CEO-level Apple-Samsung settlement discussions to take place within six weeks

In September 2011, Oracle CEO Larry Ellison and Google CEO Larry Page met for court-ordered "mediation" talks. While I don't doubt the good intentions of the CEOs and other participants in those meetings, it's a fact that more than 27 months later, their Android-Java copyright dispute is still ongoing. The trial court erroneously sided with Google in 2012, but it's pretty clear now that the United States Court of Appeals for the Federal Circuit will reverse and remand.

In Apple v. Samsung, the same court -- the United States District Court for the Northern District of California -- didn't formally order the parties to show up for talks, but that's because the presiding judge in this case, Judge Lucy Koh, doesn't have Judge William Alsup's heavy-handed case management style. But based on what I read in her orders (just this week she referenced the court's efforts to bring the parties to the table) and in journalists' hearing reports, she created a situation in which both parties had to be constructive so as not to alienate her. In the Oracle-Google case, not showing up for those talks would have been an act of contempt of court; in Apple-Samsung, it would have been the same thing just without formal sanctions. And no one wants to alienate the presiding judge, much less when another trial is scheduled to begin on March 31. So Apple and Samsung will hold meetings in front of a mediator they agreed upon, and the parties' delegations will be headed by their CEOs and additionally consist of three or four in-house counsel per party (no outside counsel).

The hard and soft powers of a court have one important limit, however: while courts can order or urge parties (including their CEOs) to participate in such talks, they cannot force them to settle on any particular set of terms. If companies can agree on mutually acceptable terms, they can and will do so without pressure from a court. And the CEOs of these companies meet and talk all the time anyway. That doesn't mean to say that no settlement meeting between them would ever be fruitful: at some point even this dispute will without a doubt be settled. It's just that bringing them to the table is the easy part. In international diplomacy it certainly means something if high-level politicians from countries that don't talk directly, or not at a high level, agree to meet. President Barack Obama's handshake with Cuba's President Raul Castro at the Nelson Mandela memorial service, no matter how accidental, was unusual and could mean something. Apple and Samsung have business relationships in many areas and share some strategic interests even in the fields in which they compete. Getting them to shake hands and sit down means nothing per se. (But again, at some point they will agree.)

It's obvious that the court would like to avoid the effort of another major trial. These parties just had a limited damages retrial late last year. It would be the third Apple-Samsung trial in less than two years. While smaller companies would probably be very interested in avoiding the cost of another trial, legal fees are not a strategic issue in this case. Even publicity doesn't matter because Samsung has had to face allegations of "copying" before and is nevertheless doing extremely well. The parties' analysis will be centered around an impact assessment of what the outcome of that second trial (including post-trial injunction motions) could be.

After the recent Federal Circuit ruling in Apple's favor, Apple's access to injunctive relief is way better than it appeared after the original denial of its injunction request following the first Samsung trial. Still there is a "causal nexus" requirement to meet, and even in a dispute between these companies, injunctions won't automatically follow from infringement findings in the U.S. the way they do in Germany. I guess Samsung and its lawyers are going to look at the patents Apple is asserting at the upcoming trial. Those are potentially more impactful than the design and user interface stuff asserted at the 2012 trial (where I believe Apple was more interested in winning something than in dealing a decisive blow to Samsung at that stage). But if Samsung's engineers and lawyers have a viable workaround strategy in place just in the event that Apple prevails and obtains an injunction, then Samsung has only a limited incentive to settle. I don't know what Samsung's workaround plans are (some workarounds may, in fact, already have been implemented), and even if I knew those plans, I still wouldn't know how strongly Samsung believes in their viability in legal and commercial terms. This is the most important question relevant to the prospects of a pre-trial settlement.

A few years ago, companies of this profile generally settled their disputes out of court ahead of a trial. There was much more fear that the impact of a lost patent trial (and post-trial injunctions) could be devastating. By now many industry players -- even including late entrants such as HTC, which has evolved into an experienced and sophisticated litigant -- are much less scared by a patent infringement suit than they used to be. They know that most patents in this industry are actually invalid as granted, and the patent claims that are ultimately found valid are generally much less powerful while the broader ones rarely survive. In most disputes it still makes sense for parties to agree on licensing -- but more and more companies choose litigation over licensing until the latter is really cheap (and "cheap" is not just a question of money in a dispute like Apple-Samsung but very much a question of non-monetary terms such as "anti-cloning" provisions).

