Samsung's appeal of ITC ruling on its complaint against Apple only about standard-essential patent

Right after the Presidential veto of an import ban of older iPhones and iPads over a standard-essential patent, Samsung told reporters that it had appealed the unfavorable parts of an ITC ruling: Apple was cleared of infringement of three of the four patents-in-suit at the time because the Commission (the six-member decision-making body at the top of the U.S. trade agency) reversed the Administrative Law Judge's decision with respect to only one patent-in-suit. So Samsung had the opportunity to pursue three patents on appeal: one standard-essential one and two non-SEPs.

Samsung filed its opening brief with the Federal Circuit yesterday, and the public redacted version of that one became available today. Two things I want to mention up front:

1. Samsung is pursuing only the (other) SEP on appeal (U.S. Patent No. 7,486,644, which is about HSUPA), despite the Presidential veto relating to the other SEP-in-suit (the '348 patent), but none of its two non-SEPs-in-suit, over which it would certainly win an import ban if it prevailed on liability.

   This suggests that Samsung is primarily interested in keeping that SEP alive for damages purposes, since it would be a long shot to win an import ban (on the remand it seeks) in light of the last veto (though not 100% impossible if the FRAND-related facts changed in the meantime, such as new offers made in negotiation that might warrant a new public interest analysis down the road, most likely in 2015). The veto itself is not appealable.

   Furthermore, Samsung's choice indicates that it doesn't believe too much in the strength of its non-SEPs-in-suit. On a worldwide basis it has not been able to prevail over Apple on a single one of its own non-SEPs.

   More than a year ago I analyzed the Administrative Law Judge's initial determination (preliminary ruling) and said the '348 patent (the one on which Samsung prevailed in the decision that then got vetoed) was its best shot. For the '644 patent, which it's now pursuing on appeal, I saw a "steep challenge" after not only the judge but also the ITC staff cleared Apple of infringement. I considered one of the two non-SEPs unwinnable and was skeptical about the other one, too.

   The ITC cannot award damages. But a Federal Circuit finding of infringement would be binding for a district court. Samsung filed a companion federal lawsuit in Delaware, and the Delaware case was stayed pending the ITC investigation (including any appeals) but will be resumed at some point (most likely in 2015).

   Regardless of the Delaware damages case, by simply pursuing this appeal, Samsung improves its ability to argue to a court, in the event that an Apple-Samsung FRAND rate determination is made in the meantime, that the patent is still alive.

2. With respect to the '348 patent (the "vetoed" patent), Samsung affirmatively said that an import ban would not affect Apple products incorporating Qualcomm baseband chips. But now, for the '644 patent it's pursuing on appeal, Samsung does argue that Qualcomm chips, too, infringe it. The exemplary accused product with a Qualcomm chip is the iPhone 4S, which comes with the Qualcomm MDM6610 baseband processor; older iPhones and iPads came with Intel chips. What I haven't found out yet (and may never find out due to heavy redactions of confidential business information such as license agreements) is whether Samsung simply thought that Qualcomm's chips didn't infringe the '348 patent (the "vetoed" patent) for technical reasons, or whether it feels it has a better chance to overcome a patent exhaustion defense with respect to the '644 patent (the patent-on-appeal). Patent exhausion and similar theories (third-party rights under a covenant not to sue customers or whatever) will likely play a role in this appeal, just in case Samsung wins a reversal of the ITC's non-infringement finding. In Europe it lost a couple of cases because of Qualcomm-related licensing issues. If the Federal Circuit sided with Apple on this question with respect to the '644 patent, it would have implications for Samsung's dispute with Apple beyond this ITC case.

From a tactical perspective this is going to be a very interesting appeal to watch. Finally, here's the public version of Samsung's opening brief:

13-10-31 Samsung Opening Brief in Appeal of ITC-794 Ruling by Florian Mueller

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Federal Circuit schedules Oracle v. Google appellate hearing for December 4, 2013

In six weeks from today, the United States Court of Appeals for the Federal Circuit will hear Oracle's Android/Java copyright appeal against a ruling by Judge Alsup in the Northern District of California, who sided with Google on a copyrightability question that was outcome-determinative for the most important part of the case: he deemed the "hijacked" declaring code of the Java APIs not to be copyrightable.

This morning by Eastern Time the world's leading appeals court for intellectual property matters issued the following notice of calendaring (click on the image to enlarge or read the text below the image):

NOTICE OF CALENDARING. Panel: 1312H. Case scheduled Dec 04, 2013 10:00 a.m. at the United States Court of Appeals for the Federal Circuit (Howard T. Markey National Courts Building, 717 Madison Place, N.W. Washington, DC 20439), Courtroom 402. Response to oral argument order due: 11/15/2013. Counsel should check-in 30 minutes prior to the opening of the session. Please review the Oral Argument Order. [112135] [13-1021, 13-3067, 13-5041, 13-1204]

Oracle has several high-profile copyright lawyers on its team, and its lead counsel will be Orrick Herrington Sutcliffe's Joshua Rosenkranz, a leading appellate lawyer who recently won an important Federal Circuit appeal for Apple (reviving its ITC case against Google's Motorola Mobility) and is on the winning track in another Apple v. Google matter before the same court, likely leading to a once-denied Chicago trial over the Steve Jobs patent and other key Apple patents. On December 4 the "Defibrillator" will be at work again in Washington DC.

As for the arguments raised on appeal, let me refer you to a few of my previous posts. I'll definitely write some more about this in the build-up to the appellate hearing. For now I just wanted to share the scheduling information with you immediately.

• Oracle's opening brief:

  Oracle's appeal brief likens Google to fictitious Harry Potter knockoff author 'Ann Droid'

• Google's answering brief to Oracle's opening brief (and opening brief for its own cross-appeal):

  Google says Java APIs lost copyrightability like Aspirin lost trademark protection over time

• Oracle's reply brief in support of its appeal (and answer to Google's cross-appeal):

  Oracle to appeals court: Google concedes away the entire case under established copyright principles

• Google's reply brief in support of its cross-appeal:

  Google's reply brief completes briefing in Oracle's Android-Java copyright appeal

The key issues in this case (mostly copyrightability, but also "fair use") are of great interest and concern not only to these parties but also to many other stakeholders. Either party has support from academics, but Oracle's positions are shared to a hugely greater extent than Google's by industry leaders and creatives. A former U.S. copright chief also agrees with Oracle that the lower court's ruling is a fundamental threat to intellectual property protection (he said it "eviscerates" copyright protection for software), and urged reversal.

I look forward to December 4, and I'll analyze the official recording as soon as it becomes available.

