NY Times - Apple and Samsung End Smartphone Patent War

In Apple and Samsung End Smartphone Patent War, the NY Times argues the patent war that began in 2011 was a waste because the technology is outdated and became largely a fight about money rather than an exclusion of infringing Samsung phones.

This article doesn't make sense to me. Successful tech companies management would not engage in patent litigation unless it was economically rational. So should we jump in after the fact and speculate they after careful consideration wasted time and money? One way to consider if it is wasteful is to take the value of infringing a patent multiplied by the probability of a successful defense. If that product is greater than the cost of defense, the defendant should litigate as a matter of economics. This appears to be Samsung's approach. I am not sure how they conclude hundreds of millions were spent on defense even after seven years of patent litigation. On the other hand, if you own patents like Apple and are a marketplace leader, you would be rational to enforce the patents against others copying or infringing to catch up. Otherwise you encourage many others to free ride off your R&D.

Samsung had seven years of patent litigation and setbacks and victories that should have been opportunities to settle the cases. Yet Samsung didn't and managed to whittle down the damage awards. However, a jury ordered Samsung to pay Apple $539 million for patent infringement in May. This is a large value for infringing the patents, the defense had failed, and shortly after Samsung settles. Santa Clara University law professor Brian Love claims the litigation "didn't really accomplish anything" because "at the end of the day, no products went off the market." I have trouble accepting this "didn't really accomplish anything" given the likelihood substantial money was transferred to Apple in settlement after the $539 million award. Finally, the Apple and Samsung phones contain the patented technologies the article says is long outdated. Again, nothing in the article to support this claim.

Rutgers law professor Michael Carrier saying "the case is likely to serve as a lesson that 'the courtroom is not always the place to try to get ahead" sounds right but to me Apple was not trying to get ahead; Samsung was trying to catch up and decided to infringe/copy patented features and Apple said not so fast and sued after failing to reach a settlement.

Professor Carrier's statement "there’s always the trade-off between litigation and innovation, and in the time these companies spent in the courtroom, they weren’t innovating." This lost time idea might make more sense for a small company but appears inapplicable to Samsung and Apple given that large tech companies largely insulate key innovators from the litigation. Moreover, reasonable litigation of patent rights should protect the incentive to innovate.

Copyright © 2018 Robert Moll. All rights reserved.

Joe Mullin - Supreme Court Won't Hear Apple v. Samsung Round Two

In Supreme Court Won't Hear Apple v. Samsung Round Two, Joe Mullin reports that the US Supreme Court has left in place Apple's damage award of $120 million for Samsung's infringement of US Patent No. 8,074,172 (auto correction), US Patent No. 5946647 (quick links), and US Patent No. 8,046,721 (slide-to-unlock).

For background details on this lengthy battle see the Supreme Court of United States blog: Samsung Electronics, Ltd. v. Apple, Inc. 

Copyright © 2017 Robert Moll. All rights reserved.

US Supreme Court - Apple v. Samsung - Reverses Apple's Award of $399M for Infringement of Apple's Design Patents

In Samsung Electronics Co. Ltd. v. Apple Inc., the US Supreme Court reversed the Federal Circuit's $399 million award to Apple for Samsung's infringement of Apple's design patents.

As background a design patent is limited to "any new, original and ornamental design for an article of manufacture." 35 USC 171. A design patent seeks to protect appearance. When infringement occurs a design patent holder may elect infringer's profits as a remedy. This is sought when profits exceed a reasonable royalty. US patent law states one who "applies the patented design ... to any article of manufacture ... shall be liable to the owner to the extent of his total profit ... but the owner shall not twice recover the profit made from the infringement." 35 USC 289.

Before the Federal Circuit Samsung had argued Apple's design patent applied to the case, while Apple argued it applied to the entire phone. The Federal Circuit agreed the "article of manufacture” was the entire phone, which, of course, includes hardware and software having considerable value.

Based on Samsung's petition for certiorari the Supreme Court agreed to consider the question: Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?

Before the Supreme Court Samsung argued the Federal Circuit held a district court need not exclude unprotected functional features from a design patent's protected ornamental scope and a design-patent holder is entitled to an infringer's entire profits from sales of any product found to contain a patented design without regard to the design's contribution to that product's value or sales, resulting in an award in profits far beyond the value of any inventive contribution.

The Supreme Court was persuaded and held Apple’s patented design applied to the case rather than the entire phone and more broadly stated the "article of manufacturer" may mean not the end product (i.e., phone) sold to consumers but a component of the end product.

