Qualcomm's next home run: Ninth Circuit denies FTC's petition for rehearing of antitrust case

See, I told you so. NOT. I have a high hit rate (including with respect to both the FTC v. Qualcomm district court decision and the appellate opinion), but I must admit I wasn't on the money in the en banc context. Given the high profile of the FTC v. Qualcomm antitrust case, I was actually optimistic that the Federal Trade Commission's petition for a rehearing en banc would succeed (while I expressed skepticism regarding the prospects of a better outcome for the FTC). It was obvious that the three-judge panel or a majority thereof was going to stand by its ruling, but I thought some other circuit judges would be interested in rehearing the matter. This morning the Ninth Circuit denied the FTC's petition (which had drawn some support from amici curiae, even including Tesla), and it gave it short shrift as no judge even wanted to hold a vote on whether or not to conduct a rehearing en banc (this post continues below the document):

20-10-28 9th Cir. Denial of... by Florian Mueller

Now the FTC will have to decide whether to file a petition for writ of certiorari (request for Supreme Court review). It's quite possible that the FTC's 3-2 majority in favor of the petition for a Ninth Circuit rehearing (consisting of the Republican chairman and the two Democratic commissioners) would also authorize a cert petition. But six of the nine justices are conservatives, three of whom were nominated by President Trump, and they would see that the Trump Administration backed Qualcomm in this dispute. They would likely also take note of the fact that two of the three judges on the Ninth Circuit panel were conservatives (and the third was a relatively conservative-leaning Democrat). But the Supreme Court also has a history of fixing issues with the patent system, particularly with the overleveraging of patents and the patentee overcompensation it leads to. That is not a partisan question, though antitrust law often is. I remember Senator Klobuchar (D-Minn.) lamenting the Supreme Court's restrictive application of the Sherman Act in a statement she made at Justice Barrett's confirmation hearing.

Relatively speaking, I'd have had more hope for the FTC with respect to a Ninth Circuit en banc. But I was too bullish then, so who knows, I may just be too bearish now.

The next major patent-related antitrust case that could reach the Ninth Circuit--and possibly even the Supreme Court--in the near term is Apple & Intel v. Fortress Investment et al.. I blogged about Apple and Intel's opposition to Fortress's second motion to dismiss earlier today and mentioned that FTC v. Qualcomm affects that one. In that particular context, it's definitely bad news for Apple that, for now at least, the panel opinion in FTC v. Qualcomm is controlling Ninth Circuit law. But in Epic Games v. Apple, it may actually help the iPhone maker. That's how it goes.

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FTC petitions for rehearing en banc of Qualcomm antitrust decision, tells Ninth Circuit "panel opinion tears the fabric of antitrust law"

Today, competition authorities on both sides of the Atlantic made filings with appeals courts after deciding not to give up after negative decisions by three-judge panels. First, the European Commission brought a further appeal after losing the first round to Apple and Ireland in a tax policy matter styled as a "state aid" case. Second, the United States Federal Trade Commission filed a petition for rehearing en banc (meaning an enlarged panel of 11 circuit judges) by the Ninth Circuit of its Qualcomm case (this post continues below the document):

20-09-25 FTC Petition for N... by Florian Mueller

The FTC won in district court, but a three-judge panel ruled for Qualcomm on all counts last month. Given the Republican 3-2 majority, it was uncertain whether the FTC would defend its decision, but institutional reasons (the implications of the panel decision not only for this particular case, but also for many other antitrust cases to be litigated in the future) may have been the reason for which at least one Republican sided with the two Democratic commissioners in seeking a rehearing.

A cornerstone of the FTC's strategy is to stress that "panel did not overturn any of Judge Koh’s factual findings." Indeed, Judge Lucy H. Koh of the United States District Court for the Northern District of California had made a clear distinction in her ruling between findings of fact and conclusions of law, and her factual determinations are entitled to a great deal of deference. But the Ninth Circuit panel thought it could reverse based on purely legal questions.

In attacking the appellate panel's ruling, the FTC says it "conflicts with Supreme Court precedent on three questions of exceptional importance to the Nation's antitrust laws":

1. The panel took the position that whatever could theoretically be addressed in patent litigation (such as royalty amounts) wasn't an antitrust issue. The FTC finds this inconsistent with "the Supreme Court's instruction that courts must apply the antitrust laws based on economic substance, not formal labels [by which the FTC particularly means the term 'patent royalties']." The FTC's petition criticizes the panel's "form-over-substance approach." In the same context, the FTC points to the Supreme Court's Apple v. Pepper decision on consumer standing in an App Store antitrust case as well as a 2013 decision according to which patent-related agreements can be evaluated under antitrust law (FTC v. Actavis).

   The FTC may have been concerned that by accepting the panel decision the agency would find it extremely hard to apply the antitrust laws to patent-related business models in the future. Toward the end of the petition, the FTC says "{t]he panel's errors have cast doubt on fundamental matters of antitrust principle and will encourage monopolists to cloak anticompetitive practices beneath false invocations of patent law and the appearance of neutrality."

2. The FTC's second point involves the old United Shoe decision. Earlier this year I explained why I tend to agree with Qualcomm that it's inapposite. I will read the FTC's petition in detail and see whether it changes my mind regarding United Shoe (which I doubt, but you never know).

3. The FTC's third point is that the panel erred in holding that harm to Qualcomm's customers (smartphone makers) is "outside the relevant antitrust markets." Here again, the FTC points to Apple v. Pepper as a very recent Supreme Court antitrust ruling that described "protecting consumers from monopoly prices" as the "central concern of antitrust."

The issues in this case are reasonably likely to spark the interest of enough circuit judges for the rehearing en banc to happen. The far harder part for the FTC will be to get a better outcome.

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Three decisions due on Friday (9/25): FTC v. Qualcomm (en banc petition?); EU "state aid" case against Apple/Ireland (further appeal?); Nokia v. Daimler

By sheer coincidence, three decisions will become known on Friday (September 25) in cases that this blog has previously discussed but which are otherwise unrelated. In two of those cases, competition authorities have to decie whether to turn things around after losing the first appellate decision. In one case, there would definitely be a way, but might not be the political win to keep fighting; in the other case, there would undoubtedly be a will, but there may not be a promising way. Furthermore, a German court will announce a decision on an automotive patent infringement complaint with major antitrust implications.

1. The United States Federal Trade Commission (FTC) is now approaching the 45-day deadline for a potential petition for a rehearing en banc of a three-judge panel's appellate ruling in Qualcomm's favor.