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Apple seeks to broaden U.S. import ban against Samsung through Federal Circuit appeal

The import ban Apple won in August against Samsung's Android-based devices infringing certain patents has just entered into force, and meanwhile Apple is trying to broaden its victory. I just found out (because I spotted a filing made by an ITC lawyer today despite the government shutdown) that Apple appealed, on Wednesday (October 9, 2013), the unfavorable parts of the final ITC ruling on its complaint against Samsung. Here's the notice of appeal (this post continues below the document):

13-10-09 Apple Notice of Appeal of Unfavorable Parts of ITC Ruling by Florian Mueller

For the time being, Apple reserves the right to appeal any or all unfavorable parts of the ITC ruling. This could theoretically result in an import ban over up to three more patents, a reversal of the ITC's decision to clear certain workarounds, and even with respect to the patents on which Apple prevailed, a modified claim construction could result in a technically broader ban. Presumably Apple will pick two or three strategic priorities for its appeal. For example, I doubt that it will pursue the enforcement of a design patent that can be worked around easily and is no longer infringed by Samsung's newer devices.

It's a given that Samsung will also appeal, and it will probably do so in a matter of weeks. It just had to await the end of the Presidential review period since a Presidential veto, however unlikely in this case, would have overruled the ITC and thereby have obviated the need for an appeal, which is what happened with respect to the ruling on Samsung's complaint against Apple. In connection with its offensive case, Apple didn't have to wait -- and actually faced a deadline last week for its appeal -- because the ITC's dismissal of parts of Apple's complaint wasn't subject to the review.

In these disputes between major players, unfavorable ITC rulings -- and unfavorable parts of ITC rulings -- are routinely appealed. A couple of months ago, Samsung appealed the ITC's dismissal of large parts of its complaint against Apple. It can't appeal the Presidential veto, but it had also asserted some non-standard-essential patents that the ITC just didn't find violated by Apple.

Apple succeeded with its appeal of the ITC's dismissal of its complaint against Google's Motorola Mobility. Google asked the appeals court for a rehearing. If that one isn't granted, the case will be remanded shortly to the U.S. trade agency.

Microsoft also won a reversal and remand of an unfavorable part of an ITC ruling on its complaint against Motorola Mobility. The relevant patent will expire shortly, but the appellate opinion will help Microsoft as it pursues damages in district court.

In the major smartphone patent disputes that I watch, the track record is so far that the Federal Circuit has sided with appealing complainants on three patents (two Apple patents, one Microsoft patent). The number of cases decided is too small to be a representative statistical sample, but the Federal Circuit does appear to be, in general, more patentee-friendly than the ITC.

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Microsoft may win U.S. import ban against Google's Motorola over context menu patent

While Microsoft's efforts to ensure the enforcement of an import ban it won last year against Google's Motorola Mobility over a meeting scheduler patent are delayed by the current government shutdown, it achieved a breakthrough today in its push for a broader import ban. Obviously, even a broader ban would be useful only if actually enforced, but that's what Microsoft is fighting for.

This morning the United States Court of Appeals for the Federal Circuit agreed in part with Microsoft that the United States International Trade Commission (USITC, or just ITC) should have ordered an import ban against Motorola's Android-based devices over more than just one patent. It affirmed the ITC ruling with respect to three patents (one of them was not infringed, while the Federal Circuit did not find that Microsoft established a domestic industry for the other two), but reversed in part and remanded the decision with respect to a fourth patent, U.S. Patent No. 5,664,113 on a "context sensitive menu system/menu behavior".

As a result of this, if the patent wasn't set to expire in December,the ITC would have to resume the investigation of Microsoft's October 2010 complaint (its first lawsuit ever involving Android), and the outcome would reasonably likely have been a broadening of the existing import ban. Motorola would then have had to work around two patents instead of only one or U.S. customs officers will hold its shipments. Products made in the U.S. would not be affected, however, and this may be a big part of the reason why the Google subsidiary is "assembling" the Moto X in the United States. But by avoiding U.S. import bans this way, Google still can't change the fact that Android did infringe, and Microsoft can seek monetary compensation in federal court.

Microsoft has been saying for years that Android infringes its patents, and it keeps proving this in court, despite delays particularly in U.S. lawsuits. Besides the import ban it won last year, it also obtained three German patent injunctions against Motorola's Android devices (1, 2, 3), the first one of which has already been affirmed by an appeals court. Microsoft has struck at least 20 royalty-bearing patent license deals with Android device makers and with manufacturers serving multiple device makers. Motorola would most likely be a paying licensee by now, too, if not for Google's adamant position that Android is "free" -- which no one in the industry believes anymore. Today's ruling further supports Microsoft's claim that it's entitled to Android patent royalties.

The world's leading court for patent appeals found that the ITC had incorrectly interpreted the '133 patent. Claim constructions are a matter of law and reviewed by the Federal Circuit without deference (while the ITC's findings of fact enjoy considerable deference, making them difficult to overturn).

One claim construction issue here is that Administrative Law Judge Theodore Essex, whose interpretation of the patent was approved by the Commission, believed the main group of the accused products did not practice the claim limitation (claim element) of displaying (a context-sensivitive menu) "in proximity" of a graphical representation of the selected computer resource (or object). That finding was based on his injection of a requirement that, as the Federal Circuit describes Judge Essex's thinking, "the placement of the context menu in relation to the graphical representation of the selected resource must be 'deliberate.'" The Federal Circuit disagrees that this should be a requirement and points to the space constraints on a small-screen device.

Similar issues affected other parts of the non-infringement ruling on the '133 patent. Google's Motorola ultimately avoided an infringement finding by the ITC with respect to the '133 finding just because of the ITC's "view of what the claims require", which is a more narrow perspective on claim scope than that of the Federal Circuit in this case.

With the Federal Circuit's broader claim construction, it appears that Microsoft would be more likely than not to win a ruling over this patent. Infringement per se is a given. As for the domestic industry requirement, the ALJ found that Microsoft met it (certain mobile devices running Windows Mobile 6.5, specifically the LG Fathom, were shown to the ITC and practice claim 1 of the '133 patent), and the Commission (the six-member decision-making body at the top of the ITC) did not overrule him -- nor did Google's Motorola challenge the domestic industry finding on appeal. Therefore, two of the three requirements (infringement and domestic industry) for an ITC import ban are met. The only requirement the Federal Circuit doesn't comment on at all is validity. A broader claim construction always comes with a heightened risk of a patent being found invalid, but Microsoft has been at the forefront of operating system development for decades and could probably defend this patent against any invalidity contentions even under the Federal Circuit's broader claim construction.