If they don't settle and have to hold a second trial, then my prediction of the most likely outcome is that Apple will again win something, Samsung will again lose something, but the real impact will only be clear after an injunction issues and the viability of Samsung's workarounds is addressed in one or more contempt proceedings. In other words, it may take time to find out to what extent Apple has the upper hand.

Here's the notice Apple and Samsung's counsel filed with the court to announce this pre-trial mediation effort:

14-01-08 Apple-Samsung Proposal Re Pre-March 2014 Settlement Discussions by Florian Mueller

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Briefing complete in cross-appeal of Wisconsin dismissal of Apple v. Motorola FRAND case

Two Apple v. Motorola cases involving FRAND issues are currently on appeal before the Federal Circuit. The higher-profile one of these matters, the "Posner case", was heard in September. An appellate ruling on that one will probably come down very soon, and Apple will probably win this based on how the hearing went (Chief Judge Rader twice called Motorola's royalty demands for a single standard-essential patent "crazy"). There is also a second, lesser-watched but nonetheless interesting Apple-Motorola FRAND appeal: the cross-appeal of the dismissal without prejudice (in November 2012) of a FRAND contract case Apple brought in the form of counterclaims to Motorola's ITC complaint.

It's technically a cross-appeal, but it's mostly about Apple's efforts to revive its bid for a FRAND determination in district court. Google's Motorola wants the dismissal without prejudice to be converted into a dismissal with prejudice, which would preclude Apple from bringing another case of this kind against Motorola.

While I strongly doubt that it was a good idea for Google to pursue a cross-appeal in the Oracle Android-Java copyright case, it makes sense in this Apple case. Even if Google's push for a dismissal with prejudice is rather ambitious (the district judge originally wanted to dismiss the case with prejudice as well, but then realized that this would have gone too far), it means Google now had the last word at the briefing stage. Here's Google's reply brief, filed earlier this week (this post continues below the document):

14-01-06 Motorola Mobility Reply Brief in Appeal of Wisconsin FRAND Dismissal by Florian Mueller

I'm not going to go into much detail here. Late last year I commented on Apple's reply brief and said that Google's policy arguments against FRAND rate determinations in situations in which defendants don't commit to take a license on court-determined terms might be viewed favorably by the Federal Circuit, though policy considerations won't matter if Wisconsin law simply entitles Apple to such a rate-setting decision.

Google reinforces some of its key arguments in its reply brief. As for the specific issue at the heart of its cross-appeal -- whether the dismissal should be one with prejudice -- I'm actually not that impressed by what Google says. In support of its request for a dismissal with prejudice, it particularly stresses a Federal Circuit opinion on a patent infringement case (Automotive Technologies v. BMW et al.) in which the patentee sought a very broad claim construction, based on which the district court found that the patent was invalid for lack of enablement based on that broad scope. While this is a case in which a plaintiff's own tactical decision turned out unwise, it's far from establishing a general rule of the "you make your bed and then you lie in it" kind. The non-practicing entity in that automotive case prevailed on its proposed claim construction. That, in turn, upped the ante on the enablement side, and broke the patent's neck. The Federal Circuit pointed to a different case it had previously decided and notes the irony in this: "The irony of this situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet." A party can't later appeal the claim construction it (successfully) proposed. It then has to defend the validity of the patent based on that claim construction, and the broader the scope of the patent is, the more susceptible it is to challenges. Apple's decision not to commit unconditionally to a license on court-ordered terms is not comparable to a claim construction proposal, and even if it were, there's really no comparable situation in the Wisconsin FRAND case in terms of Apple having prevailed on a particular proposal that later resulted in the dismissal of the case. There had been some pre-trial decisions that worked out fine for Apple, but those weren't related to the question of whether it would have had to commit to a license deal on court-determined terms.

But again, Google's policy arguments are not going to be easy for Apple to overcome, and Google's reply brief states several of those in a compelling fashion.