   Given the high profile of the case, many Ninth Circuit judges might be interested in taking a closer look at the case. But the Republican majority of commissioners (3 vs. 2) has in the past supported Qualcomm, as has the Republican federal government. FTC chairman Joseph Simons recused himself from the case earlier on, but is no longer recused, enabling him to cast the decisive vote (assuming it's still a 2-2 tie between the other commissioners). Car makers and various other technology companies wrote an open letter to the FTC, urging the agency to bring that petition. While the more likely outcome is still that the Republican majority wants to let Qualcomm off the hook, institutional considerations would weigh in favor of a petition for a rehearing, given that the Ninth Circuit panel that decided the case has the potential to complicate antitrust enforcement way beyond the Qualcomm case.

2. With respect to whether there's a will and a way, it's precisely the opposite outlook in Europe, where Ireland and Apple defeated the European Commission's competition chief Margrethe Vestager in the EU's General Court (formerly known as Court of First Instance).

   The Commission's 13-billion euro decision was deficient, self-contradictory, and hard to reconcile with the Commission's acceptance of special tax rules in other parts of Europe that do look like state aid at first sight.

   Mrs. Vestager's concerns are understandable, but if all of you have is a hammer, everything looks like a nail, and her hammer was competition law (in this case, state aid law). There is a problem, but it has to do with the fundamentally flawed architecture of the EU's Single Market. It would have to be solved politically, but realistically won't be. None of those structural issues makes a made-up "state aid" case any more meritorious, though.

   There's no doubt Mrs. Vestager and many others in the European Commission would want to appeal the EU General Court's decision to the Court of Justice of the EU (CJEU). But here's the problem: they'd have to raise a question of law, not fact, and the EU General Court found that the Commission simply lacked the facts to back up its ruling.

3. Also on Friday, the 21st Civil Chamber of the Munich I Regional Court plans to hand down a decision (which may or may not be a final--though it would be appealable--judgment) in a Nokia v. Daimler case (case no. 21 O 3891/19) over German patent DE60240446C5 on a "hybrid automatic repeat request (HARQ) scheme with in-sequence deliver of packets"). At the late-July trial, the court did not indicate any particular inclination. Daimler disputes the essentiality of the patent-in-suit, its validity, and raised a FRAND defense--all in all, three major hurdles for Nokia to overcome or it will fail to obtain the injunction it's seeking. But Munich is a hotbed for patent--and increasingly also for SEP--litigation. Another panel of judges of the same court just granted Sharp an injunction against Daimler.

   The same panel that will announce the aforementioned decision on Friday will hear another SEp case against Daimler on Wednesday. In practical terms, it's another Nokia v. Daimler case, though the plaintiff is Conversant Wireless, a patent troll asserting former Nokia patents against the Mercedes maker. The patent-in-suit to be discussed on Wednesday is EP2934050 on an "apparatus and method for providing a connection."

   Come November, the Dusseldorf Regional Court will presumably refer to the top EU court a set of legal questions regarding the licensing of SEPs to component makers. The regional appeals courts in other parts of the country may also be hesitant to enjoin Daimler while its suppliers are more than willing to take exhaustive component-level licenses on FRAND terms, at least at a time when the CJEU will be looking into this. But in the meantime, Nokia and its trolls are still trying hard to obtain injunctions against Daimler. Also, Wednesday's patent-in-suit is being asserted by Conversant against Tesla in Mannheim.

   In light of those circumstances making the case more relevant than I'd have thought back when it was filed, I may attend and report on the Wednesday trial. I hope the 21st Civil Chamber will take the necessary measures to prevent coronavirus preventions. On Sunday, a regional government agency said that COVID-19 infections are on the rise again in Munich, with 55.6 infections reported per 100,000 inhabitants over the course of the past seven days (approximately 2.5 times the statewide average). The minister of health of the state of Bavaria rebuked the local soccer club's leadership for sitting next to each other in an otherwise empty stadium last Friday--and that was an open-air event, unlike a patent trial.

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Google is preparing to petition the Federal Circuit to revisit Oracle's Android-Java copyright victory

While I'm not going to reiterate my positions on copyrightability and "fair use" in connection with Oracle v. Google (I fully stand by what I've written before and which the Federal Circuit has vindicated, but don't see a point in repeating what I've been saying for so many years), it does sometimes surprise me that there is so little interest in the proceedings. The latest example is that I haven't seen any media coverage of the fact that Google is preparing a petition for a rehearing en banc (a full-court review) of Oracle's recent appellate victory (this post continues below the image):

The regular deadline would have been in late April. In early April, Google asked for more time: until May 29, 2018. Oracle didn't oppose, and the Federal Circuit granted the petition.

An expert I talked to last month doubted that the Federal Circuit would take much interest in a matter of Ninth Circuit law. The Federal Circuit doesn't usually hear copyright cases, and here, even the Federal Circuit would only be bound to what it said in its Oracle v. Google "fair use" decision the next time a copyright matter, because of some patent claims being involved, is appealed from a district court within the Ninth Circuit. The circuit judges are more interested in the evolution of patent law (and other fields that must be--and aren't just coincidentally--appealed to the Federal Circuit).

Last time around, when the key legal question was copyrightability, Google even skipped this step and went straight to the Supreme Court (in vain). The fact that it's trying an en banc petition this time doesn't necessarily mean it's much more hopeful about its chances. Google may simply consider it safer to exhaust its options at this stage before trying another petition for writ of certiorari (request for Supreme Court review). It's like telling the Supreme Court: "We really tried everything to avoid having to file a second cert petition in the same case, but unfortunately we have to."

While I believe the Federal Circuit got both copyrightability and "fair use" perfectly right (for the reasons I stated in years past, over and over), I'd love the Supreme Court to accept to look at the matter--and, ultimately, to affirm. As an app developer I believe that would be a positive thing for the industry at large, with a few exceptions that merely prove the rule. An en banc review by the Federal Circuit--no matter the outcome--wouldn't be useful at all.

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Samsung files petition for Supreme Court review of 2nd Apple case weeks ahead of deadline

Stalling is something else: even though the Chief Justice of the United States had granted Samsung an extension until March 29 for a petition for writ of certiorari (request for Supreme Court review) relating to the second California Apple v. Samsung case , it made its filing on March 10, almost three weeks ahead of the deadline:

17-03-10 Samsung Cert Petition 2nd Apple Case by Florian Mueller on Scribd

Timing is often an interesting indication of a party's priorities. Over these past seven years of Apple v. Android lawsuits (it all started with HTC in March 2010), Android companies--HTC more than anyone else--have often shown the behavior of stallers, at least when they were (as Samsung is here) on the defending end of a litigation (obviously not when they were asserting standard-essential patents themselves). Even parties that don't intend to stall in the slightest (such as Oracle when enforcing its copyrights against Google) typically wait until the end of a filing deadline. It provides them with an opportunity to wait for further relevant developments (case law, public statements by key persons and entities, etc.). So I really am surprised here. Further remedies-related proceedings in that case are ongoing in district court, and a case management conference has just been postponed to next month. With a view to that conference, the Supreme Court is unlikely to make any decision either way in the meantime.

