Google contradicts itself in public interest statements on two Apple-Samsung ITC cases

This week various parties filed public interest statements in connection with the ITC investigations of Samsung's complaint against Apple, where FRAND issues play a key role, and Apple's complaint against Samsung over non-standard-essential patents. I may comment on some more of those submissions in the days ahead. In this post I'm going to show how Google contradicts in connection with one investigation its own statements made in connection with the other investigation.

The fact that both investigations just had their filing deadlines for public interest statements facilitates this comparison between what a given party says in one case versus what it says in the other case.

I have explained before that companies who are plaintiffs as well as defendants in similar cases obviously can't take consistent positions in both contexts, but I wish to reiterate my belief that there's a fundamental difference between pleadings and policy statements. No one can blame a lawyer for doing his job and advocating plaintiff-friendly rules when acting for a plaintiff and defendant-friendly rules when representing a defendant, but if the same lawyer wants to run for public office, he has to tell voters where he stands on the issues and contradictions are not acceptable. He can't advocate tax cuts for the rich in an affluent neighborhood and the opposite in another part of town.

Google is attempting to fool the ITC by filing an anti-IP (and anti-ITC) position in its own name and a position in favor of rigid enforcement of standard-essential patents in the name of its wholly-owned, micromanaged subsidiary Motorola Mobility. As a matter of fact, Google's statement in its own name is signed by the head of its litigation department, Catherine Lacavera, who last month represented both Google and Motorola, as a corporate representative of both, at three court hearings in Munich, Germany (here are my reports on the hearings in which Nokia was the plaintiff and Google participated as an intervenor and the one involving Google's Motorola Mobility as a party). But the Google statement to the ITC in Motorola's name was formally submitted by the law firm of Quinn Emanuel, though it was likely approved, if not even co-authored, by the same person(s). Furthermore, it's well-documented in the public record (I published a couple of related documents) that Google sends arbitration proposals concerning Motorola Mobility's standard-essential patents to Apple on Google stationery. This may have been the first time in the history of United States International Trade Commission that the same party, on the same day, submitted an anti-IP/weak-ITC policy statement and a pro-IP/strong-ITC one.

In the following I'll juxtapose some of Google's statements, and I believe the contradiction is so striking that it doesn't require a whole lot of explanation.

Google

Inv. no. 337-TA-794 (Samsung's complaint)	Inv. no. 337-TA-796 (Apple's complaint)
Where [...] the Commission has found a violation of Section 337, the ordinary presumption in favor of issuance of an exclusion order should apply. In particular, where a party has been unwilling to license [...], a rule that would allow it to continue to import infringing products with impunity would undermine [...] the statutory mandate of the ITC. It would, in short, allow infringers to cause the exact harm on domestic industry and United States consumers that Congress intended the Commission to prevent.	Apple seeks an exclusion order against Samsung, the largest manufacturer of devices running the Android mobile platform. To justify this extraordinary remedy, which would harm consumers and sellers alike in one of this country's most critical and fastest-growing industries [...]
The authorized remedies under 19 U.S.C. § 1337 promote the public good by creating appropriate incentives to license intellectual property and preventing the importation of infringing goods from harming domestic markets, and in particular, competitors who have properly invested in developing and licensing valuable intellectual property. [...] [T]his Commission should not upset the balance set by Congress and decide that general policy reasons should deprive a patent owner of a remedy for unlawful infringement. That is a decision for Congress to make. The "public interest" exception to the statute has historically been narrowly and rarely applied, reflecting the proper balance between the public’s interest in competition from imported goods and the enforcement of patent rights, which has furthered technological advancement in the nation.	In determining whether to issue an exclusion order, the Commission must balance any harm to the public interest against what "would be gained by protecting the patent holder within the context of the U.S. patent laws." In this investigation, the Commission can and should conclude that an exclusion order would advance no public interest. [...] Should the Commission issue an exclusion order under these circumstances, it would reward only Apple's private interest [...] For the foregoing reasons, should the Commission find a violation of section 337 in this investigation, it should exercise its discretion and decline to issue an exclusion order or, in the alternative, allow a grace period of at least six months before issuing the exclusion order.
As the Federal Circuit has held, the Commission is therefore in a different position than the district courts, which are required to apply the traditional four-factor [eBay v. MercExchange] test for equitable relief before issuing an injunction[.] Commentators may argue that the Commission should take into account the recent order by the District Court for the Northern District of Illinois (Posner, J., sitting by designation) dismissing a patent action and stating in part that Motorola had not carried its burden of proving a right to injunctive relief [...] But as the Federal Circuit held in Spansion, those concerns should not apply here because [...] "Congress intended injunctive relief to be the normal remedy for a Section 337 violation and that a showing of irreparable harm is not required to receive such injunctive relief."	"When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest." eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 396-97 (2006) (Kennedy, J., concurring). [...] This is just such a case: the patents underlying the requested exclusion order do not represent major innovations and do not drive consumer demand.
If an implementer of standards is not willing to pay license fees like its competitors, it should not be heard to complain when it faces exclusion orders for its unlawful importation of infringing devices. Indeed, to hold otherwise harms the lawful competitors who do pay license fees. Competition is served by barring unlawful infringement where others in the market are competing legally.	Although an exclusion order would help Apple's private interest by eliminating its biggest competitor, it would greatly harm the public interest by significantly reducing consumer choice in smartphones, and by likely causing a significant smartphone shortage. [...] In short, since [...] the smartphone market has become increasingly marked by "few suppliers and limited availability of products to U.S. consumers," [...] it can ill afford an order excluding Samsung's Android devices.