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Rockstar's addition of Google as defendant to Samsung case could keep patent suit in Texas

On Sunday I mentioned Google's procedural gamesmanship in patent cases (and the fact that it isn't working out too well against Microsoft). But, in all fairness, others play the same kind of game against Google, and the Rockstar patent holding firm is an example.

Rockstar appears to have a predilection for filing complaints on symbolic calendar dates. It fired a salvo of patent infringement lawsuits at Google and seven of its Android OEMs on Halloween. And on New Year's Eve, it amended the lawsuit against one of those -- Samsung -- to add Google as a co-defendant (this post continues below the document) because of the Galaxy Nexus:

13-12-31 1st Amended Rockstar Complaint Against Samsung (Adds Google) by Florian Mueller

Samsung has until Friday to answer the complaint. I doubt that it would be granted another extension just on the basis of Rockstar's amendment: nothing changes for Samsung itself. And Samsung and Google use the same lawyers anyway, which turns coordination into child's play.

On December 23, Google filed a declaratory judgment lawsuit in the Northern District of California. The only plausible reason: Google wants to get the Rockstar cases against Android OEMs moved out of the Eastern District of Texas, which has a reputation of being patentee-friendlier than the Northern District of California.

Rockstar's amendment of the Samsung complaint could further complicate Google's venue transfer efforts. While the amendment was made after Google's declaratory judgment complaint, the Rockstar-Samsung case is still the earlier-filed action. I guess Rockstar will somehow try to leverage the addition of Google to the Samsung lawsuit in the massive venue fight that we're going to see in those Rockstar-Android cases before the real thing -- the process relating to the substance of the patent infringement allegations -- begins. As of the time of publication of this post, none of the defendants in any of the Rockstar Halloween cases has responsed to the complaint or (which will likely happen first) brought motions to transfer.

Gene Quinn, a U.S. patent attorney and author of the IPWatchdog blog, commented today on a recent deal between Rockstar and patent monetizer Spherix relating to 100 patents. Mr. Quinn notes that "Rockstar will also share usage information with Spherix for the transferred patents, and will assist Spherix in working with the patents' inventors, to assist Spherix's commercialization efforts" and believes that "this is likely a signal of more patent infringement lawsuits yet to come". This is a reasonable assumption, though it could also be that at least some of the defendants in the Rockstar Halloween cases do opt to strike a license deal with Spherix. It might be out of character for someone like Google to do so, but it could happen. If not, then there will indeed be even more lawsuits involving former Nortel patents.

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Judge Koh will hold hearing on Apple's renewed injunction bid against Samsung on January 30

Last week Samsung requested an extension of time for its answer to Apple's post-appeal renewed motion for a permanent injunction and permission to conduct discovery relating to more recent settlement talks between the parties. Apple opposed this, and Judge Lucy Koh, the federal judge presiding over two Apple v. Samsung cases in the Northern District of California, issued an order late on Tuesday by local time that confirms the injunction hearing will be held on January 30, the date proposed by Apple, and Samsung won't get to depose an Apple witnesses on settlement talks:

14-01-07 Order on Apple v. Samsung Permanent Injunction Briefing by Florian Mueller

For an asessment of the potential impact of the injunction sought by Apple, please check out my related post.

I felt that Samsung's discovery request wasn't unreasonable. While settlement talks enjoy some degree of protection under Federal Rule of Evidence 408, previous negotiations between the parties have also been considered by the court in this litigation. Samsung had pointed Judge Koh to the Federal Circuit's reference to differences between licenses Apple extended to other parties in the past and the "current situation". Judge Koh appears to think that Samsung overstated what the Federal Circuit said:

"Although the above-quoted passage makes clear that the Federal Circuit expects this Court on remand to analyze whether the circumstances surrounding Apple's prior licenses or offers to license shed light on whether legal relief would adequately compensate Apple for Samsung's infringement of the patents-in-suit, the Circuit's opinion simply does not address the propriety of allowing additional discovery into ongoing, Court-encouraged settlement discussions between the parties."