Maybe Samsung believes Apple is going to bring a motion for contempt in connection with an injunction and believes that a more advanced state of its Supreme Court petition will be helpful when seeking stays. It could also be the opposite: with the most important one of the patents-in-suit ('647, often called "quick links") having expired, Samsung might not fear anything and, instead, be pursuing this Supreme Court appeal mostly because of the fundamental principles at stake: overarching issues that affect Samsung in other cases, and not just Samsung, but even Apple would benefit from some of Samsung's proposed statutory interpretations here whenever and wherever its shoe is on the other foot.

The petition as a whole does look very principled. I've never seen a litigant of this nature and stature--no matter which party--who would have managed to be 100% consistent and principled, but of all the motions, petitions and other procedural steps taken by Android companies defending against Apple's (or, in other cases, Microsoft's or Oracle's) patent infringement assertions, I really can't remember a more principled initiative. Obviously, a petitioner's intentions aren't considered by the Supreme Court when deciding on certworthiness, but while the Supreme Court will just focus on the questions presented and their implications, I've been following the entire Apple v. Samsung dispute for almost six years, so I am trying to understand what the parties are trying to achieve. Their last filing with Judge Koh in San Jose said there was no progress regarding a settlement. But neither party has brought a new case against the other in years; instead, various pending lawsuits were withdrawn, with only two U.S. district court cases still awaiting final resolution.

What's ambitious about Samsung's petition is that it raises three questions for review, covering the big three patent litigation questions:

• validity (here, obviousness),

• remedies (here, injunctive relief, which is always a more important issue than damages unless damages would really be devastating), and

• infringement (here, whether all elements of the relevant "quick links" claim were infringed).

If the Supreme Court granted all three, it would be the most comprehensive patent case ever before the top U.S. court, and the implications of a decision could, collectively, go beyond Alice. How did Samsung's petitions fare in the past? The one regarding design patents was a slam dunk. I believed in it 100% from the start, at least in the "article of manufacture" theory, with respect to which cert was granted while a different theory wasn't evaluated. Last year, Samsung brought a little-noticed (I, too, had failed to notice before it was "game over") injunction-related petition that went nowhere, maybe because it wasn't deemed ripe for review. But when evaluating Samsung's track record with cert petitions involving Apple, "1 out of 3" would be the wrong conclusion since one has to weight the importance of the issues and the fact that Samsung only needed to prevail on one of its design patent damages theories, which it did except that there still is some uncertainty as to what the ultimate outcome would be.

The three questions raised have unique strengths-weaknesses profiles from a certworthiness point of view (just talking about certworthiness, not merits):

• The injunction part is where the petition says something that may get the Supreme Court, especially justices who either were involved with the famous eBay v. MercExchange appeal or care about the related principles anyway, very interested. Samsung argues that the Federal Circuit would basically (and this is my choice of words) gut eBay. I bet Apple will argue (as it did in the past) that a "causal nexus" between infringement and irreparable harm is none of the four eBay factors, while Samsung argues that it is needed. Justice Kennedy's eBay concurrence is nowadays, by far and away, the most influential concurrence in a patent case, and what he wrote in 2006 is probably the closest authority to its own position that Samsung could point to. But the strongest "argument" for getting the Supreme Court interested (which has nothing to do with the merits) is cited at the bottom of page 2 and the top of page 3 of Samsung's petition:

  "As to the injunction decision, its author stated at oral argument, 'I think eBay was wrongly decided .... I think patentees should get injunctions.'"

  The decision's author is Circuit Judge Moore. That statement might persuade the Supreme Court that this case is indeed about eBay reloaded, 11 years after. Samsung also quotes from Chief Judge Prost's dissent, which is quite persuasive, too. What makes Judge Moore's statement so powerful is that even a Supreme Court Justice who doesn't necessarily believe a reasonably strict "causal nexus" requirement is dictated by eBay (or even someone who disagrees with eBay altogether) might find that attitude so dismissive of the highest U.S. court's decision that the Supreme Court would want to take a look. Samsung's cert question quote the two words of the Federal Circuit's majority opinion that sound most eBay-incompatible: "some connection" (between an infringing feature and asserted irreparable harm)

• As far as the merits are concerned, Samsung's petition exudes maximum confidence with respect to the infringement-of-all-claim-elements part: they say that even if the Supreme Court didn't want to hear this case, the "quick links" infringement judgement "should be summarily reversed or vacated."

  This is the part that would be economically most impactful (about 80% of the $120 million verdict at issue), yet Samsung raised it only as the last of three cert questions. Samsung portrays its position here as what one might call a "no-brainer" that won't be difficult or time-consuming to decide.

  As a software developer, the problem I see with the way the Federal Circuit interpreted the patent here against a previous claim construction is that there's a huge number of client-server software patents out there and if (maybe not all, but still a number of) client-server patents could also be asserted successfully against single pieces of software (here, the client side alone), it would expose to developers to far greater risks. If I were in Apple's shoes, I would probably place particular emphasis on my resistance to this part of the petition because, even if Samsung succeeded on anything else, the net effect would be that roughly 80'% of the original verdict would be affirmed that way (with the rest potentially still going well for Apple), so Apple's PR message could be "most (if not all) of what we won got upheld." But Apple, just like Samsung with its petition, may set priorities based on key principles, and considering how hard Apple fought over the years, the injunction question is probably going to be even more meaningful to it, even if the most important one of the three patents-in-suit in this particular case has already expired.

• The strongest part of Samsung's argument for cert regarding (non-)obviousness is that it's the most litigated issue in connection with patents but the three judges of the Federal Circuit's panel, who got overruled by an en banc majority, all wrote dissenting opinions that warn against the consequences of the majority decision.

  The patents at issue in this context cover particular aspects of autocomplete and slide-to-unlock functionalities. So Samsung's first cert question relates to the two patents that are substantially less important from a damages point of view than the "quick links" patent.

There is an unofficial fourth issue that Samsung raises and it relates to the proceedings in the Federal Circuit. Samsung points to Professor Chisum's ("Chisum on Patents") and other legal experts' criticism of how things were handled procedurally, with an en banc decision overruling a panel without a hearing and even without further briefing. That part is relevant in connection with the merits questions (validity and infringement), but not to the injunction case, which was a separate appeal. Maybe Samsung felt that a formal cert question about Federal Circuit interna wouldn't be likely to get the Supreme Court's attention, so the procedural part is raised only as a means of undermining the crediblity of the en banc majority decision.