Any of the statements on one side can be held against the ones on the other side. For example, the argument that there are "lawful competitors who do pay license fees" would also be a reason for banning Samsung's products since HTC is paying royalties to Apple. The most striking contradictions are that Google describes an import ban as an "extraordinary remedy" in one case and refers to the "ordinary presumption in favor of issuance of an exclusion order" in the other (emphasis mine in both quotes), and that Google wants the ITC to apply the eBay injunction factors in one case (even adding a causal nexus requirement to eBay) and to ignore them completely in the other. And all of this is even more astounding when considering that the public interest discussion relating to Samsung's complaint is all about standard-essential patents. Google wants SEP holders (who made a FRAND pledge others relied upon) to have easy access to import bans and other injunctions while it wants to raise the bar for those who don't have any licensing obligation (FRAND or whatever) at all.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Apple tells court it 'has a general policy against licensing its inventions, particularly to competitors'

In July, Apple and wholly-owned Google subsidiary Motorola Mobility gave notice of their appeals to the Federal Circuit of different parts of Judge Posner's dismissal of one of their two-way lawsuits. Google (Motorola) is fighting Judge Posner's denial of injunctive relief over FRAND-pledged standard-essential patents for high-level reasons while Apple's appeal is much more case-specific: it's pushing for an injunction (and, as a lower priority, damages) based on three of the 12 patents that used to be at issue in this case.

Apple and Google agreed on an extension of time for their pleadings, which the appeals court granted. While this is a cross-appeal of a two-way lawsuit, Apple is formally the appellant and Motorola the cross-appellant. Apple had to file its opening brief last week, but I obtained a copy of the public redacted version of that brief only today. It's really a very interesting document and I may also talk in other posts about the issues it raises. In this post, however, I'll focus on only the question of Apple's willingness to extend licenses to competitors. This would be a highly interesting topic at any point in time, but it's even more relevant with a view to the discussion of the Apple-HTC settlement at the Apple v. Samsung injunction hearing that will take place the day after tomorrow.

These are Apple's three patents on appeal in the "Posner case":

• U.S. Patent No. 7,479,949 (touchscreen heuristics, i.e., distinguishing vertical, horizontal and diagonal movements based on initial angle of gesture; first named inventor: Steve Jobs; also asserted against Samsung at the ITC)

• U.S. Patent No. 5,946,647 ("data tapping"; identifying phone numbers and other data types in emails and other text documents and linking them to actions; Apple won an import ban over this patent against HTC and is asserting it against Samsung in the second California litigation)

• U.S. Patent No. 6,343,263 (real-time signal processing; an Administrative Law Judge at the ITC held HTC to infringe it but this part of his preliminary ruling was reversed)

The overlaps between Apple's ITC complaint against HTC and the patents asserted in the Posner case are no coincidence. In October 2010 Motorola had brought declaratory judgment claims against many of the patents Apple was already asserting against HTC, and Apple then brought offensive counterclaims over those patents, which came to life in Wisconsin but ended up being adjudged in Chicago.