Here's the infringement claim chart Microsoft filed three years ago with the ITC over this patent (this post continues below the document)

Microsoft v Motorola ITC '133 Patent Claim Chart by Florian Mueller

The Federal Circuit ruling "affirm[s] the noninfringement finding for the accused alternative design", so Google can work around this patent -- all patents that aren't standard-essential can be worked around somehow, but workarounds often come with degradations of the user experience, functionality, or performance. Here, the Federal Circuit opinion indicates in my view that there will be degradation of the user experience:

"The ALJ found the alternative design to be non-infringing based on his conclusion that, for the context menu to be in the proximity of the graphical representation of the selected object, the graphical representation must remain at least partly visible on the screen when the context menu appears. Noting that there is little to go on in deciding this question (the ALJ's analysis was just one sentence), we adopt the ALJ's construction."

This means the workaround requires Google to display a full-screen context menu instead of putting it on top of the object to which it relates. That's a loss.

Today's ruling relates only to Microsoft's appeal of certain unfavorable parts of the ruling, not to Google's (Motorola's) attempt to have the import ban reversed (technically, these are two appeals against the same ITC ruling). But at the appellate hearing, held in early August, it was rather clear that Google was struggling to convince the court of its invalidity contentions regarding the scheduler patent over which Microsoft won last year's import ban.

Theoretically, the remand proceedings could be delayed by the U.S. government shutdown. The ITC is closed (at least with respect to these patent cases). But today's ruling is not yet a mandate, and by the time the Federal Circuit issues a mandate, the ITC will presumably be at work again.

Recently, Apple also succeeded with its appeal of an ITC ruling on a complaint against Motorola.

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Apple fights for broadest "data tapping" patent claims, appeals USPTO decision to Federal Circuit

Earlier today I gave an overview of how the U.S. government shutdown affects the ongoing smartphone patent disputes. There are some effects on certain cases, but also progress in other areas. For example, Apple filed an appeal today with the United States Court of Appeals for the Federal Circuit against a USPTO decision concerning U.S. Patent No. 5,946,647, a patent that I often refer to as the "data tapping" patent. To be precise, the patent claims don't say anything about "tapping" per se -- it would also cover "clicking" on telephone numbers in an email, for example, or the use of a Galaxy Note stylus. But "tapping" on such data is what users of smartphones and tablet computers typically do.

This is not an iPhone patent: it was filed in the mid-1990s in connection with Macintosh software. But it's pretty useful now in smartphone patent litigation. Apple has, in fact, asserted it against all four major rivals with whom it has been or (in two cases) continues to be embroiled in litigation: Nokia, HTC, Motorola, and Samsung (in chronological order of the filing of the related complaints).

After Nokia sued Apple in 2009, Apple countersued over various patents including this one. Shortly thereafter, an ex parte reexamination was requested against this patent in October 2010, most likely by Nokia though HTC (or Google) could also have had a hand in it. Nokia and Apple settled in June 2011 (Apple describes this settlement as merely a provisional standstill agreement) before any ruling on the "data tapping" patent. In December 2011, the ITC granted Apple a U.S. import ban over this patent against HTC; that dispute was settled less than a year later but the license Apple extended to HTC comes with an anti-cloning provision. Motorola Mobility sued Apple in October 2010, and after some procedural twists and turns Apple wanted to take this patent to trial against the then-Google subsidiary in June 2012. Judge Posner dismissed the case, but it looks like Apple win finally get its Chicago trial on remand. And this patent is still on Apple's shortlist for the March 2014 trial against Samsung (in the second California litigation between those parties).

It's true of most patents that claim 1 is the broadest claim, but it's not required by the law and there are exceptions such as the data tapping patent. Independent claims 13, 14 and 15 of the data tapping patent, and some of their dependent claims, are actually broader because they lack certain claim limitations such as an analyzer server and a user interface. The analyzer server has been at the center of certain non-infringement contentions by defendants. The aforementioned ex parte reexamination that I believe resulted from an initiative taken by Nokia, HTC or Google resulted in the USPTO's rejection of claims 13 and 15-31. In June, the Patent Trial and Appeals Board (formerly called Board of Patent Appeals and Interferences) affirmed this rejection against an appeal by Apple. Today Apple has appealed the USPTO ruling to the Federal Circuit.

While it would give Apple additional leverage over rivals to salvage one or more of the broadest claims, the claims that have survived are already useful to Apple in any event. The import ban against HTC was based on claims 1 and 8. In the "Posner appeal", Apple focused on claim 1. The shortlist in the second California case against Samsung includes claims 1, 4, 6, 8, and 9. Apple's pending assertions of this patent don't depend in any way on the outcome of the Federal Circuit appeal -- but if a broader claim than claim 1 survived, all future infringement claims over this patent would be slam dunks, and the patent would be even harder to work around (except for removing the protected functionality altogether).

It's now October 2013 and an October 2010 reexamination request still hasn't been adjudged. It's now going to take about a year before the Federal Circuit rules on this case. In case it remands it to the USPTO, things will take even longer. This is an example of how long reexamination takes if a patent holder is prepared to exhaust all appeals.

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U.S. government shutdown over budget impasse would delay Google's ITC appeal against Apple

In light of uncertainty surrounding the U.S. government's ability to operate after Monday (September 30) due to a budget impasse in Congress, the United States International Trade Commission (USITC, or just ITC) today filed a contingent motion with the United States Court of Appeals for the Federal Circuit, requesting in the event of a government shutdown a postponement of a Motorola v. Google appellate hearing scheduled for October 11. At that hearing, the ITC and intervenor Apple will defend the U.S. trade agency's August 2012 finding that Apple did not infringe three Motorola patents against Google's (Motorola's) appeal.

Only one of the three patents tossed by the ITC last year is at issue on appeal: U.S. Patent No. 6,272,333 on a "method and apparatus in a wireless communication system for controlling a delivery of data", which according to Google's lawyers "solves the critical problem of controlling the effective delivery of data to applications on a wireless device". Google (Motorola) is pursuing, on the basis of claim 12 of this patent, an import ban. The exemplary accused devices in the investigation are the iPad 3G, iPad 2 3G, iPhone 3GS, and the first-generation iPhone, but the scope of an ITC exclusion order would not be limited to those products: any other Apple smartphone or tablet infringing the patent would also be excluded.

Apple and Google understand the ITC's situation. The ITC argues that its counsel "will not be authorized to represent the Commission should a shutdown occur". Possibly, its counsel could not even "attend the oral argument should the shutdown extend through October 11, 2013". In any event, a shutdown starting Tuesday would affect "counsel's ability to adequately prepare for the argument". For as much as Google would like its appeal to be adjudicated sooner rather than later, it has to accept this reality.