The above is correct: the appellate opinion did not say what kind of discovery would have to be conducted on remand. Neither did the appeals court remand the case with an instruction to immediately enter a permament injunction. Basically, the Federal Circuit felt that Judge Koh's analysis of Apple's entitlement to an injunction had prematurely arrived at a negative conclusion, and it wants the district court to pick up the thread where it left off last time -- back in 2012, that is. That's why I didn't think it was necessarily unreasonable for Samsung to request additional discovery, but the following passage in Judge Koh's order suggests that Apple hasn't made any licensing offers to Samsung of the kind that really could be outcome-determinative in the injunction context:

"More generally, Samsung has failed to establish that its need for discovery of Apple's licensing discussions with Samsung justifies further delay in resolving Apple's request for permanent injunctive relief. Samsung, as a party to its settlement discussions with Apple, surely is already aware of any 'key' concessions Apple made to Samsung during those discussions. Nothing in the record, including Samsung's motion, suggests that further discovery would be fruitful."

If Samsung's lawyers weren't able to convince the court of Apple having made major concessions over the course of the last year, then I guess Apple's position hasn't really changed that much. And if that is so, then a deposition of an Apple witness probably wouldn't bring to light, or shed light on, any facts that have a bearing on Apple's entitlement to injunctive relief.

Samsung now has to file its opposition to Apple's renewed motion for an injunction on Thursday (January 9). Apple may reply within a week. The hearing will go forward on January 30. A hearing had previously been scheduled for that day to discuss the parties' post-trial motions following the recent retrial. The question of injunctive relief will be another -- and strategically even more important -- item on the agenda for that hearing.

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Federal Circuit denies Google motion, strengthens Microsoft case for Android patent damages

I would have to blog about Google's procedural gamesmanship in patent infringement cases at least once a month if I reported on all the initiatives I see as I watch various cases. For example, there's a lot of that going on in the Skyhook v. Google case in the District of Massachusetts, which I haven't discussed here in a while. I did, however, talk about a recent development in the Rockstar litigation and Google's argument that Apple's appeal of the dismissal of a FRAND determination case in the Western District of Wisconsin should be transferred from the Federal Circuit to the Seventh Circuit, while Google is arguing at the same time that its appeal of Microsoft's FRAND determination case in the Western District of Washington should be heard by the Federal Circuit, not the Ninth Circuit, the very appeals court Google chose in 2012 for a preliminary injunction matter stemming from the same litigation.

Against Microsoft, Google's tactics haven't played out well so far, and the search giant suffered another setback on Friday (January 3, 2014) when the Federal Circuit threw out a Google (Motorola Mobility) motion to dismiss -- after an appellate opinion in Microsoft's favor had already come down and Google's petition for a rehearing had been denied -- Microsoft's appeal of the part of an ITC ruling that related to Microsoft's U.S. Patent No, 5,664,133 on a "context sensitive menu system/menu behavior".

The Federal Circuit held last year that the ITC had construed (interpreted) the patent too narrowly in its 2012 decision. (That ruling wasn't all bad news for Microsoft, which did win an import ban -- recently affirmed by the Federal Circuit -- against Motorola's Android-based devices over a meeting scheduler patent, but was denied such relief with respect to some other patents including the '133 context menu patent.)

After its unsuccessful petition for a long-shot rehearing, Google tried a new trick: it filed a motion with the Federal Circuit, asking that the appeals court dismiss Microsoft's appeal with respect to the '133 patent for mootness, and vacate the related part of its appellate opinion. Due to the delay caused by Google's petition for a rehearing, the patent had meanwhile expired, and Google argued that as long as the Federal Circuit had not issued its formal mandate to the ITC, there was a possibility to dismiss the appeal for mootness since the ITC has only one type of remedy available (an import ban, possibly combined with a cease-and-desist order), a remedy that is a non-option for expired patents.

But Microsoft is still going to pursue damages in the Western District of Washington, where it filed a mirror (companion) lawsuit simultaneously with its ITC complaint. That mirror action was stayed pending the ITC investigation and any related appeals. It can resume as soon as the ITC case is closed, which will happen pretty quickly now because the Federal Circuit denied Google's motion and, also on Friday, issued the formal mandate to the ITC. The ITC now gets jurisdiction back and has only one thing to determine: that the patent has expired, which means the ITC can't order an import ban. Then the federal lawsuit can resume, and federal courts can award damages.