Apple's brief mentions the settlements with Nokia in June 2011 (Apple was asserting the '263 patent against Nokia, too) and HTC in November 2012. But as long as there's no settlement with Google (Motorola), Apple wants an injunction, and its opening brief in this appeal denies that Apple's patents in general, and the three patents-on-appeal in particular, are broadly licensed.

The brief repeatedly refers to Apple's "general policy" concerning patent licensing, and that's because of a 2008 ruling by the same appeals court that referred, as a factor weighing in favor of injunctive relief, to "Broadcom’s general policy of not licensing its patents and the harm that would ensue from a compulsory license to its most significant competitor". Here are Apple's statements on its own "general policy", in the order in which they appear in the pleading:

• "Apple, which has a general policy against licensing its patents, presented evidence that Motorola was cutting into Apple's market share and diverting goodwill."

• "Apple has a general policy of not licensing its inventions to anyone else."

• "Apple presented evidence that it has a general policy of not licensing these patents."

• "And unlike Motorola, which pre-committed to license its patents, Apple made no such commitment as to the patents at issue here and presented ample evidence that it has a general policy against licensing its valuable technology to Motorola or anyone else."

• "First, Apple has a general policy against licensing its inventions, particularly to competitors. Second, Motorola's unlicensed copying of the inventions will continue to erode Apple's market share and consumer loyalty."

• "Apple seeks an injunction to stop infringement by an ardent competitor. Apple had a general policy against licensing its central technology. It had proof that it is losing market share and goodwill because of the ongoing infringement. None of its asserted patents are standard-essential."

Apple's brief emphasizes the objective of having distinctive products as a reason for Apple to generally withhold licenses:

• "Its business model famously depends on distinctive products that stand apart from the masses."

• "Apple has a policy against licensing competitors to practice the three patents. Apple is innovative to the core. Its business model is all about distinguishing its products from the competition's. [...] This business model of distinctive innovation does not work if competitors are free to make their products identical. That is why Apple has a policy against licensing [redacted]."

• "In any event, Apple's success is based on its patented inventions. Nothing will undermine its success like a ruling that competitors are free to copy its innovations as long as they are willing to pay a royalty."

Judge Posner's dismissal of Apple's claims against Motorola (and of Motorola's SEP assertions against Apple) occurred almost six months before the Apple-HTC deal, but this appellate brief was filed after the HTC settlement and mentions it. When the terms of the Apple-HTC deal, especially the patents it covers, are discussed in court on Thursday, there may be some more clarity about how Apple structures such license deals and which limitations, exceptions and carve-outs, if any, it actually imposes.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Apple says ITC judge lacked legal basis for ruling on Samsung's designarounds

Approximately a year ago I said that workarounds (or designarounds) would become a big issue in the smartphone patent disputes, and this topic has indeed come up in multiple litigations this year. But there's been very little coverage of this by the media, presumably because there's more attention to binary decisions (injunction granted/denied; injunction affirmed/lifted) and because designarounds depend on technical and legal details. That doesn't make the topic less relevant. Even the most spectacular injunction, no matter over how many patents and against which high-profile products it is ordered, isn't worth anything if it can be worked around in a way that no consumer would ever notice and that would not require the infringer to devote more than a negligible amount of resources to the effort. Sometimes that's the way it works out. In most cases, however workarounds do affect product quality and/or the allocation of development resources in significant ways, even though a former infringer will always claim that the workaround was easy and smooth and has no impact on functionality, performance, or user experience.

On Thursday there could be some talk in the media about designarounds (though presumably still less than about jury misconduct issues and the Apple-HTC agreement) because of an Apple v. Samsung hearing in California, where Samsung will argue that the existence of purported designarounds should weigh against the grant of an injunction. I commented on Samsung's workarounds in October and a week ago I reported that Apple disputes that what Samsung calls a workaround for the '915 pinch-to-zoom API patent really steers clear of infringement -- a controversy I had predicted in my initial analysis.