In the design patent damages case, the cert question that the amicus briefs submitted in support of Samsung focused on was also the one that succeeded (it simply was the most interesting question). It will be interesting to see what any amici supporting Samsung will focus on. If past amicus brief activity in different patent cases is any indication, the standard for injunctive relief may very well be the #1 issue for amici. However, if different amici focus on different ones of Samsung's cert questions, then we may see even more amicus brief activity in total here than we did in the design patents case.

The most interesting de facto amicus briefs may already have been filed: the dissents by Chief Judge Prost in the injunction case and by all three panel members, including Chief Judge Prost, in the merits case. Outside of the Samsung group, no one may be more interested in this cert petition succeeding (at least in part) than Chief Judge Prost, whose dissents were very passionate and persuasive in both cases. Samsung quotes her a lot, including among other things her position that the second Apple v. Samsung case "is not a close case" for an injunction.

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Samsung is now taking the second Apple v. Samsung patent case to the Supreme Court

The first Apple v. Samsung case went all the way up to the Supreme Court and has meanwhile gone all the way back to the Northern District of California to take a new look at the question of design patent damages. But the steps to the Supreme Court are like a revolving door for this huge commercial dispute: a new petition for writ of certiorari (request for Supreme Court review) is already in the making! This time around it's about the second California Apple v. Samsung case (the one that went to trial in 2014, resulting in a $119 million verdict).

Donald Chisum, the author of "Chisum on Patents," described the Federal Circuit majority's decision to overrule (in Apple's favor) a unanimous panel decision (which had been favorable to Samsung's interests) as what may turn out to be the appeals court's "most controversial decision ever." The patent law community at large was very, very surprised (to say the least). Here's another example (on Law360).

After months of not hearing or reading anything about the case except for an Apple motion in California that essentially said "let's get it over with," I looked up the Supreme Court docket in light of a deadline approaching these days and, indeed, under no. 16A823, the top U.S. court has received and granted an application for an extension of time. Samsung now has until March 29, 2017 to file its petition.

Right after the Federal Circuit decision had come down, I already outlined my thoughts on the prospects for another Apple v. Samsung Supreme Court appeal and discussed what kinds of issues might be raised in that event. In a little more than a month, we'll know what issue(s) Samsung's attorneys have decided to bring up.

I'm pretty sure that Professor Chisum's quote will appear in the petition. It's a silver bullet in this situation, where the name of the game for Samsung is to persuade the justices that a second Supreme Court review is warranted in connection with the same dispute (though it's technically a different case involving different patents and different issues). Merits are going to be less than secondary at this stage. Certworthiness in terms of one or more key legal issues and public interest (that's where amici curiae, "friends of the court," can be very helpful) is all that matters now.

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Federal Circuit unsurprisingly upholds its most surprising decision ever in Apple v. Samsung

On the first day after a long Thanksgiving weekend, the United States Court of Appeals for the Federal Circuit denied, without stating any particular reasons, a petition filed by Samsung earlier this month for a further rehearing en banc in an Apple v. Samsung matter that relates to the second California litigation between these companies. In a way, that "further" rehearing would actually have been the first "genuine" rehearing since the decision by a majority of the circuit judges in early October to overturn a panel decision in Samsung's favor had come down without any opportunity for further briefing, let alone a literal "hearing."

While the sudden reversal of fortunes in October was unbelievably surprising, it would have been a comparable surprise if the circuit judges had now admitted to not having followed proper procedures. There are petitions, ambitious petitions, long-shot petitions, and there are petitions like this one, which one might call "courtesy petitions": they just show to the next higher court that a party really exhausted each and every opportunity to achieve a different result before a (further) appeal. It's like saying "we really didn't mean to bother you and look how hard we tried to avoid it but... what can we do?"

The term "October surprise" is often heard in election years. The FBI's decision to reopen the Clinton email investigation (even if only for a few days) will probably go down in history as this year's October surprise. But that's just because patent law is a complicated, highly specialized field that only a small number of people keep an eye on. Otherwise this year's #1 October surprise would have been that lightning-out-of-the-blue decision by eight circuit judges (with one of them concurring only as far as the result was concerned, not on the reasoning) to overrule a panel decision on all of Apple's three trial-winning patents and to do so without even hinting at the possibility of another decision. The closest thing to a hint was that no decision had come down many months after Apple filed its petition for rehearing. But what can one conclude from silence? From what might be a mere administrative delay? Obviously parties can't submit briefing just because they see something is taking unusually long (without knowing what the key issues are, they wouldn't even know what to address).

Just before Thanksgiving, the Computer & Communications Industry Association (CCIA) filed an amicus brief in support of Samsung's petition. I've uploaded it to Scribd (PDF) and it's a good read. It appears normal to me that there weren't more filings: petitions for rehearing are long shots and a petition for a rehearing after a "rehearing" (even if not a hearing in a literal sense) is more than that. CCIA's brief discusses the confusion and concern caused by the Federal Circuit's handling of this matter. It talks about how commentators have reacted:

• Donald Chisum (yes, Mr. "Chisum on Patents") and his Chisum Patent Academy co-founder Janice Mueller wrote in a Patents4Life guest post that the October surprise "may turn out to be the court's most controversial decision ever."

  Imagine that: the author of the leading reference on U.S. patent law writes this may be the most controversial decision in Federal Circuit history. But it gets even better (or worse, depending on one's perspective): after disagreeing with the majority of the circuit judges that there was nothing precedential in the October decision, the authors conclude that the Federal Circuit's "highly unusual posture [in this case] may even cause some to question whether the decision smacks of pro-patentee bias."

  Samsung now faces the hard decision of a second cert petition in the same dispute (though this here is a separate case and a totally different issue from design patent damages). Should Samsung decide to fight the good fight here, Mr. Chisum's Patents4Life guest post will be a silver bullet (actually, "silver" may be an understatement).

• The 717 Madison Place blog focuses on oral arguments and the Federal Circuit. Its author, Denver-based patent attorney Bill Vobach, also found it "odd that the Federal Circuit didn’t conduct oral argument or further briefing." One possible reason in Mr. Vobach's view--and there's nothing implausible about that theory, though there isn't any hard evidence either--is that multiple circuit judges might have had to recuse themselves in the event of further briefings, in which case an 8-3 decision (or 7-1-3 to be precise, but the "1" concurred with the "7" on the outcome, so I view it as 8-3) would have been impossible and the vote might have been as narrow as 4-3. Mr. Vobach interestingly observes that Circuit Judge Newman would have been the senior active member of the majority (as the Chief Judge dissented) but "[s]he must have not wanted to write the majority opinion — as odd as that sounds — and assigned the role to Judge Moore."

  Is there anything in this case that is normal? If there is, I must have missed it...