The Federal Circuit decision was made by a panel including the appeals court's Chief Judge Rader. The order denying Google's motion makes very clear that Google was legally wrong for several independent reasons, any single one of which would have been sufficient on its own to support the denial of its motion.

With the Federal Circuit's claim construction now being final, Microsoft is very likely to prevail on liability in district court. Google just wanted the opportunity to re-argue claim construction in district court. The Federal Circuit's opinion had been published and would have had some weight anyway; but it would not have been formally binding on a district court had Google's motion succeeded. And a district court decision could then also have been appealed again to the Federal Circuit. That's one of the various reasons for which the Federal Circuit decided to issue the mandate to the ITC and deny Google's motion.

At least 20 industry players are known to pay Microsoft patent royalties relating to their distribution of Android (and many of the announcements also involved Chrome). This is a strategic issue for Google, which is adamant about its claim that Android is "free". Microsoft has won several court rulings against Google's Motorola Mobility, and the '133 context menu patent will most likely be yet another Microsoft patent found to have been infringed by Android devices, lending further legitimacy to Microsoft's licensing efforts. If Google can't fend off all of Microsoft's claims against Motorola Mobility, it can't credibly tell Android device makers that they shouldn't pay up.

If you're interested in all the grounds on which the Federal Circuit disagreed with Google, here's the order:

14-01-03 Microsoft v. Motorola Order Denying Dismissal and Vacatur by Florian Mueller

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Samsung wants U.S. court to consider more recent settlement talks with Apple in injunction context

On December 26, 2013, Apple renewed, after a pretty successful appeal, its motion for a U.S. permanent injunction against Samsung with respect to three multi-touch software patents and proposed that an injunction hearing be held on January 30, 2014. Samsung has meanwhile requested an extension of time for its opposition to Apple's motion, which would normally be due on January 9. Samsung wants an extension until January 23, but in reality it wants a lot more. As it told the court on New Year's Eve, it wishes to conduct some further discovery relating to Apple's willingness to license the patents underlying the injunction motion, which in turn would probably delay the process to an even greater extent. (Also, the situation surrounding the '915 pinch-to-zoom API patent, which the USPTO's Central Reexamination Division rejected last month, could lead to further complications, as I discussed in my post on the renewed motion.)

Since the parties already briefed the court extensively on the eBay v. MercExchange injunction factors in 2012, it's not easy for Samsung to raise any new discovery issues. But it believes that it has found an opening in the following sentence from the Federal Circuit's opinion:

"Indeed, the district court's focus on Apple's past licensing practices, without exploring any relevant differences from the current situation, hints at a categorical rule that Apple's willingness to license its patents precludes the issuance of an injunction."

Samsung argues that the Federal Circuit's "remand instructions as to this issue require consideration of 'Apple's past licensing practices' [the agreements with IBM, Nokia, HTC, and possibly others] and 'any relevant differences from the current [i.e., Samsung] situation,' [...] including resolution of factual disputes regarding the scope of Apple's past licensing offers to Samsung". And there have been, quite obviously, further settlement talks between Apple and Samsung since the 2012 injunction briefing. A few days ago the Korea Times quoted a high-ranking Samsung executive who confirmed that working-level settlement talks are ongoing. So Samsung wants to ensure that Judge Lucy Koh will get to see any relevant evidence when she makes her post-appeal injunction decision. In particular, Samsung wants to depose one or more Apple witnesses on the following questions:

"1. YOUR settlement discussions with SAMSUNG from October 19, 2012 to the present.

2. Any discussions between YOU and SAMSUNG from October 19, 2012 to the present regarding licensing or potentially licensing the 7,469,381 [rubber-banding] patent, the 7,844,915 [pinch-to-zoom API] patent and/or the 7,864,163 [tap-to-zoom-and-navigate] patent to SAMSUNG.

3. YOUR willingness to grant Samsung a license to the 7,469,381 patent, the 7,844,915 patent and/or the 7,864,163 patent during the period from October 19, 2012 to the present.

4. Any discussions between YOU and any third parties from October 19, 2012 to the present regarding licensing or potentially licensing the 7,469,381 patent, the 7,844,915 patent and/or the 7,864,163 patent."