Here's the ITC's contingent motion (this post continues below the document):

13-09-27 ITC Motion to Reschedule Motorola-Apple Appellate Hearing by Florian Mueller

This is only the first of two appeals Google's Motorola brought against the ITC's determinations on its complaint against Apple. In May 2013 Google also appealed the dismissal of another patent-in-suit, which relates to the use of a proximity sensor.

Apple's appeal of the ITC's dismissal of its case against Motorola succeeded in very significant parts last month. Earlier this month Google then asked the Federal Circuit to reconsider its decision at a panel rehearing or even in the form of a full-bench review. The court invited Apple to submit a response, which it did yesterday. Apple counters Google's various arguments for a rehearing by saying that the petition for a rehearing is largely based on arguments it failed to make while it had the opportunity. I have uploaded Apple's filing to Scribd. I said before that I doubt Google will win a rehearing (these are rare), but I thought it did raise an interesting point when it proposed a claim-by-claim analysis of market success of an invention (a secondary consideration of non-obviousness). Apple explains now why it doesn't consider this reasonable, but I still believe that if any question raised by Google in its petition appears interesting, it's this one.

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Apple winning Posner appeal -- Chief Judge describes Google's royalty demands as 'crazy'

The United States Court of Appeals for the Federal Circuit has already issued one ruling in Apple's favor against Google's Motorola (reversing and remanding an ITC ruling, which Google just asked it to reconsider), was clearly leaning Apple's way last month with respect to its continued pursuit of a permanent injunction against Samsung, and based on how today's appellate hearing on Judge Richard Posner's June 2012 dismissal of a two-way Apple v. Motorola lawsuit went (here's the recording), it now appears the most likely outcome that Apple will ultimately get a patent infringement trial in Chicago against Motorola, presumably involving among other ones the "Steve Jobs patent", but the FRAND-related part of Judge Posner's ruling will probably be affirmed and Motorola won't obtain an injunction over its standard-essential patents-in-suit nor will it be paid anything close to what it demanded in damages.

It appears that due to Seventh Circuit rules the remanded Apple v. Motorola case will be put before a different judge than Judge Posner. Let me also recall that Judge Posner is an appellate judge (on the Seventh Circuit, which doesn't hear patent infringement cases), but served by designation on the United States District Court for the Northern District of Illinois when adjudicating this Apple-Motorola case.

I've talked a lot about the "Posner appeal" at the briefing stage. You can find links to my previous posts on these proceedings in my report on the scheduling order and you may find my more recent post on how Google flip-flopped on the scope of the FRAND part of Judge Posner's ruling interesting as well.

It turned out a lot easier than I thought to analyze today's hearing. The court took very clear positions. Apple is winning all the way. Google is losing all the way. That's the only reasonable conclusion one can reach when listening to the official recording.

It's a cross-appeal. Apple is the appellant and Google the cross-appellant. Apple's lead counsel on this appeal (and also on the appeal of the ITC ruling as well as the appeal of the Wisconsin dismissal of a FRAND contract and rate-setting case) is Orrick Herrington Sutcliffe's Joshua Rosenkranz. He was first to argue, and stressed that Apple and Motorola "occupy completely opposite ends": on the one hand, there are the "distinctive" patented features with which Apple "revolutionized" wireless devices and Apple's "exclusivity"-centric approach of not licensing those patents "in general" to anyone, much less competitors, and on the other hand, Motorola's patents-in-suit, which relate to standards and which it promised to "license universally to everyone". Judge Posner's ruling was a denial of remedies to both parties, and Mr. Rosenkranz then explained why these "two polar opposite ends of the spectrum" have implications for damages, defending the FRAND part of Judge Posner's ruling (i.e., Apple's defensive case) but urging reversal and remand of the non-SEP part (i.e., Apple's offensive case), a "classic case for injunctive relief".

Apple's counsel was sure to clarify that "exclusivity" as a "practice of general policy" is not sufficient in every patent infringement case to conclude that an injunction should issue, but he believes this is the case here. The court asked about the basis for Judge Posner's finding that Apple's patents-in-suit covered minor features, and Mr. Rosenkranz said that these findings stemmed from "plain wrong" claim constructions of the touchscreen heuristics patent (that's the "Steve Jobs patent") and other patents-in-suit. As for Judge Posner's holding that Apple's patents-in-suit were easy to design around, Apple's counsel argued that the main error Judge Posner made here was that he didn't wait to "hear the actual evidence" but based his decision on his "predictive judgment" as to how he as a fact finder would rule. The court appears to agree with Apple that there was no sufficient basis for a summary judgment on these issues because there were issues that needed to be tried.

Then the focus turned to FRAND, and I'll talk about that further below, but for the purposes of this post it's better to look at this issue by issue than chronologically.

When Google's (Motorola's) lead counsel, Quinn Emanuel's David Nelson, defended the non-SEP part of Judge Posner's ruling, it became very clear that the Federal Circuit disagrees with Judge Posner's analysis of the Steve Jobs patent. Judge Posner identified various means-plus-function claim elements, but under the law there is a strong presumption against means-plus-function if the word "means" doesn't appear in a claim, and Motorola appears unable to overcome that presumption (no evidence on the record). Mr. Nelson was fighting hard against this patent, which another Quinn Emanuel client, Samsung, must avoid infringing soon due to an ITC import ban, but Chief Judge Rader, who presided over today's hearing, told Mr. Nelson that he just "spent six minutes to tell me nothing about why [Judge Posner's holding of indefinite means-plus-function claims] is not error".

I understand why Google's counsel felt he had to fight this uphill battle, despite the time limits of such a hearing, but it appears that he made no headway and is going to lose.

The Federal Circuit does not seem to agree with Judge Posner's decision to throw out Apple's evidence. Judge Posner criticized Apple's experts' positions, but the appeals court feels that what he considered deficient "goes to credibility, not to admissibility". In other words, Judge Posner was, in the Federal Circuit's apparent opinion, wrong not to hold a trial on Apple's claims. A remand appears pretty certain now, and the new trial will probably take place next year. In the meantime, Google must hope for good news -- in terms of invalidity determinations -- from the United States Patent and Trademark Office, which is reexamining the Steve Jobs patent.

In my analysis of Judge Posner's ruling, I said (about the non-SEP part) that "it's a safe assumption that the CAFC will be concerned about the patent-skeptical stance embodied in this ruling and will probably be hesitant to affirm this in its entirety". I was also uncertain -- but not nearly as skeptical -- with respect to whether the appeals court would affirm the FRAND part of the decision. But I commented enthusiastically on that one from the beginning.