Even Apple's outside counsel, Wilmer Hale's legendary Bill Lee, was apparently surprised. The preliminary statement of Samsung's petition referred to Mr. Lee likening the case to a "Disneyland adventure" in an interview, saying it "had more twists and turns than Mr. Toad's Wild Ride" (this post continues below the document):

16-11-07 Samsung Motion for 2nd Hearing by Florian Mueller on Scribd

Samsung's petition raises both substantive and procedural questions. In a footnote, it cites to a National Law Review article (by Lucas I. Silva) that said "the decision to grant en banc review will provide powerful ammunition to parties asking the Court to rehear their cases, and it will no doubt be cited in the many petitions for rehearing that are likely to be filed going forward." That is the kind of impact assessment on the law that might persuade the Supreme Court to take a look at the case.

Another footnote quotes a Law360 article (the one with the "Wild Ride" quote) that quotes Mr. Lee as having told the reporter that "[f]or a time, there was some question as to whether Apple would seek en banc review at all." The rest is history and an unusual story of "who dares wins," but "who dares wins" goes both ways: Samsung may ultimately win by daring to file another petition for writ of certiorari.

According to Samsung's petition, there were three cases in which only limited aspects of a case (not a wholesale reversal like here) were decided by the full Federal Circuit without further briefing and argument, and in one of them there was a dissent that objected to a decision to "bypass[] this court's standard operating procedure", furthermore alleging a violation of the Federal Rules of Appellate Procedure and expressing dismay at having been derprived of input required to make good decisions. That case was Abbott Labs. v. Sandoz, Inc (2009). And the dissent at the time was authored by Circuit Judge Newman. The same Circuit Judge Newman who now, according to fellow blogger Bill Vobach, apparently didn't want to write the majority opinion. That 2009 dissent may be the reason.

Federalcircuitology is the new Kremlinology.

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Majority of Federal Circuit sides with Apple against Samsung: impact assessment, next steps

Only a few days prior to the long-awaited Supreme Court hearing on design patent damages (Tuesday, October 11), there's some surprise #appsung news. For the second time this year, Apple's world-class legal team achieved a turnaround that any litigator would be proud of for the rest of his life. In January, the Federal Circuit finally granted Apple an injunction against certain Samsung devices. While useless in practical terms, Apple managed to shift the goalposts in its favor even thought he hearing hadn't gone well for it. Then, a month later, a three-judge Federal Circuit panel threw out Apple's second California case against Samsung, but now the full court (11 judges) overturned the panel with an 8-3 majority decision (PDF), thereby reinstating Apple's $119 million (roughly 5% of what it originally sought) spring 2014 verdict.

Two surprise turnarounds within nine months of each other are stunning. But this is a dispute between companies, not the legal equivalent of the Olympic Games. So what is this good for?

Enforcement of patents-in-suit won't affect Samsung's U.S. sales

The three patents are the "quick links" patent (which expired earlier this year), the slide-to-unlock patent (which even several Samsung devices at issue in this case weren't accused of infringing and which has lost relevance in the age of Touch ID), and the autocomplete patent, which never appeared to be a high-priority patent-in-suit in this case.

At this stage (who knows what new information will surface over time) there's no reason to assume that any Samsung device will have to be modified (beyond what has already been done) as a result of Apple's two Federal Circuit wins.

Implications for damages

This litigation is now about money (and reputation). The Federal Circuit has remanded the case to California for a determination on willfulness. This could result in willfulness enhancements (triple damages). It's possible that this means more money for Apple but I doubt there will be much impact, if any. Willfulness has an objective and a subjective dimension. The objective dimension appears hard to establish, given that a Federal Circuit panel (even though overruled later) found Apple had no case.

However, Apple might seek supplemental damages for the roughly two years between the cutoff date for the spring 2014 trial and the expiration of the "quick links" patent (which amounted for the bulk of the damages award, so it's the only one worth thinking about in this context). There would likely be an argument over whether or not Samsung continued to "infringe."

I must admit that I haven't been able to figure out from the en banc opinion what actually happened to the damages-related parts of Samsung's appeal. Samsung had argued, especially with a focus on the "quick links" patent, that the district court prevented it from presenting important evidence about real-world deals such as Apple's license deals with Nokia and HTC. The Federal Circuit panel never reached those parts of Samsung's appeal because it threw out the case on the merits ("In light of these holdings, we need not address the other issues on this appeal."). I tried to find a reference to those evidentiary issues in the en banc opinion but couldn't find any. If you've been more successful in this regard, please let me know via my contact form...

Maybe I overlooked something. Or maybe someone else did.

Unusual procedural events

Apple's rehearing petition had been pending for more than half a year and I had already started wondering why there was silence on the docket, and then the Federal Circuit rendered an en banc opinion instead of first granting the petition, then getting some more briefing, holding a rehearing, and finally deciding.

As at least one of the dissents notes, this is unusual.

What's also unusual is that the eight judges who were not on the panel (the three on the panel stayed firm and wrote their dissenting opinions) had to actually disagree with the panel on several issues in order to arrive at this complete reversal of fortunes with respect to Apple's offensive case.

The primary reason I had been initially (before things started taking unusually long) skeptical about Apple's petition for rehearing was that I thought a unanimous panel decision by a panel that was not an outlier -- in fact, it was pretty representative of the composition of the court as a whole, with frequently defendant-friendly Chief Judge Prost on one side of the spectrum and previously Apple-friendy Circuit Judge Reyna on the other end -- was less likely to be overruled than an outlier position or a 2-1 majority ruling.

While there are differences between the approaches of Federal Circuit judges, I wouldn't have thought that eight non-panel judges would totally agree that the three panel judges got everything (except the part about Samsung's offensive counterclaims) wrong. This is just a highly unusual discrepancy.

The combination of all of this is strange, but there really isn't anything there that would give rise to conspiracy theories like Bill Clinton's tarmac meeting with the Attorney General.

What one could imagine (and I'm not saying this is something I necessarily believe to be the case, but it would be plausible) is that somehow the eight non-panel judges' agreement was made easier by some circuit judges wanting to settle accounts with, or weaken, the Chief Judge. Previously, Chief Judge Rader was somewhere between the Federal Circuit mainstream and the "radical" pro-right-holder wing. Chief Judge Prost isn't always defendant-friendly but certainly in a completely different part of the spectrum of positions. It could be that various Federal Circuit judges feel she doesn't really represent them. She's not their boss in a strict sense anyway, but chief judges often get to speak for their court and it could be that there is a disconnect between her and some old-school patent radicals.

Prospects for a second Apple-Samsung Supreme court case

I haven't been able to find a Samsung statement on this yet. I guess Samsung's lawyers are now completely focused on the design patents case. So is Apple. But I'm not going to wait for the parties before I me share my thoughts as to the prospects for a Supreme Court appeal in this context here:

• It's clear that the three panel judges phrased their dissents (which I like very much) with the objective to encourage, and provide ammunition for, a further appeal. Dissenting opinions always contain statements that can be viewed as invitations for an appeal but in this case the indications are unusually clear.