Two years ago, this blog already discussed FRAND issues such as Microsoft's contract lawsuit against Motorola, taking consistent positions on injunctive relief over standard-essential patents during all of this time. For the first year or so that I was blogging about it, FRAND and its synonym RAND were known to only a small number of industry professionals. By now, many more people are at least roughly familiar with this once-esoteric concept at the intersection of intellectual property and antitrust law. Depending on how things evolve, workarounds (designarounds) could also receive more attention in the future once people realize that they're impact-determinative. Independently of the mainstream, I will keep blogging about this.

In the ITC investigation of Apple's complaint against Samsung, designarounds came up at an unusually early stage. Normally, there's an infringement action and a ruling, and if the ruling includes an injunction, then the infringer will try to work around the enforced patent(s) and release modified, allegedly non-infringing products. In many of these cases, the patent holder will disagree and allege continued infringement, and if the parties can't agree, then there has to be an enforcement proceeding to determine whether the defendant's actions constitute contempt of court. For example, the ITC was looking at an enforcement complaint by Apple against HTC that alleged violation of a previously-ordered import ban (the parties' settlement has resolved this matter). Besides clearance or a finding of contempt, the outcome of an enforcement proceeding can also be that an infringement is possible, but if there is one, its pattern is distinct from the one that has been adjudicated in the infringement proceeding, requiring a whole new lawsuit to adjudge the new implementation.

What I've just described applies to all of the jurisdictions in which I follow such disputes in detail: ITC, U.S. district courts, and German courts. There are obviously some differences (particularly with respect to whether an infringer has the option or obligation to ask the court for an advisory opinion prior to shipping modified products), but the basic concept is the one I just outlined. And presumably it's the same in the rest of the world.

The rare thing that happened in ITC investigation no. 337-TA-794 is that the original ruling (a preliminary ruling to be precise) already adjudicated workarounds for multiple patents-in-suit at the defendant's (Samsung's) request and against the plaintiff's (Apple's) objections. The judge's initial determination was that all of those workarounds, which were presented later in the process, do avoid infringement. If the Commission (the six-member decision-making body at the top of the ITC) affirmed these workaround-related rulings, Samsung would have immediate legal certainty about how it can keep selling its products without any disruption being caused by whatever import ban may be ordered against products that infringed in the past.

It does happen that defendants present workarounds to a court during the original infringement litigation instead of waiting for a subsequent enforcement proceeding. For example, Nokia and HTC have done so in the UK and Germany in litigation with patent monetizer IPCom. But most of the time, workarounds come up only in the next step, and where a defendant does present workarounds early on, some plaintiffs actually appreciate the fact that this enables them to get a ruling on them sooner rather than later. Not Apple in this case.

Three months ago, Judge Pender asked the parties for briefing on the question of Samsung's designarounds. The pleadings were sealed, but now that the parties' petitions for review as well as their responses have been made available in a redacted form, some information (still not as much as I'd like to get) has entered the public record. Here's what Judge Pender wrote (as quoted by Samsung) to justify his decision to rule on the designarounds:

"The design around products are within the scope of this investigation, have been imported into the United States or sold in the United States [a footnote clarifies that Apple said "some of the design arounds were implemented in prototypes rather than commercially sold products", which did not matter to the judge], were the subject of extensive discovery as well as testimony during the evidentiary hearing in this investigation. Thus, I find that infringement of Samsung's design around products should be adjudicated as part of this Initial Determination.

[...]

Apple argues that because it did not accuse the design around products of infringing the asserted patents there is no need to determine whether they infringe the asserted patents. At the same time, Apple argues that the design around products should not be carved out of any exclusion order that may issue in this investigation. Taken together, it would seem that Apple does not want the design [arounds] adjudicated on the merits, but wants to still be able to argue that they fall within the scope of the exclusion order that may issue. I find Apple's position unimpressive."

I can't put it past any plaintiff, Apple in this case, that he may want to create commercial uncertainty about the legality of a rival's products. Obviously, a ruling that formally bans various Samsung products creates more doubt among resellers and consumers about the future availability of Samsung's products than a ruling like the initial determination in late October that found Samsung to have infringed four Apple patents but also cleared multiple workarounds. Judge Pender was almost certainly right in concluding from Apple's objection to an adjudication of the workarounds on their merits that Apple did not feel that it could prevail over those workarounds. And at this stage, where the parties are petitioning for a Commission review of the initial determination, it doesn't excude much confidence on Apple's part that it wants the designaround rulings thrown out instead of attacking them exclusively on the merits.