The Supreme Court's decision to reverse an award based on Samsung's profit on its entire phone makes sense because to hold otherwise ignores the value of the hardware/software. What's missing in this decision, however, is guidance on how to determine the value of the case. I think the court should determine that value in light of the fact people give importance to how a smartphone looks, which of course is why more than Apple chose to go with the patented design.

Also see my related post: Supreme Court - Apple v. Samsung - SCOTUS Blog - Justices cautious about resolving Samsung-Apple dispute over design of cell phones.

Copyright © 2016 Robert Moll. All rights reserved.

Federal Circuit - Apple v. Samsung - Apple Wins Appeal Reinstating $199.6M Samsung Verdict

Today in Apple v. Samsung Electronics the Federal Circuit reinstated a $199.6M jury verdict for Samsung's infringement of Apple's US Patent Nos. 5,946,647, 8,046,721, and 8,074,172  because the verdict was supported by substantial evidence in the record and the trial court didn't err in denying Samsung's judgment as a matter of law (JMOL).

The Federal Circuit stated it must limit its appellant function to the trial court's record:

"We granted Apple's en banc petition to affirm our understanding of the appellate function as limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and as requiring appropriate deference be applied to the review of fact findings. There was no need to solicit additional briefing or argument on the question of whether an appellate panel can look to extra-record extrinsic evidence to construe a patent claim term. “The Supreme Court made clear that the factual components [of claim construction] include ‘the background science or the meaning of a term in the relevant art during the relevant time period.’” Teva Pharms., Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (quoting Teva Pharms., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)). After Teva, such fact findings are indisputably the province of the district court. ... We likewise did not need additional briefing or argument to determine that the appellate court is not permitted to reverse fact findings that were not appealed or that the appellate court is required to review jury fact findings when they are appealed for substantial evidence. The panel reversed nearly a dozen jury fact findings including infringement, motivation to combine, the teachings of prior art references, commercial success, industry praise, copying, and long-felt need across three different patents. It did so despite the fact that some of these findings were not appealed and without ever mentioning the applicable substantial evidence standard of review. And with regard to objective indicia, it did so in ways that departed from existing law.

The dissents, and Judge Dyk’s dissent in particular, raise big questions about how aspects of the obviousness doctrine ought to operate. But no party—at the panel or the petition for rehearing en banc stage—invited this court to consider changing the existing law of obviousness. We did not take this case en banc to decide important legal questions about the inner workings of the law of obviousness."

See Gene Quinn's IP Watchdog article Federal Circuit recognizes its role as only an appellate court in Apple v. Samsung and Susan Decker's Bloomberg article Apple Wins Appeal Reinstating $199.6M Samsung Verdict.

Copyright © 2016 Robert Moll. All rights reserved.

Federal Circuit - Apple v. Samsung - Obviousness

In Apple v. Samsung, the Federal Circuit reversed a jury verdict awarding Apple $119 million and invalidated two Apple's patents for obviousness on February 26, 2016.

The Federal Circuit held the asserted claims of US Patent No. 8,046,721 (slide-to-unlock) and US Patent No. 8,074,172 (automatic spell correction) would have been obvious given: (1) a strong prima facie case of obviousness (claims reciting a predictable use of prior art elements according to established functions), and (2) weak evidence of secondary considerations. For details see pages 14-35 of the opinion.

Copyright © 2016 Robert Moll. All rights reserved.

San Jose Mercury News - Apple v. Samsung: Court Rejects Latest Appeal

If you are interested on the latest on the Apple and Samsung patent infringement battle, the San Jose Mercury News reports Apple v. Samsung: Court Rejects Latest Appeal.

Copyright © 2015 Robert Moll. All rights reserved.

WSJ - IBM Wins Most Patents — Again — but Google and Apple Climb in Rankings

Tonight, I suggest reading the Wall Street Journal article: IBM Wins Most Patents — Again — but Google and Apple Climb in Rankings.

Copyright © 2015 Robert Moll. All rights reserved.

Federal Jury Decides Samsung Only Pays $119.6 million for Infringement of Apple Patents

Today, the WSJ reports a jury ordered Samsung should pay $119.6 million for infringement of Apple's patents. Given Apple sought more than $2 billion, looks like a favorable result for Samsung. For details see Verdict Seen as Token Apple Victory, Boost for Samsung. Next up whether Apple will be granted an injunction by Judge Lucy Koh banning infringing Samsung products.

Updated May 5, 2014: Samsung ordered to pay Apple just $120 million for infringing patents

Copyright © 2014 Robert Moll. All rights reserved.