• I would be disappointed if Samsung gave up, but I also want to be realistic: a further appeal here would be harder than last time. Psychologically, the Supreme Court might just not have an appetite for yet another #appsung case. But what makes this here a significant challenge for Samsung's lawyers (which are at the same level as their colleagues representing Apple) is that it won't be easy to set the right priorities. It's not just about where the en banc might be demeed to have made mistakes. Before the Supreme Court looks at the merits, it evaluates whether the issues presented warrant certiorari. And to achieve that, Samsung will also want to get broadbased support from amici curiae, as it did in the design patent case.

  The Holy Grail is an issue, or set of issues, that the Supreme Court will be willing to look at, that various stakeholders will encourage the Supreme Court to rule on, and where the Supreme Court will likely reverse the appellate opinion.

• The dissenting judges point out that a full-bench review is not meant to just overrule a panel because of merely another opinion on an issue. It takes more than that. And they believe the court would have benefited from a rehearing (instead of handing down a written decision right away).

  The standard for a full court overruling an appellate panel is a potential issue to be reviewed here. I just don't know how attractive an issue that is for the Supreme Court and for potential amici. The fact that a decision came down without another hearing appears to me (unless there's some very interesting precedent that I don't know) to be something that wouldn't likely get traction, but even if it did, it simply wouldn't help: Samsung's lawyers would just be banging their head against an eight-judge wall then, to no avail.

• On the substantive side, two of the patents (autocomplete, slide-to-unlock) raise questions about the weight to be given to secondary indicia of nonobviousness and the evidentiary standards for invalidation. Circuit Judge Dyk (one of the most experienced ones) explained in his dissent:

  "[T]he majority lowers the bar for nonobviousness by refusing to take account of the trivial nature of the two claimed inventions. With respect to the '721 patent, the slide to unlock feature was known in the prior art (Neonode) and the only innovation is an image associated with the sliding gesture from fixed starting to ending points. [...] With respect to the '172 patent, the autocorrect feature was known in the prior art (Robinson), and the only innovation is displaying contemporaneously the text to be autocorrected. [...] Such text displays have long been known in the prior art (though not specifically in connection with autocorrect display).

  Treating such minimal advances over the prior art as nonobvious is contrary to KSR, where the Supreme Court confirmed that the obviousness doctrine is designed to ensure that “the results of ordinary innovation are not the subject of exclusive rights under the patent laws."

  I could easily picture some great amici siding with Samsung on obviousness and it might be reasonably interesting to the Supreme Court. But it would not help Samsung with respect to where most of the money is in this case: the "quick links" patent. Samsung could, of course, raise any number of issues. But it would be an economically undesirable outcome for Samsung if the petition was granted with respect to obviousness and rejected with respect to the "quick links" patent.

• The focus must be on the "quick links" patent (I believe Samsung should even focus on it exclusively but that's their call), one issue raised by the dissenting opinions is that Apple and Samsung agreed, during this litigation, on a certain claim construction, and at least one dissenting opinion says the majority didn't really respect that agreement between the parties. What I find more interesting is that the majority argues an Android library for identifying phone numbers etc. in an email or other text document constitues a "separate" server because it runs in a different memory location. Chief Judge Prost explains very well why that doesn't make sense and actually vitiates an important claim limitation:

  "The majority asserts that, in light of the specification, a program that is 'structurally separate,' without more, satisfies the “‘separate’ requirement.' [...] We did not so cabin the word 'separate' in our Motorola construction. Because no two program routines may physically occupy the same memory at the same time (i.e., any two separate program routines are, by definition, separate in storage), the majority’s interpretation effectively and erroneously reads 'separate' out of our construction. Relatedly, the majority also fails to give effect to the requirement under our construction that the routine is a server routine, not any piece of code. That is significant because we relied in Motorola on the plain meaning of 'server,' which entailed a client-server relationship."

  If Samsung's attorneys found a way to raise this kind of issue in a general, certworthy form by presenting a question that the Supreme Court may very well decide to review, then that would seem the most promising approach to me based on what I know today, only about 24 hours after finding out about the Federal Circuit decision.

There should be a cert petition. I think it would have a very positive effect (not thinking specifically of this case but with a view to other patent litigation) if it was granted. And in that case, I think the panel decision should be reinstated. But now Samsung's lawyers have to design a strategy, which was much clearer to see in the design patents context than it is here.

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Google, Facebook, HP, others warn a company could lose its entire profits due to a single patented icon

Yesterday Apple responded to Samsung's petition for a full-court review of an appeals court ruling upholding hundreds of millions of dollars in design patent damages (this post continues below the document):

15-07-20 Apple Response to Motion for Rehearing by Florian Mueller

I have no problem with what Apple's filing says, at least none that I would have been able to identify without a lot of research, but I do have a huge problem with what it does not say. For a truly great company like Apple the objective should not merely be to defend a favorable ruling but also to advocate good interpretations of the law and good policies. Regrettably, Apple's filing doesn't even try to justify why anyone--potentially even including Apple, not in the Samsung case but in whatever future context--should be liable for the totality of their profits for infringing only a single design patent with a product that could theoretically infringe multiple design patents (thus resulting in multiple disgorgements of entire profits, which would at some point ruin everyone, even Apple), not to mention thousands of technical patents, copyrights, trade secrets, etc.

Apple argues that this smartphone case has different characteristics than Samsung's hypothetical example of a disgorgement of total profits could affect the manufacturer of a car only because of a cupholder infringing a design patent. According to Apple, the design patents at issue cover the "iconic" look of the iPhone. But Apple's legal argument is that there is no room in the statute for any kind of apportionment, and on that basis, the cupholder example would apply. Of course, it would still be up to a jury to decide, but based on Apple's proposed and supported interpretation of the law, the judge presiding over a cupholder design patent trial wouldn't have a choice but to instruct the jury that a total, unapportioned disgorgement of profits is possible under the law.

Apple can do better than that. In the standard-essential patents context, Apple consistently advocates the "smallest saleable unit" approach. Sure, SEPs are utility (technical) patents and design patents fall under a special rule. Therefore, Apple is not inconsistent on the law, but it is inconsistent in terms of the policies it promotes.

A request for a rehearing is a long shot, generally speaking and even more so after a unanimous panel opinion. That's why Apple's opposition to Samsung's petition is more likely than not to succeed, and Apple's lawyers just focused on what they believe will dissuade the Federal Circuit from taking another look at this matter. For most companies in the world, a few hundred million dollars in design patent damages would be a huge opportunity. But Apple could afford to take a more strategic perspective. It wants design patents to be strong and that makes sense. However, I'm convinced that all companies with a focus on making products (as opposed to patent enforcement) should be able to agree that the possibility of multiple disgorgements of entire infringer's profits is absurd and dangerous.