But even if commercial uncertainty (and the resultant settlement pressure on Samsung) was Apple's motive, or a substantial part of its motivation, that would not be the most important thing in this context. The question that the ITC (or any other court in the same situation) really has to ask itself more than any other one is whether it's good policy from the fairness and efficiency angles to allow a defendant to complicate an infringement proceeding through the injection of workarounds, especially at a relatively late stage.

Apple argues that the plaintiff ("complainant" in ITC terminology) must always be in charge of the infringement contentions. If the plaintiff accused a technology, it has to be adjudged, and if he doesn't, then it's outside the scope. Germany is obviously a different jurisdiction, but over here it would be absolutely unthinkable that a defendant could unilaterally extend the scope of a litigation by any means other than a counterclaim. It's logical that each plaintiff is the master of his infringement accusations, no matter how much a court might think that it would make sense to adjudicate additional issues in the same process.

The problem with the ITC, however, is that it does not adjudge counterclaims. If parties bring counterclaims, they have to be immediately severed and removed to a district court. So if Samsung had immediately brought a declaratory judgment counterclaim to ask a court to hold that its non-accused workarounds do not infringe, it would have had to do so in a different forum, where things could take much longer and where the decision might be based on a different claim construction and a different evidentiary record. That's why Samsung's desire to have the same forum apply consistent standards to the accused products and the presented workarounds also makes a lot of sense.

That said, Apple has a point that a plaintiff having to deal with unwanted workarounds may have to address those at the expense of its pursuit of the intended infringement contentions. There are page limits for pleadings, time limits at hearings and trials, and a respondent could game the system by presenting all sorts of workarounds at a late stage of a proceeding. And it's not like Samsung never tried to stall or otherwise derail different proceedings initiated by Apple.

The bottom line is that a bad-faith plaintiff can try to get an advantage by opposing the adjudication of workarounds only to create commercial uncertainty (which will work only if there has been at least some past infringement) but a bad-faith respondent can also act abusively and deprive a plaintiff of a fair chance to prevail. That's why speculation on the parties' motives doesn't serve the interests of justice in this context.

I'm looking at this from a business point of view, and from that angle I oppose uncertainty that could actually be avoided. I think Samsung highlighted an important problem but there must be a better solution. Maybe the ITC should consider allowing respondents like Samsung to request an advisory opinion on workarounds even while an investigation is ongoing. Maybe it's even a good idea to ensure in one way or another that the workarounds will be adjudged simultaneously with the original complaint. But as long as a plaintiff's ability to pursue his infringement claims is impaired by the presentation of workarounds, it's difficult to support the idea that a respondent can unilaterally, without having to bring a counterclaim, extend the scope of an investigation someone else triggered, especially since there would never be a problem without any infringement in the first place, so if Samsung was found to have infringed in the past, it might be fair to expect Samsung to deal with the consequences, including some temporary commercial uncertainty between an infringement finding against past products and an advisory opinion or clearance decision (in an enforcement proceeding) on the modified ones.

It will be interesting to see how the ITC addresses this problem in its decision on Apple's complaint against Samsung, and whether there will be any effort to set clear rules that minimize prejudice to both parties. In a fast-paced industry like mobile devices, there clearly is a problem if non-infringing products might be held up at customs, or if customers shied away from purchasing them, only because their predecessors infringed.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Judge Koh adopts Samsung's proposal for discussion of Apple-HTC agreement at hearing

On Saturday I reported that Apple and Samsung disagreed not only on the relevance of the Apple-HTC license agreement to the injunctive-relief analysis in their case but also on how to express their related views to the court. Apple wanted a pre-hearing exchange of short pleadings while Samsung just wanted to go into the hearing and discuss the topic there. This is a quick follow-up to that post.

Judge Lucy Koh, the federal judge presiding over the parties' two California lawsuits, has sided with Samsung on the course of action, holding that "the relevance of the agreement can be adequately addressed at the December 6, 2012 hearing, without further briefing". As I stated before, I don't think Samsung's related claims and arguments will surprise Apple on Thursday. There's only one way in which Samsung can leverage the Apple-HTC deal: by claiming that Apple's willingness to license the relevant patents shows that monetary compensation is sufficient to make Apple whole, rendering injunctive relief unnecessary. In a formal sense this argument shouldn't have huge weight because patents are, by definition, exclusionary rights, but Samsung probably hopes that this will help persuade Judge Koh to deny an injunction, or only grant a narrow one.