Apple said in a filing on Friday (January 3) that "Samsung's request for more time to oppose the motion is yet another delay tactic". While there can be no doubt about the dilatory impact of further discovery (and I have criticized some of Samsung's stalling tactics on various occasions), I don't think Samsung's proposed course of action -- discovery on more recent settlement negotiations followed by its opposition brief -- is unreasonable.

Apple argues, among other things, that its proposed schedule (which wouldn't work if the court granted Samsung the requested extension) would "allow the Court to hear Apple's renewed request for a permanent injunction along with the parties' other post-[damages re]trial motions at the hearing already scheduled for January 30, rather than requiring a separate hearing on Apple's motion". I don't think the court will give this much weight, if any. Convenience is a secondary consideration at best. The relevant facts must be on the table. I have policy concerns about a scenario in which a party's willingness to engage in constructive settlement talks can adversely affect its access to injunctive relief -- that's where I disagree with Samsung. But Samsung interprets the appellate opinion and remand instructions accurately. The district court -- the court of equity, and injunctions are an equitable remedy -- will have to distinguish the Apple-Samsung situation from Apple's past license deals with the likes of IBM, Nokia, and HTC. (With respect to HTC, the mere existence of an "anti-cloning" provision appears sufficient to prove distinguishability, and that's also how I read the Federal Circuit opinion, but if Apple ever offered Samsung a license deal without such a clause, then it's a different situation.)

Not only is convenience less relevant than substance but there's also no scarcity of opportunities in the coming months to hold an Apple-Samsung injunction hearing in California at a point in time when the court and parties' counsel meet for some other reason. On March 31, the trial of the second California litigation between these parties will begin. After that trial, there will be some post-trial proceedings. And in early May the court will hold a hearing on Apple's motion for costs.

Samsung has a point with its request for further discovery, though I guess that if I had all the facts before me, I probably wouldn't find anything in those more recent settlement negotiations that would weigh significantly against Apple's renewed motion. At this point the court doesn't know, and I doubt that Apple can convince the court of the absolute, definitive, a priori irrelevance of the discovery questions raised by Samsung.

Finally I'd like to add some information concerning what is actually a more important issue in this context than discovery and scheduling: the more-than-dubious validity of the '915 (pinch-to-zoom API) patent. On December 30, Samsung filed a notice informing the court of Apple's notice of appeal (which I had already mentioned in my post on the renewed injunction motion). I was thoroughly disappointed that Samsung's lawyers had claimed in an emergency motion during the recent damages retrial that at that point (November 2013) "Apple's only option [was] to file a Notice of Appeal, else, 'the prosecution of the present ex parte reexamination proceeding WILL BE TERMINATED and a Notice of Intent to Issue Ex Parte Reexamination Certificate will be mailed in due course". In its (successful) opposition, Apple highlighted the fact that the USPTO communication Samsung's motion was based on explicitly mentioned the possibility of other steps Apple could have taken. Judge Koh, however, had allowed a renewed motion for a stay only in a situation in which Apple's only option left would be a notice of appeal.

Samsung's notice of Apple's appeal says that "Apple did not take any of the actions Apple described other than filing a Notice of Appeal, because it could not have meaningfully taken such actions, precisely as Samsung stated". Back in November I didn't doubt that Samsung might very well be right and Apple would ultimately have to appeal. And yes, Samsung was also right that Apple did not do anything other than appeal. But Samsung's emergency motion did not contain the word "meaningfully" (or any similar limitation), which is the whole problem. At the time Samsung made that prediction (which it misrepresented as a definitive fact), it was just that: a prediction. A reasonable one for sure. One that has now turned out to have been accurate. Still, between the filing of Samsung's motion and the appeal, there could have been other steps, if Apple's lawyers had suddenly come up with arguments that appeared promising, and reexamination wasn't formally closed.

Apple's appeal may succeed. Even if the USPTO-internal appeal didn't succeed, an appeal to the Federal Circuit might. But the validity of the '915 patent is highly doubtful now because the same institution that once granted it now believes that it shouldn't have done so. I strongly criticized Google/Motorola for the enforcement (against Apple's iCloud email service in Germany) of an email notification patent even after different courts had expressed negative opinions on its validity (in November, the Federal Patent Court of Germany indeed declared it invalid as granted). In that case, Apple was on the receiving end of such enforcement, which needlessly inconvenienced many Germany-based Apple customers. In the California case, I believe Apple, which experienced this problem in Germany, should stipulate beforehand to a stay of any U.S. injunction it may win over the '915 patent.