I'm sure there's consensus across the industry on this, but at this procedural stage it's probably much harder for Samsung to drum up support in the form of amicus curiae briefs than it would be in the event that the petition is granted or, especially, if it brought a petition for writ of certiorari (request for Supreme Court review). Still, several advocacy groups as well as a number of high-profile industry players, notably including not only Google (a Samsung partner) but also Facebook, HP and eBay (among others), have chimed in. Here's the brief that the group including (among others) Google, Facebook and HP filed (this post continues below the document):

15-07-01 Dell HP Google Facebook EBay Et Al. Brief by Florian Mueller

The greatest strength of that amicus brief is that it provides examples that, under Judge Koh's and the Federal Circuit panel's reasoning, would all result in a potential disgorgement of unapportioned infringer's profits. It mentions the numerous components in a "smart television" set, and notes that the aspects that could be covered by design patents include "even the shape of a single icon within an application." This example comes up again in connection with "[s]oftware products and online platforms":

"A design patent may cover the appearance of a single feature of a graphical user interface, such as the shape of an icon. That feature [...] may appear only during a particular use of the product, on one screen display among hundreds, but the panel's decision could allow the owner of the design patent to receive all profits generated by the product or platform, even if the infringing element was largely insignificant to the user and it was the thousands of other features [...] that drove the demand generating those profits."

The largest "online platforms" are Google and Facebook, and just imagine how crazy it would be if, for example, a single icon in a submenu of the Facebook settings was covered by a design patent and someone then collected the totality of Facebook's profits because of a jury being told by a judge that this was allowed under the law.

I'm more on the conservative side and that's why I don't blame Apple for arguing that courts should interpret the law as it stands and not legislate from the bench based on a prediction of what lawmakers would decide if they looked at an issue again. Nor would I (or did I) blame the Federal Circuit panel for having said the same. But the respect in which I disagree with Apple and the panel is that when a rigid interpretation of a law is so clearly ridiculous under today's circumstances, the courts should at least make an effort to find ways to interpret it reasonably. CCIA, an industry group whose members include Samsung and several of its amici, had made one proposal for how to thread the needle, and the panel opinion had not even addressed it, at least not specifically. CCIA has also filed an amicus brief and I still believe this is worthy of consideration, be it by the Federal Circuit or the Supreme Court.

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Samsung requests full-court review of appellate decision on Apple's design patents: claim construction, damages

Samsung filed a petition yesterday for an en banc (full-court) rehearing concerning the design patents-related issues relating to the Federal Circuit's mid-May appellate opinion in the first Apple v. Samsung case. Apple did not file a petition concerning the part that was unfavorable to it (the one on trade dress), so Apple appears to accept that a third California trial in this first case (one also took place last year in the second California Apple v. Samsung case) will be necessary.

There are different angles from which to look at the part on design patents. Samsung did derive certain commercial benefits, including market share, from building products approximately five years ago that looked significantly more similar to the iPhone and iPad than certain alternative Android-based products made by, for example, HTC and Motorola. Should any valid intellectual property rights have been infringed that way, Apple would have to be compensated, not because it would need the money but as a matter of (in that case) justice. However, the longer the whole Apple v. Samsung litigation takes (it started more than four years ago and ended everywhere except in the United States last summer), the more I am concerned about some of Apple's core positions in this context, though I can understand that some people in Cupertino were not amused when they saw some of the early Samsung Galaxy products. The two key concerns here relate to overbreadth and overcompensation:

• If correctly interpreted and applied, design patents are relatively narrow intellectual property rights. However, juries really need help from judges to get this right. The ability of the average jury member to independently distinguish between functional and ornamental elements of a design is presumably not greater than that to figure out the inner workings of event handlers in operating systems or just-in-time optimization strategies of compilers. Technical patents are hard to understand without specialized knowledge, but just like most consumers don't care to learn about what makes their smartphones work, they also don't usually think about smartphone designs in terms of functional and non-functional, ornamental elements. As a result, they will often consider a design patent infringed because of functional rather than ornamental similarities, and they will consider a design patent valid just because the overall combination of technical and ornamental aspects appears to deserve protection, though an analysis focused on only the ornamental parts might lead to a different conclusion.

  What's even worse is that an overbroad interpretation of design patents can result in monopolies over abstract concepts such as general screen layout and user interface ideas.

• If an entire product constitutes an infringement of intellectual property rights, it's reasonable that damages exceed the infringer's profits. However, in the hypothetical scenario of a product that is highly multifunctional, does not infringe any valid technical patents, but is deemed to violate three design patents held by three different right holders, it would be irrational to let each of the three design patent holders collect the total profits made with that product.

  Apportionment alone does not guarantee reasonableness, but there can be no reasonableness in infringement damages without it.

Considering that the panel decision was unanimous and that the panel included the appeals court's chief judge, I wouldn't hold my breath but I still think it would be the right thing for the Federal Circuit to give further thought to the points Samsung's lawyers have made in their petition for en banc rehearing. And if not, then I sincerely hope Samsung won't give up. Apart from injunctive relief over standard-essential patents, I haven't seen a "certworthier" matter in all the smartphone patent disputes I've been watching since 2010.

I'll show you Samsung's petition and comment on a couple of points below the document:

15-06-17 Samsung Petition for en Banc Rehearing Re. Design Patents by Florian Mueller

Samsung's petition discusses the absence of guidance for the jury with respect to functional (thus irrelevant) aspects of Apple's design patents first, followed by damages. This does not say anything about its priorities. It's logical to discuss liability prior to remedies.

The legal argument for a full-court review is mostly about conflicts with prior decisions (some of which were made by other circuit courts, going back to when there was no exclusive jurisdiction over patent law) and also about the exceptional importance of these issues.

Samsung's lawyers note that "[i]n contrast to its detailed analysis of trade-dress functionality, the panel spent barely 3 pages rejecting Samsung's argument that the district court had improperly allowed the jury to base its design-patent infringement finding on the same or similar functional features." While I agree with Samsung (by now) that Judge Koh should not have instructed the jury to just compare those design patents, based on the overall appearance of the covered designs, with Samsung's products and should instead have clarified which ones are legally irrelevant because they are functional, I don't think the panel had to write more than three pages. Those three pages were sufficient for the judges to explain their reasoning. The number of pages also doesn't necessarily reflect the amount of thought that went into this part of the ruling. One can spend weeks thinking about a single word or write ten pages in a couple of hours.