Contrary to popular misbelief, Judge Koh is not an injunction-happy judge. Most people only see the two injunctions she granted to Apple, but there's little awareness for the fact that she granted Apple injunctive relief on only a minority of the infringement claims on which she thought Apple would ultimately prevail. For example, the preliminary injunction against the Galaxy Nexus smartphone was based on only one (Siri-style) patent, but Apple had demonstrated a likelihood of success on the merits with respect to three more patents. There's far more attention to the fact that an injunction is granted (with many people believing that products will disappear from shelves, which is not the case if a patent can be worked around) than to a partial denial. This is what I call the goalkeeper's dilemma: a goalie may save many shots during a ballgame, but most people will see a three-minute summary, which will mostly (if not entirely) consist of the goals that were conceded. The injunctions she granted before were preliminary ones, and the post-trial situation is different in some respects because there's clarity (after the court rules on the parties' post-trial motions to overrule the jury) about the merits. I wouldn't extrapolate her past track record in the preliminary-injunction context to the permanent-injunction questions that will be discussed on Thursday, but it's a fact that she has so far been rather hesitant to order injunctive relief.

The Monday order does not take a position on how much weight will be given to the Apple-HTC agreement. It merely states that "the license agreement may be relevant to the permanent injunction analysis". It "may be". When Magistrate Judge Grewal granted Samsung's motion to obtain the agreement, he expressed skepticism of its relevance.

The order also says that there are no compelling reasons under Ninth Circuit case law to seal any parts of th e agreement other than "the payment and royalty terms". Most importantly, "the list of patents covered by the agreement" will have to be disclosed. Accordingly, a paragraph in a recent Samsung filing that makes reference to the licensed patents will also have to be filed publicly.

The parties have on ongoing appeal of some orders of this kind to the Federal Circuit, and have in some cases convinced the court to keep certain material seal until a final ruling on the sealing orders comes down, arguing that the general public won't suffer much harm if it finds out a few years later, but if anything is disclosed that should be kept confidential, there's no way to turn it into a secret again. I don't know if anyone will now try to bring some last-minute emergency motions, with the hearing being only two days away.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Ericsson steps up patent enforcement against Samsung with request for U.S. import ban

Last Tuesday Swedish telecommunications equipment maker Ericsson filed two patent infringement lawsuits against Samsung with the United States District Court for the Eastern District of Texas, one of which additionally accused Samsung of breach of its FRAND licensing commitment with respect to its own standard-essential patents. The two companies had previously signed licensing pacts in 2001 and 2007. In the latter case, a renewal happened only after Ericsson brought infringement actions in federal court as well as in the ITC, a U.S. trade agency with quasi-judicial authority to ban importation of infringing products.

On Friday (November 30), Ericsson filed a new ITC complaint against Samsung. The fact that the filing was made briefly showed up on the "Recent Section 337 Complaints" page of the ITC website, but due to a planned power outage no further information could be obtained over the weekend and the list of recent complaints is still inaccessible on Monday morning. Nevertheless I have obtained a copy of Ericsson's complaint, which contains some interesting information including the fact that Samsung's archrival, Apple, already has a license to Ericsson's patents-in-suit.

The list of patents asserted in the complaint mirrors that of the first Texas complaint. It's a safe assumption that Ericsson will during the course of the ITC investigation narrow the case down from the 11 initial patents-in-suit, as all other complainants asserting such numbers of patents have done before. It's also a given that Samsung will move for a stay of the companion lawsuit in Texas pending resolution of the ITC complaint.

