

U.S. Patent No. 10,880,794 on "inter-band handover of the same physical frequency"

Ericsson is asserting claims 11-20. Claims 12-15 are dependent from claim 11, and claims 17-20 from claim 16.

ALJ Elliot takes issue with the quality of the specification:

"Why a certificate of correction never issued as to the 794 patent is mystifying, because it has more typographic and scrivener’s errors than either of the other two asserted patents. [...] In fact, its errors are so numerous and severe that it is impossible to ascertain the meaning of certain claim terms, including the 'first logical frequency' and the 'second logical frequency.'"

With respect to the terms just mentioned in the quote ("first/second logical frequency"), ALJ Elliot considered it an "inescapable conclusion [...] in light of the specification and prosecution history" that these terms are indefinite. As they appear in all 10 of the asserted claims from this patent, I guess Ericsson will drop it as it's unlikely to gain short-term leverage, though Ericsson could, of course, try to persuade the Commission (the ITC's top decision-making body) of its take. I don't claim to have analyzed this in full detail (I couldn't even if I wanted, as the evidence is sealed), but I recognize a pattern from similar situations and consider withdrawal the most likely next step. The ITC very much wants complainants to narrow their complaints.

U.S. Patent No. 8,472,999 on a "method and system for enabling dual standby state in a wireless communication system"

Ericsson is asserting claims 11-19. Claims 12-17 are dependent from claim 11, and claim 19 from claim 18.

There are lots of means-plus-function limitations to be construed here. With respect to most of them, Apple failed to persuade the judge that no structure was disclosed. In those cases, ALJ Elliot found that "the corresponding structure is a chipset and its equivalents." In another such case, it is "the main controller" with the questin of adequacy still being deferred.

With respect to one claim limitation ("the primary mode module to enable ..., the primary mode module configured to monitor ... provided primary mode monitoring frequency"), however, Apple has already gotten its way:

"[B]ecause there is no disclosed structure that performs the claimed function of 'monitoring,' the claim is indefinite."

With respect to another claim limitation ("primary mode module"), ALJ Elliot makes an indefiniteness determination but isn't totally convinced, so he offers a fallback:

"[T]he 'primary mode module' element of claim 11 is construed as a means-plus-function element and is indefinite. Inasmuch as it is not indefinite, the claimed functions are 'enabling the primary mode of operation for the multimode wireless communication terminal' and 'monitoring paging information for the primary mode of operation at a communication network provided primary mode monitoring frequency,' the structure disclosed for performing the function of 'enabling the primary mode of operation for the multimode wireless communication terminal' is a chipset and its equivalents, and the claim is otherwise not construed." (emphasis added)

For practical purposes, this lack of confidence in the second indefiniteness determination makes things complicated. The claim element about the indefiniteness of which ALJ Elliot is sure appears in claim 11 and, therefore, in its dependent claims, but not in claim 18 and its dependent claim 19. However, the words "primary mode module" also appear in claim 18 and, therefore, claim 19.

So there's one term that the judge says is indefinite, period, but it's not found in all asserted claims; and another term is found in all asserted claims, but the judge doesn't rule out that it may not be indefinite.

Given the complexity of the situation, I can't offer a prediction as to whether Ericsson will continue to assert claims 18 and 19. A withdrawal of claims 11-17 is far more likely.

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