Their argument on substance is much stronger. For example, I like this passage:

"[T]he judicial obligation to construe the scope of a design patent cannot be satisfied merely by reciting the term 'ornamental,' which already appears on the face of the patents themselves [...]. Nor can it be satisfied by telling the jury to look at the 'patent figures' unaided by guidance as to what is (or is not) ornamental about them, for the term 'ornamental' is not self-executing, and there can be no doubt that the figures of Apple's design patents contain functional elements, as the panel's trade-dress holding confirms."

With respect to damages, the panel said that it had no alternative under statutory law but to affirm Judge Koh's decision to tell the jury that design patents entitle their holder to a total disgorgement of infringer's profits. 35 U.S.C. 289 says an infringer of a design patent is liable "to the extent of his total profit," but I still don't believe the Federal Circuit panel couldn't have found a way to decide in favor of reasonableness.

Samsung's petition outlines three ways, any single one of which (and especially the combination of two or all three of which) would make it possible to achieve a proportionate result nonetheless:

• "[T]he phrase 'to the extent of his total profits' is best read as a term of limitation that makes total infringer's profits a ceiling not a floor;"

• "the phrase 'profit made from the infringement' shows that Section 289 permits only profits caused by the infringement"

  In this context, the petition mentions an interesting fact relating to the legislative intent:

  "[T]he bill's sponsor, Representative Martin, disclaimed any intent to displace the bedrock causation principles underlying patent law, reassuring skeptics that the new act would not permit total-profits awards 'without any proof that this arises from the use of the design' or where 'those profits arise … from various other circumstances which may enter into the manufacture.' 18 Cong. Rec. 835 (1887) (Rep. Martin) (emphases added [by Samsung's lawyers])."

• "the term 'article of manufacture' is most naturally interpreted to mean the portion of a product as sold to which the patented design is applied, as otherwise a defendant could be held liable for all its profits multiple times over if its product infringed design patents held by multiple patentees."

  (This point was stressed by industry group CCIA in an amicus brief.)

Cases cited in this context include "an award of infringer's profits from sale of a watch case to which the design was applied and not from sales of the watch itself." I'm quite sure Apple would not want to be liable for total profits made with its smartwatch if someone happened to hold a design patent on its case...

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Appeals court issues formal mandate to trial court in Oracle v. Google Android-Java copyright case

One month and one week after the appellate opinion was handed down in the Oracle v. Google Android-Java copyright case (initial reaction to ruling, follow-up, and detailed refresher Q&A, the United States Court of Appeals for the Federal Circuit has just issued a formal mandate to the trial court, the United States District Court for the Northern District of California, remanding the high-profile lawsuit for a determination on fair use and (if Oracle prevails) remedies. Here's the document (this post continues further below):

14-06-16 Oracle v. Google Formal Mandate to District Court by Florian Mueller

In most of the Federal Circuit cases I watched, the deadline for a petition for rehearing appeared to be one month after the ruling, though in at least one case it appeared to be 45 days. In any event, the standard two-week deadline does not appear to apply in these kinds of cases. It appears that Google has elected not to file a petition for a rehearing. According to Rule 41 of the Federal Rules of Appellate Procedure, the appeals court's "mandate must issue 7 days after the time to file a petition for rehearing expires". The opinion came down on May 9. One month for a rehearing petition means the related deadline was June 9 -- and now we're seven days past that presumed deadline.

It's possible but still not certain that proceedings will resume in district court in the very short term. Maybe Google has realized that it can't prevail on copyrightability and will now focus on fair use, its sole remaining defense (I explained earlier this year why I don't see a "fair use" case here, though I now tend to agree with Google on fair use in the Google Books context), and exhaust all appeals in connection with fair use. That would make sense. But it could also be that Google files a petition for writ of certiorari with the Supreme Court of the United States. The deadline for that one is 90 days after entry of judgment. There has been speculation about the possibility of such a petition. I don't think the Federal Circuit's API copyrightability holding is "certworthy" because the Federal Circuit definitely got it right and just upheld longstanding principles of U.S. copyrightability rules that don't warrant another high-level review because they're crystal clear, but Google will obviously do what it believes is best for Google. I hope for both Google and Oracle that they can soon agree on a license deal, but until they have an agreement in place, they'll keep fighting in court, possibly all the way up to the Supreme Court.

Depending on how quickly things resume in district court, we may see a Google motion for a stay in the near term. I'll continue to watch the relevant dockets and will blog about further developments. At that stage or even before I may address some of what has been said and written about the Federal Circuit opinion since my last blog posts about this case. I continue to believe that the Federal Circuit opinion is excellent news for software developers (who need reasonably strong IP protection), while affirmance of the district court ruling would have weakened copyright protection for software to a very worrying extent (despite Judge Alsup's efforts to present his non-copyrightability ruling as a narrow decision).

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Federal Circuit denies Google's Motorola a rehearing: Apple's ITC case to resume shortly

This morning the Mannheim Regional Court ordered a stay of a Motorola Mobility v. Apple FRAND rate-setting case. Apple had requested the stay. Less than ten hours later, Apple scored another win over the Google subsidiary: the United States Court of Appeals for the Federal Circuit just denied a motion by Motorola Mobility for a rehearing. Google tried to persuade the appeals court to reconsider a ruling in Apple's favor that had come down on August 7. 2013. As a result, two Apple patents asserted against Android will be at issue in an ITC investigation that is going to resume shortly. The appeals court will issue its mandate in a week from today (November 15, 2013). On remand, Apple will have the opportunity to win a U.S. import ban against Motorola Mobility.

The two patents that Apple revived on appeal are multi-touch patents that have previously been asserted, then withdrawn, but 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".

This is very significant progress for Apple in its patent enforcement efforts against the Google subsidiary and the wider Android ecosystem, at the end of the week before the Apple v. Samsung limited damages retrial in the Northern District of California.

Apple's lead counsel on this appeal was Orrick Herrington Sutcliffe's Joshua Rosenkranz, who will also represent Oracle in less than a month at the Federal Circuit hearing on the Oracle v. Google Android-Java copyright appeal. He also represents Apple against Motorola in two FRAND appeals (the "Posner appeal", which Apple appears to be winning as well, and the "Wisconsin dismissal appeal", which is at an earlier stage).

Motorola filed an ITC complaint against Apple before Apple brought its countercomplaint. Just like Apple's complaint, Motorola's complaint failed at the ITC, but while Apple now gets a second chance, my interpretation of the official recording of an appellate hearing held last month is that Motorola's complaint is probably not going to be revived by the Federal Circuit.

Here's the order denying Google's Motorola a rehearing and announcing the issuance of a mandate to the ITC for November 15:

13-11-08 Order Denying Google's Motorola a Rehearing on Apple's ITC Appeal by Florian Mueller

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