The accused products are "wireless communication devices, tablet computers, media players, and televisions, and components thereof". The complaint furthermore mentions "base stations" and the possiblity that "[d]iscovery may reveal the use of Ericsson's patented technologies in other [Samsung] products". If the ITC ordered an import ban, it would also apply to all future products having the same infringement pattern. As current examples of allegedly-infringing products, the complaint mentions, among dozens of products, the Samsung Galaxy S III (and its predecessor, the S&nbp;II), the Samsung Galaxy Nexus (GT-I9020A), the Samsung Infuse 4G, the Samsung Captivate Glide, and the Samsung Galaxy Note as well as its successor, the Note II. Ericsson is also targeting various form factors (7.0, 8.9, 10.1) of the Galaxy Tab and the Galaxy Note 10.1 tablet. The accused media players include multiple versions (3.6, 4.0, 4.2 and 5.0) of the Samsung Galaxy Player, as well as various Blu-ray players. Ericsson also provides a long list of accused televisions.

The complaint describes the patented technologies at issue as RF (radio frequency) receiver technology, hardware and software design of wireless communication devices, user interface technology, modulation technology, and in some cases, standardized communication protocols, including the GSM, GPRS, EDGE, W-CDMA, LTE, and/or 802.11 [WiFi, or WLAN] standards. Software and user interface technology suggests that other Android device makers may face similar royalty demands from Ericsson. The fact that some of the asserted patents are standard-essential is consistent with Samsung's own litigation strategy against Apple. As I reported two weeks ago, FRAND issues will be key to the ITC review of a judge's preliminary ruling on Samsung's ITC complaint against Apple.

With a view to the ITC's domestic industry requirement, Ericsson points to the fact that more than 10,000 of its 95,000 employees are based in the United States, and to a variety of licensed U.S. products, such as various Apple, Motorola and RIM gadgets.

Depending on how settlement talks between Ericsson and Samsung progress, I would not in the slightest be surprised to see Ericsson file infringement actions in other countries. For example, I became aware of an Ericsson v. Acer trial that took place in Mannheim in June. Ericsson's ITC complaint lists numerous international counterparts of the U.S. patents-in-suit.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Apple and Samsung disagree on relevance of HTC agreement and related briefing process

The fight between Apple and Samsung over the relevance of the Apple-HTC license agreement to Apple's motion for a permanent injunction, which will be heard next Thursday (December 6), has entered the next stage.

In a first step, there was disagreement on whether the license fees paid by HTC would have to be disclosed to Samsung's outside counsel (Samsung's position, HTC's position and Apple's related argument). The court granted Samsung's motion but expressed skepticism of the actual relevance of the royalty rate to the injunctive-relief analysis.

Meanwhile the agreement has been made available but the parties disagree on how to enter it into the litigation.

On Friday evening local time, Samsung brought a motion to file the Apple-HTC agreement (obviously under seal). The agreement itself has now been filed with the court, but it won't be part of the record until the court grants Samsung's administrative request to file a declaration (which is short and can be summarized as saying "attached hereto please find the Apple-HTC agreement") for this purpose. The court also has to rule on a motion to seal the declaration, which is irrelevant to the actual declaration (the full text of which is also made available in a redacted form) but key with respect to its Exhibit A, the agreement.

HTC wants sealing, and Apple supports it. But Apple and HTC each have different primary concerns because of which they oppose Samsung's proposed course of action, which is to file the agreement as a whole, all by itself, with the court and to have the related argument at the Thursday hearing (and not before).

Apple primarily wants to avoid misunderstandings of the agreement by the court. Apple does not want "the Court to consider the agreement alone at this late date", arguing that "[t]his would mistakenly suggest to the Court that the agreement is relevant when it is not". Apple had no problem with Samsung's intent to file the agreement (so long as this happens under seal), but it wanted to have the right to file "a short statement [in another email, Apple said one page is not enough, but two pages would work] explaining its positions on the agreement". Apple also argued that Samsung is the party taking the initiative to discuss this agreement, so Samsung should explain why it believes it's relevant, and Apple would respond. By the way, Samsung's Friday filing only contains five (redacted) lines of an explanation as to why it considers the agreement relevant to the injunctive-relief analysis.

HTC's primary concern is to keep the terms of the agreement secret. It "concurs with Apple's view that it would not be helpful for the Court to consider the Agreement alone at this date" and is worried that sensitive information would be discussed in open court at the Thursday hearing if Samsung doesn't clarify which parts of the agreement it considers relevant. HTC's counsel doesn't say so because it's clear to the lawyers on the other side: a brief exchange of documents before the December 6 hearing would better enable HTC to ask the court to protect the secrecy of certain deal terms and to preclude the parties from discussing particular terms in open court. If Samsung doesn't say beforehand which arguments it will make, it's more difficult for HTC to take this precautionary measures.