The emphasis at today's hearing was clearly on the non-SEP part because that's where a reversal and remand is very likely to happen, while the FRAND part appears likely to be affirmed. Maybe the appeals court won't agree with every single part of Judge Posner's reasoning, but Motorola's positions are so very ridiculous that Chief Judge Rader asked the following two rhetorical questions:

• "Isn't it crazy to give that much value [hundreds of millions of dollars] to one patent in a crowded field? Give me some reason why I as a judge at any level of proceeding would give so much value to one patent."

• "[For a single patent], 40% of the value of an entire portfolio? What kind of crazy negotiator would I be to agree to that?"

Could the court have been any clearer that Google is losing because it can't defend the indefensible?

This is now the fourth forum -- not even counting antitrust agencies in this context -- to find Motorola's FRAND positions totally out of line. An ITC judge found last year that "Motorola was not interested in good faith negotiations and in extending a [F]RAND license" to Microsoft . Judge Robart in the Western District of Washington found Motorola entitled, also in a Microsoft case, to less than one-twentieth of a percent of the royalty rate it demanded. The Mannheim Regional Court indicated in June that it won't approve Motorola's 2.25% royalty demand as a FRAND rate. And now the Federal Circuit's Chief Judge has told Motorola that its positions are "crazy", that anyone acceding to its demands would also be "crazy", and that no non-crazy judge could ever agree with it.

Motorola's strategy of demanding prohibitive royalty rates (only to have an excuse for seeking injunctions) and bringing out-of-this-world damages claims over FRAND-pledged SEPs has failed all the way, and the Federal Circuit ruling on the Posner appeal will be yet another blow to Google's strategy relating to the patent portfolio that was the primary reason for paying $12.5 billion for Motorola Mobility. Google is free to pay crazy prices for patents. But it can't expect companies like Apple and Microsoft to be crazy enough to accede to its demands, and it's been unsuccessful so far to find crazy judges to side with it.

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Google's Motorola asks Federal Circuit to reconsider ruling on Apple appeal of ITC decision

A month ago Apple succeeded (not entirely, but to a remarkable extent) with its appeal of the ITC's March 2012 dismissal of Apple's complaint against Motorola. Based on the appellate opinion, Apple has the chance to prevail on two of its patents-in-suit -- a touchscreen hardware patent and a touchscreen software patent (ellipse fitting). And these patents are also of significant concern to other Android device makers, particularly Samsung. But in order for the ITC investigation to be resumed by way of a remand, Apple needs the United States Court of Appeals for the Federal Circuit to issue a mandate, and Google (Motorola Mobility's owner) is still trying to prevent this from happening.

Today Google filed with the Federal Circuit a petition for a panel rehearing and for an en banc (full court) rehearing (this post continues below the document):

13-09-06 Motorola Petition for Rehearing (Apple ITC Appeal) by Florian Mueller

I wanted to report on this quickly, so I haven't been able to check the record (including the recording of the appellate hearing) for the issues the petition raises. There are two arguments in the petition that I'd like to comment on nevertheless:

• The touchscreen hardware patent was brought back to life on the basis of secondary considerations of non-obviousness. The best way to illustrate that concept is a passage from the dissent-in-part of a circuit judge who would have upheld the entire patent (not just one independent claim) on that basis:

  "The Smartphone has defined modern life. Be it in the workplace, the home, airports, or entertainment venues across America, individuals are tethered to their handheld devices. Not long ago, users primarily spoke into these devices. Today, fingers tapping, grazing, pinching, or scrolling the screen is a ubiquitous image that reflects how we conduct business, work, play, and live. The asserted patent in this case is an invention that has propelled not just technology, but also dramatically altered how humans across the globe interact and communicate. It marks true innovation."

  Google's Motorola now argues that market success of the claimed invention must be analyzed on a claim-by-claim basis: Apple's devices may practice claim 1, but with respect to that one the Federal Circuit didn't overrule the ITC's finding of invalidity; however, the ITC, argues Motorola, did not find Apple's iPhone to practice claim 10 -- the independent claim that survived and will be at issue on remand.

  It's an interesting point and even someone with no intention of stalling (though Google/Motorola is obviously not interested in a resumed ITC investigation) might raise this issue. Rehearings are rare, and I still don't think a rehearing is too likely here, but you never know.

• In the same context Google also wants to raise the bar with respect to evidence of a causal nexus: it wants granular proof of a particular patent claim, as opposed to prior art features, driving (or, in this case, having driven) demand. This is a similar logic and terminology (though in a different context) as in Apple's appeal of the denial of a permanent injunction against Samsung. At the appellate hearing (held about four weeks ago) the Federal Circuit didn't appear to support a standard so exacting that this hurdle would be practically insurmountable. And I don't think it will happen here, in the (non-)obviousness context. But it worked for the same law firm before, so they decided to try it again.

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At appellate hearing, Apple makes headway toward feature-based U.S. sales ban against Samsung

Apple has won the first Apple v. Samsung battle today: the Federal Circuit's appellate hearing relating to the denial of a permanent injunction against Samsung products infringing half a dozen Apple patents. Having listened to the one-hour recording (MP3 file), I totally agree with the headline of the Wall Street Journal report on this hearing: "Appeals Court Presses Samsung in Apple Patent Case"

This does not mean to say that the court agrees with Apple on everything, or that Apple's counsel, WilmerHale's Bill Lee, didn't also face some critical questions. But if you listen to the recording, I'm sure most of you will agree that Samsung's counsel, Quinn Emanuel's Kathleen Sullivan, was very much on the defensive. Usually it should be the opposite, given that Samsung won the first round (in district court).

It's not always easy to conclude much from what judges say at a hearing. Today, however, the panel composed of Judges Prost, Bryson and O'Malley gave rather clear guidance on the key issues in this appeal. I'm as convinced as I could be after listening to the recording of a hearing that Apple will be granted a permanent injunction against Samsung over some if not all of the six patents and the trade dress a California jury found infringed almost a year ago. And that sales ban will, contrary to widespread misbelief and ignorance, not be limited to a few mostly obsolete products but will also apply to newer infringing products that are "no more than colorably different", which a judge clarified is not overbroad (as Samsung alleged) but simply the standard language. Also, the patents at issue in this particular case aren't nearly as important as two other sets of partly much more powerful patents with respect to which Apple may seek injunctive relief in the rather near term:

• the patents to be asserted at the trial in the second California Apple v. Samsung case starting on March 31, 2014 (Apple will get to assert up to five different patents out of these six)

• eight back-burner patents (three design patents, five utility patents) dropped without prejudice (i.e., reassertion is an option) ahead of last year's trial, which include the two multi-touch patents over which Apple won a favorable appellate ruling against Google's Motorola Mobility earlier this week (Apple could seek injunctions over some of these patents without a need for a jury trial as long as it doesn't go for damages)

Samsung doesn't face much settlement pressure because of the high probability of Apple now winning an injunction over the patents asserted at last year's trial. It can deal with that. But the two additional categories of patents I listed above, plus any patents Apple could assert in subsequent cases, should give Samsung pause if the standard for injunctive relief is clarified in a way that will help Apple in other cases involving smartphones and tablet computers. In that case, if Apple prevails on liability with respect to some more powerful patents, it may win an injunction shortly thereafter, and then Samsung may come under serious settlement pressure next year.