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Intellectual Ventures may cash in on Google Play after this month's Motorola patent trial

In October 2011, patent aggregator Intellectual Ventures, which a long time ago received one of its first investments ever from Google, sued Motorola Mobility over six patents, mostly software patents allegedly infringed by Android. At that time, Motorola Mobility was in the process of being acquired by Google.

The case will finally proceed to a jury trial in a couple of weeks (on January 21, 2014, to be precise), and the Google subsidiary will have to defend itself against five of the six originally-asserted patents. In strategic terms, it appears to me that the two most interesting ones are alleged to read on the Google Play app and content store, making a defeat potentially rather costly to Google.

I must admit that I haven't been following that litigation closely over the years, but an article by LitigationDaily's Jan Wolfe on a January 2 summary judgment opinion by the judge presiding over this litigation in the District of Delaware, Judge Sue L. Robinson, reignited my interest in this case.

Google's carpet-bombing summary judgment motion challenged each and every one of the six patents in suit on two counts: (in)validity and (non-)infringement. Google was hoping to narrow the case ahead of the jury trial and succeeded to only a very limited extent:

• U.S. Patent No. 7,810,144 on a "file transfer system for direct transfer between computers":

  Judge Robinson agreed that claim 26 is not infringed, but otherwise denied Google's motion with respect to this patent. Claims 10 and 41 (both of which are independent claims) will be put before the jury.

• U.S. Patent No. 6,412,953 on an "illumination device and image projection apparatus comprising the device":

  Judge Robinson found this patent obvious over a combination of two prior art references, making it irrelevant that she declined to side with Google on non-infringement.

With respect to the other four patents-in-suit, Google's summary judgment motion failed completely. Let's firstly take a look at the two most interesting patents-in-suit, which IV claims are infringed by Google Play:

• U.S. Patent No. 6,557,054 on a "method and system for distributing updates by presenting directory of software available for user installation that is not already installed on user station":

  "IV contends that Motorola indirectly infringes the asserted claims of the '054 patent by providing smartphones on which the Google Play store application is installed, thereby inducing or contributing to the performance of the claimed methods when users of those smartphones use Google Play to download or update software applications." (quoted from the summary judgment opinion)

• U.S. Patent No. 6,658,464 on a "user station software that controls transport, storage, and presentation of content from a remote source":

  "IV has accused Motorola of infringing claims 1-8, 16-17, 19-27, 35-36, and 38 of the '464 patent because Motorola sells handsets on which Google Play is installed." (quoted from the summary judgment opinion)

The '054 and '464 patents are too old to be relevant from the perspective of injunctive relief, but IV can seek damages. Should IV prevail over MMI on one or both of these Google Play-related patents, it could also sue Google for damages (unless there's a license agreement in place, which I doubt). Such a follow-on lawsuit could become costly since it's always easier to make a damages argument to a judge and a jury when a patented invention is directly relevant to revenue generation.

For the sake of a complete record, these are the remaining patents-in-suit for the January 21 trial:

• U.S. Patent No. 7,409,450 on a "transmission control protocol/internet protocol (TCP/IP) packet-centric wireless point to multi-point (PtMP) transmission system architecture"

• U.S. Patent No. 7,120,462 on a "portable computing, communication and entertainment device with central processor carried in a detachable handset"

Last year Intellectual Ventures filed a second patent infringement suit against Google's Motorola Mobility. Unlike the first one, it was brought in the Southern District of Florida. It involves former Nokia patents, with respect to some of which Google raised its first FRAND defense ever.

As for Google Play, this month's Delaware trial won't be the first and won't be the last one where Google's Android app and content store is at issue. Last year the Mannheim Regional Court dismissed a couple of German Nokia v. HTC lawsuits over Google Play (presumably on appeal). Shortly thereafter, Nokia again attacked Google Play: in its second ITC complaint against HTC, triggering an intervention by Google. Last month I found out that Nokia and Motorola Mobility also have some patent licensing issues to sort out, which almost certainly involve Google Play as well.

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