Samsung's counsel would obviously like to be more flexible in choosing which parts of the agreement to reference at the Thursday hearing, and Samsung would also like to avoid that Apple's counsel can prepare for a particular anti-injunction argument before the hearing (though Samsung's arguments are sufficiently predictable that there won't be any major surprise to Apple's counsel, I'm sure).

Apple will presumably file something with the court, maybe even before Tuesday (the date it proposed for a response if Samsung had agreed that Apple would get two pages for a response) because there's so little time left between now and the Thursday hearing. And we may also see a filing from HTC to protect the confidentiality of certain deal terms.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|

Google's Motorola loses a summary judgment decision after Microsoft FRAND trial

The United States District Court for the Western District of Washington held a Microsoft v. Motorola Mobility FRAND rate-setting trial on November 13-21. On Thursday, Judge James L. Robart granted a summary judgment motion by Microsoft that had been pending for almost a year. The decision entered the public electronic record on Friday afternoon local time. The successful motion asked the court to hold that the wholly-owned Google subsidiary is not entitled to injunctive relief against Microsoft over any patents essential to the H.264 (video codec) or IEEE 802.11 (WiFi, or WLAN) standards.

This order also dissolves an anti-enforcement injunction barring Motorola from seeking sales bans against Microsoft based on a couple of German H.264 rulings (an injunction that was affirmed by the Ninth Circuit), but not in the sense that Google is now free to do what it wanted to do all along. Instead, the latest order "takes the place of the court's prior anti-suit injunction that enjoined Motorola from enforcing an injunction in the German action". Given that "litigation in this matter has progressed to the point that it is now clear that a license agreement will result for all of Motorola's H.264 [and, as a footnote clarifies, IEEE 802.11] standard essential patents", and considering the worldwide scope of that future agreement as well as the worldwide scope of the summary judgment decision ruling out sales bans, Judge Robart has concluded that his lawsuit has been dispositive of the issues in the related German litigation.

The injunctive-relief analysis under U.S. law is consistent with the FRAND part of Judge Posner's Apple v. Motorola ruling, but linked more specifically to the four criteria for injunctive relief, also known as the eBay factors. Of those four criteria, the court only had to address two. Once it was held that Google's Motorola, even with all of the effort it made at the recent trial, "has not shown it has suffered an irreparable injury or that remedies available at law are inadequate to compensate for its injury", there wasn't even a need to reach the questions of the balance of hardships and of the public interest. There's a difference in the decisions by Judges Posner and Robart that relates only to the circumstances of the two lawsuits. The Chicago case in which Judge Posner essentially determined that someone who makes a FRAND promise can never ask for more than monetary compensation wasn't going to result in a license agreement (that's what a case in the Western District of Wisconsin could have accomplished, and could still accomplish on remand if Apple succeeds on appeal). But the Seattle action is going to result in a license agreement, and Judge Robart therefore held that "as a matter of logic, the impending license agreement will adequately remedy Motorola as a matter of law". There is no irreparable harm either "[b]ecause Microsoft will pay royalties under any license agreement from the time of infringement within the statute of limitations", which "will constitute Motorola's remedy for Microsoft's use of Motorola's H.264 standard essential patent portfolio to include the Motorola Asserted Patents".

As the aforementioned Wisconsin case just showed, the question of prejudice is key. In the Seattle FRAND case, the dismissal of injunctive relief is also "without prejudice", but Google (Motorola) would only be able to seek injunctive relief if "the specific circumstances and rulings that have developed in this litigation" were to "change in a manner to warrant injunctive relief", which is only a theoretical possibility because the normal course of business is now going to be that a license agreement is created and that Microsoft pays court-determined royalties. The way I see it, Google (Motorola) would need a successful appeal to open the door to injunctive relief.

In light of the court's previous decisions, this summary judgment order does not come as a surprise, but the court took its time (almost a year) and gave Google (Motorola) the opportunity to make its case at the recent rate-setting trial (a rate-setting decision may come down in late December but some observers believe it will happen in early 2013).

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Follow @FOSSpatents

Share with other professionals via LinkedIn:

Share|