For my commentary on the hearing let me refer you to a passage on the four key issues from my vantage point (a list that is similar but not identical to the parties' set of priorities) in an earlier post and use it as the structure of my take on the court's apparent inclination at today's hearing.

Causal nexus requirement and related evidentiary standard

It appears that the court won't abandon the "causal nexus" requirement, but the evidentiary standard will come down a lot. Otherwise I don't think the judges would have focused so much on the implications of a lower standard in their questions. Apple has been arguing ever since this ruling that the way Judge Koh applied the "causal nexus" standard would basically make injunctions unavailable over features that are not proven in granular detail to be the driver of consumer demand for an infringing product. Judge Koh already used a rather high standard in her preliminary injunction rulings (her equitable analysis favored Samsung 75% of the time, which most people failed to notice because they just saw that some injunctions were ordered), but the standard went completely through the roof in her post-trial ruling on Apple's request for a permanent injunction.

Samsung says that Apple's evidence relating to the importance of "design" and "ease of use" was too broad (and argues that the patents-in-suit are very narrow). But Apple had actually made a fair amount of effort (more than smaller plaintiffs, whose intellectual property should also be protected, could even afford) to prove a connection between infringement and irreparable harm, and even to show consumer demand (also in the damages context). In particular, the appeals court appears inclined to attach considerable weight to a study by MIT Professor John Hauser, a marketing expert, according to which consumers would pay certain premiums to get particular features. For example, AllThingsD reported on his testimony at last year's trial. As far as I can see, Samsung's counsel simply couldn't convince the court that this kind of evidence was irrelevant or insufficient. One judge said this to Samsung's counsel:

"Why do you think that testimony that customers would pay X amount more for particular features ... why that isn't a pretty good proxy for demand driver? I understand it's not the same same thing, but a proxy, why not?"

Samsung's counsel then drew a comparison to an infringing cupholder in a car. But the judge didn't agree with her and said that if it turns out that sales double after an infringing cupholder is incorporated into the car relative to sales in the absence of the infringing feature, then there would be a causal nexus.

This exchange about the causal nexus is very telling with respect the appeals court's assessment of the sufficiency of the evidence Apple had provided to the district court and likely key to a decision overruling Judge Koh.

Apple argued that the standard for a permanent injunction, after full adjudication of liability, must be a different one than for a preliminary injunction that changes the status quo based on merely an assessment of the likelihood of different outcomes. Like I said, I believe some causal nexus will be required even in this permament injunction case, but the standard will be much lower than the insurmountable one applied by Judge Koh. Whether the appeals court will specifically say that the evidentiary standard should be lower for a permanent injunction than a preliminary one is unclear, but possible.

Samsung struggled to even explain how anyone could still win an injunction against a complex, multifunctional product under the standard it advocates. It pointed to the Galaxy Tab 10.1 case (a design patent case) but didn't really make any practical proposal with respect to utility patents.

Apple complained about an evolution of the standard in recent Apple-Samsung decisions from having to show that a feature is "a" driver for consumer demand vs. proving that it's "the" driver, which could mean that ultimately there is at most one patent over which you can win an injunction against a given product. Samsung's position was a red herring: its counsel argued that Apple failed to prove that either a single feature or a set of features drives demand. Again, I believe the hurdle will come down, and Apple will surmount it with respect to at least some if not all of its intellectual property rights-in-suit.

Implications of fiercely competitive situation

The second item on my list was what implications (in terms of presumptions following from it) a fiercely competitive situation between two companies -- in this case, the market is sort of a two-horse race -- should have. Apple pointed to a loss of market share. As it did in one of its pleadings, it said that Apple spent five years and five billion dollars developing the iPhone, Samsung copied it in three months, and pointed to the success it has had ("see what happens to market share"). Apple considers this the classical case in which an injunction is required. The court didn't disagree but focused on the specifics of the case.

Samsung argued that certain products should not be taken away from consumers.

Implications of workarounds/designarounds

Workarounds (or its synonym, designarounds) will also be a big part of the discussion if Apple wins the ITC ruling scheduled to be handed down in a couple of hours.

I never understood why Samsung tried so hard and extensively to use workarounds as an argument against an injunction. To me it was always clear that ths is actually an argument favoring Apple's request for an injunction.

In May I commented on a ruling in a snowplow patent case that I believe raised some very similar issues as Apple v. Samsung with respect to injunctions, and quoted this sentence from Chief Judge Rader's opinion:

"If indeed Buyers had a non-infringing alternative which it could easily deliver to the market, then the balance of hardships would suggest that Buyers should halt infringement and pursue a lawful course of market conduct."

Circuit Judge O'Malley asked Samsung an almost rhetorical question that is consistent with the above: "If it's so easy to design around [...], why is there any harm?"

Samsung's argument was basically that Apple would later misuse an injunction and, under the "no more than colorably different" standard, use contempt (i.e., enforcement) proceedings to sue Samsung instead of bringing new lawsuits over new products raising what Samsung believes would be new issues. But "colorably different" is the standard. Apple will most likely get an injunction now, and there may very well be contempt proceedings if disputes arise over whether certain designarounds infringe. For example, the parties are known to disagree on the legality of Samsung's pinch-to-zoom implementation. But Apple would still have to prove infringement at the contempt stage, as its counsel noted. It's not like Apple could arbitrarily have non-infringing Samsung products removed from the market.

One reason for which I'm particularly interested in the workarounds/designarounds issue is because it makes all the difference between a standard-essential patents case like the one that gave rise to last Saturday's Presidential veto and non-SEP cases like the one the Federal Circuit heard today or the one on which the ITC will rule later. Only those who haven't understood the differences between SEPs and non-SEPs or those who have a propagandistic agenda conflate the issues.

License agreements and licensing offers

In its effort to argue that Apple can be made whole through exclusively monetary relief, Samsung points to certain license agreements Apple struck with companies like Nokia and HTC as well as a licensing offer it made to Samsung in 2010, the year before this dispute began.

As for the licensing offer, one of the judges indicated clearly that testimony by Apple's then-licensing director Boris Teksler (according to which Apple was not going to license key user experience patents) has more weight than a page from a presentation. He asked Samsung's counsel a rhetorical question: "we can't conclude that this page trumps Mr. Teksler's testimony, can we?"

It appears that Apple has been successful in distinguishing past license agreements from the situation in this case, which is about whether or not an injunction will issue. The court knows these agreements inside-out because the same panel also dealt with sealing issues (a separate process I don't report on). The court knows that the HTC deal comes with an anti-cloning provision while the deal with Nokia doesn't, but Apple reminded the court of the fact that the deal with Nokia was just a short-term standstill agreement, just a covenant not to sue as opposed to a full-fledged license, and came with other limitations. (As an aside, it will be interesting to find out at some point whether Apple and Nokia renew the deal or have another dispute.)

Pre-iPhone license deals also won't bear much weight with the court.

I don't think these license agreements and offers will be ignored, but their limitations and restrictions will be weighed, and whatever is left of those agreements for the purposes of the injunction analysis will have rather limited weight -- too little to be outcome-determinative in Samsung's favor.

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Apple succeeds on appeal: dismissed ITC patent case against Google's Motorola Mobility alive again

The United States Court of Appeals for the Federal Circuit just handed down its opinion on Apple's appeal of the ITC's March 2012 dismissal of its three-patent complaint against now-Google-owned Motorola Mobility. The ITC decision has been reversed in part and vacated in part, and remanded to the U.S. trade agency for further proceedings with respect to two Apple multi-touch patents that have been asserted and could be reasserted anytime against Samsung:

• U.S. Patent No. 7,663,607 on a "multipoint touchscreen", and

• U.S. Patent No. 7,812,828 on an "ellipse fitting for multi-touch surfaces".

Today's remand decision gives Apple another opportunity to win a U.S. import ban against the Google subsidiary's Android-based devices, which would have the Android ecosystem at large concerned. Google believes that Motorola's new flagship smartphone, the Moto X, would not be affected by an import ban because it's "assembled [as opposed to "made"] in the United States". But other Motorola devices would undoubtedly be subject to an import ban because they are imported into the U.S. market.

The '607 patent, a potentially very powerful hardware patent, was deemed invalid by the ITC. But the Federal Circuit finds the ITC's reasoning deficient as far as independent claim 10 of the patent -- one of the claims asserted by Apple -- is concerned. The ITC will have to make a new determination, and based on the appellate decision, claim 10 may ultimately be found valid, in which case Google faces an infringement problem. Very recently an anonymous reexamination request was filed against this patent with the United States Patent and Trademark Office.

The '828 patent was not found infringed, but the Federal Circuit has now "vacate[d] the ITC's decision that Motorola does not infringe the ’828 patent claims and remand[ed] the case to allow the ITC to consider in the first instance whether the accused products infringe under the correct construction of 'mathematically fitting an ellipse.'" In my analysis of Apple's petition for a Commission review of the Administrative Law Judge's preliminary ruling (which the ITC rubberstamped in the end) I already criticized the ITC's claim construction, which was obviously weak (among other things, the word "actually", which I criticized, indicated that the ALJ didn't get this right). In today's ruling, the Federal Circuit "agree[s] with Apple [and, by extension, with me] that the ITC erroneously construed the 'mathematically fitting an ellipse' limitation".

As I mentioned in my report on the '607 reexamination request, Apple temporarily asserted this patent against Samsung in the Northern District of California and reserved the right to reassert it, which also applies to the '828 patent, the other patent that is back in the game after today's appellate ruling. Without a doubt, Samsung, which is represented by the same law firm against Apple as Motorola Mobility (Quinn Emanuel), has been watching this appeal with great concern, and will be very unhappy about today's decision.

Apple's lead counsel before the Federal Circuit was Orrick Herrington Sutcliffe's Joshua Rosenkranz, who also represents Apple in two FRAND-related appeals against Motorola Mobility (the "Posner appeal" and the appeal of the dismissal of a rate-setting case in Wisconsin) leads Oracle's appeal against the ruling in the Android/Java copyright case. Mr. Rosenkranz has been named "the Defibrillator" for his repeatedly-proven ability to resuscitate dismissed lawsuits on appeal.

Only one of the three patents Apple asserted against Motorola in its 2010 ITC complaint, U.S. Patent No. 5,379,430 on an "object-oriented system locator system", is definitively out of the game. Apple did not pursue its claims over this patent on appeal. It was too close to expiration to be worth it. But the two most important patents are now coming back, possibly with a vengeance.

Should Apple prevail on remand, which is anyting but unlikely (though not a given since the Federal Circuit ruling still gives the ITC some wiggle room in the further proceedings), this could be strategically more important than last year's jury verdict in the Samsung case. Injunctions are more important than damages, and these patents are more fundamental than the ones asserted at the California trial a year ago.

The following passage from one judge's dissent-in-part (Circuit Judge Reyna would have sided with Apple on even more claims) underscores the importance of the '607 patent and credits Apple for groundbreaking "true innovation":

"The Smartphone has defined modern life. Be it in the workplace, the home, airports, or entertainment venues across America, individuals are tethered to their handheld devices. Not long ago, users primarily spoke into these devices. Today, fingers tapping, grazing, pinching, or scrolling the screen is a ubiquitous image that reflects how we conduct business, work, play, and live. The asserted patent in this case is an invention that has propelled not just technology, but also dramatically altered how humans across the globe interact and communicate. It marks true innovation."

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Google's Motorola struggles to invalidate patent underlying U.S. import ban won by Microsoft

Today the United States Court of Appeals for the Federal Circuit held its hearing on the Microsoft-Motorola cross-appeal of last year's ITC ruling on Microsoft's complaint against the device maker that has meanwhile become a wholly-owned Google subsidiary. Recordings of the two hearings -- one on Microsoft's attempt to broaden the import ban, the other on Google's efforts to get it lifted -- are available, and I've listened to them.

It's difficult to figure out based on a court's questions where it stands because tough questions may be a way of giving a party an opportunity to make its strongest arguments, but the way I interpret these recordings, there were some clear indications, especially in the court's discussion of the ITC's domestic industry requirement in light of this year's InterDigital ruling, and in connection with evidentiary requirements in connection with invalidity theories and claim construction.

I've linked to those recordings and encourage everyone to form his or her own opinion based on them (if you do listen to the recordings, it will come in handy to know that Mr. Liberman defended the ITC's ruling, Mr. Trela argued for Microsoft, and Mr. Verhoeven for Motorola). If you don't have the time to listen to the recordings yourself, or are interested in my opinion regardless, here's what I think:

• I'd be surprised if Google could prove the patent underlying the import ban (U.S. Patent No. 6,370,566 on "generating meeting requests and group scheduling from a mobile device") invalid. It makes an anticipation argument, which appears weak, and an obviousness argument, for which it still needs to overcome the hurdle of clear and convincing evidence. Motorola argues that the invention is obvious because it's merely about making a previously-existing feature available on a mobile device, but it's not that simple. There's prior art for synchronization, but the court wanted to see evidence that the prior art explicitly made the mobile device (such as the Apple Newton) the component that triggers the scheduling of a calendar event.

  Motorola had conceded infringement of this patent in the proceedings before the ITC. Today's recording reminded me of something I had forgotten about: initially Motorola did dispute infringement, but at some point well ahead of the Administrative Law Judge's initial determination it stipulated to it. Either way, it's still not clear to me how Microsoft "abandoned" its claims with respect to Google Calendar, which is a key issue in the dispute relating to the enforcement of that import ban. Enforcement was not at issue today, but it's obviously closely related. In this context I'd also like to mention that Google believes the new Moto X smartphone does not fall within the scope of the ITC's jurisdiction because it's "assembled in the United States".

• These appellate hearings are short, so there wasn't enough time for a detailed discussion of all of the theories based on which Microsoft could prevail on up to four more patents.

• One issue relevant to multiple patents is the domestic industry requirement. Microsoft argues that "the production and sale of domestic products that embody the patented invention" is too strict a requirement. There must be a way to protect a domestic industry that creates software while others build devices incorporating that software. The aforementioned InterDigital decision was about satisfying the domestic industry requirement through licensing, which Motorola argues makes it irrelevant to the issue before the Federal Circuit in the Microsoft-Motorola ITC case, but it appears that the court is more likely to side with Microsoft on this one.

• If the focus of today's discussion is any indication, U.S. Patent No. 7,644,376 on a "flexible architecture for notifying applications of state changes" is Microsoft's best shot for broadening the technical scope of the import ban. I think a reversal of the ALJ's claim construction of "notification broker" is reasonably likely. It appears that the ALJ injected an additional limitation (a direct connection) for which there's no support in the specification (and the word "direct" does not even seem to come up in the related expert testimony). It will be harder (though not impossible) for Microsoft to also achieve a reversal of the claim construction of "client applications", or to prevail under the ITC's claim construction.

• One possible (and not unlikely) outcome is that the Federal Circuit overrules the ITC on parts of its reasoning, particularly the domestic industry requirement and the construction of "notification broker", but not to an extent that results in a broader import ban. The ITC is afforded a lot of deference in some respects. It is, however, also possible that Motorola is found to have violated one or more additional patents based on the parties' written argument.

• In the dispute between Microsoft and Google, an additional infringement finding, such as with respect to the '376 patent, could make a difference and result in a near-term settlement. But from a strategic point of view, I think this will have been an extremely successful appeal for Microsoft if the existing exclusion order is affirmed and the domestic industry requirement clarified in such a way that Microsoft can satisfy it even if it "only" provides the software that runs on other companies' devices. This would benefit not only Microsoft but also other software makers.

It's hard to tell when the appellate ruling will come down. This can take time. A hearing on Apple's appeal of the ITC's dismissal of its three-patent complaint against Motorola Mobility was held five months ago, and there hasn't been a decision yet. If it takes that long in the Microsoft-Motorola case, then the ruling will be handed down in early 2014. But it might happen sooner than that.

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Samsung filed appeal of unfavorable parts of ITC ruling on complaint against Apple

Samsung is still trying to win a U.S. import ban against Apple. While it can't appeal the Obama Administration's veto of the ITC's decision with respect to a standard-essential patent, it is seeking appellate review of the ITC's simultaneous and unfavorable liability findings with respect to other patents-in-suit. The ITC ruling came down in early June, and in mid-July Samsung filed the following notice of appeal with the United States Court of Appeals for the Federal Circuit (this post continues below the document):

13-07-19 Samsung Notice of Appeal of Unfavorable Parts of ITC Ruling

The notice of appeal lists three patents with respect to which the ITC affirmed the Administrative Law Judge's findings of no violation. But Samsung has yet to file its opening brief, and it's not a given that it will pursue all three patents on appeal. In particular, Samsung won't win an import ban over U.S. Patent No. 7,486,644 on a "method and apparatus for transmitting and receiving data with high reliability in a mobile communication system supporting packet data transmission", another UMTS declared-essential patent. Even if Samsung achieved a reversal of the ITC's finding of no liability, the public-interest rationale underlying the Obama Adminstration's veto wouldn't be different from the situation surrounding the '348 patent, over which the ITC wanted to order an import ban.

Maybe Samsung will pursue an appeal with respect to the '644 patent anyway -- even though it won't obtain any remedies from the ITC -- and then go back to district court for a damages award. But it might as well abandond this patent on the ITC track and ask the United States District Court for the District of Delaware to resume the proceedings with respect to Samsung's SEPs, as I suggested in a Sunday post. Samsung is free to seek FRAND compensation in district court.

For the reasons I explained, only the two non-standard-essential patents at issue in Samsung's appeal could potentially result in an import ban:

• U.S. Patent No. 6,771,980 on a "method for dialing in a smart phone"

• U.S. Patent No. 7,450,114 on "user interface systems and methods for manipulating and viewing digital documents"

Back in October I analyzed the Administrative Law Judge's initial determination and concluded that the '348 patent -- the SEP over which Samsung won the ban that got vetoed -- was its best shot. The other SEP appeared to be a "steep challenge", but still Samsung's second-best shot. The two non-SEPs, however, are long shots:

• The '114 patent on manipulating and viewing digital documents was "probably the most difficult patent for Samsung to prevail on". The judge and the ITC staff agreed that it was invalid, for multiple reasons. Even if Samsung overcame the finding of non-novelty, "there would still be multiple ways to prove it obvious". Infringement is a close call: the judge didn't find an infringement, while the staff did.

• The '980 patent for a dialing method was not found infringed (neither by the judge nor the staff). If a broader claim constructions resulted in a finding of infringement, Samsung might still not satisfy the ITC's domestic industry requirement, but even if it did, a broad interpretation could render the patent invalid. Still, the '980 patent appears more interesting (relatively speaking) to me than the '114 patent. But neither of these non-SEPs is, in my view, worth the delay of a potential damages award in district court over the '348 patent.

Parties have appealed (unless the disputes were settled) pretty much all of the ITC decisions in the smartphone patent cases I watch, and some other appeals were no less of a long shot than Samsung's latest appeal.

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