Josh Lowensohn - Samsung hopes to make FaceTime a headache for Apple

Tonight, let's catch up on Samsung's counter-offense against Apple in the mobile computing patent war. See Josh Lowensohn's article Samsung hopes to make FaceTime a headache for Apple.

Given Apple is seeking over $2 billion for patent infringement, Samsung seeking $6.9 million doesn't sound like much of a lever for overall settlement. The PR angle is not too good either as Samsung purchased these patents from third parties. Samsung is an innovative company, but this lawsuit is not highlighting that fact.

Copyright © 2014 Robert Moll. All rights reserved.

Apple v. Samsung - Apple Seeks $2 Billion for Patent Infringement

Today, the federal district court for San Jose, California heard opening arguments in Apple v. Samsung which is their second major trial for patent infringement. Apple is now seeking Samsung pay $2 billion for infringement of five U.S. patents. Aggressive lawyering, the hyperbole - we could have sued on 50 patents and the judge has instructed you ... (when Judge Koh hadn't), an embarrassing "Holy war" email, each companies unabated ambition to be #1, and the billions at stake suggest this trial (like the first trial) will go to judgment.

See Joe Mullin's Apple lawyer to jury: Samsung "crossed into the dark side"

Copyright © 2014 Robert Moll. All rights reserved.

CNET - Google, Samsung Patent Licensing Deal - A Comment

Today, in Google, Samsung Patent Licensing Deal CNET reports that Google and Samsung have agreed to a broad cross-license of their patents and their applications filed over the next 10 years. CNET notes the companies were vague about the licensing terms. We don't know if all or a subset of the patents and applications are subject to the cross-license.

The article correctly notes Apple and Samsung are unlikely to agree to a broad patent cross-license. Here's my take on that. Judge Lucy Koh's order for settlement talks in February 2014 only highlight the unwillingness to settle. The press release mentioned in the article only suggests Samsung and Google's may wish for the patent war to end. Seungho Ahn, the head of Samsung's Intellectual Property Center, says we have "more to gain from cooperating than engaging in unnecessary patent disputes," and Allen Lo, deputy general counsel for patents at Google, says "by working together on agreements like this, companies can reduce the potential for litigation and focus instead on innovation." But an agreement requires both sides to see a benefit.

The problem is the economics weigh against an Apple-Samsung settlement in the patent war. The damages are huge, e.g., $1B, and Apple's legal fees appear to be less than the probability of being awarded damages x the damages awarded. In addition, Apple's success in enforcement of its patents suggests it will continue. See FOSS patents for the details. Finally, Apple's ability to capture its innovation in non-standard essential patents, with much higher damages, make it rational to continue to sue for patent infringement.

Thus, the Google-Samsung patent cross-license is not a change of heart about the merits of the patent war, but an acknowledgment they are not winning it and don't want to make things worse by fighting each other.

Copyright © 2014 Robert Moll. All rights reserved.

Apple Awarded $290M for Samsung's Patent Infringement

Today, the federal jury in San Jose California awarded Apple $290 million in the retrial of part of the  damages with respect to patent infringement by Samsung products. Although less than the $410 million awarded last year, with the addition of $290 million, Apple's damages total $929 million.

See FOSS Patents Retrial jury awards Apple $290 million, total damages in case against Samsung: $929 million and CNET's Jury reaches verdict in Apple v. Samsung damages retrial.

Copyright © 2013 Robert Moll. All rights reserved.

Professor Risch - Functionality and Graphical User Interface Design Patents

Apple's $1B damage award (now being retried) caught the attention of anyone awake in the patent community about the importance of design patents. Much less understood was how to analyze design patent protection of graphical user interfaces (GUIs). The problem is GUIs raise a difficult line drawing exercise between ornamental elements (appearance) that design patents are intended to protect and functional elements that are not.

Professor Risch's Functionality and Graphical User Interface Design Patents, to be published in the Stanford Technology Law Review, is a timely article discussing among other things the design patent relating to the Apple iPhone home page and the line drawing problem.

Professor Risch says the article answers three questions:

"1. Aren’t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. The article traces the history to explain why the law could have evolved differently, but simply did not.

2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, the article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents.

3. There are many differences between Apple’s patent and Samsung’s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom? This last question is the most intractable: determining when a design is infringing, and the role that functionality should play in that consideration. The bulk of the article is dedicated to answering this question.

To answer the third question, the article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program."

I  am still reading it, but want to pass it along as it should give insight to anyone considering design patent protection of GUIs.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Confirms Validity All Claims of Steve Jobs Patent in Reexamination

Today, FOSS reports U.S. Patent Office confirmed all 20 claims of the Steve Jobs patent: bad for Samsung, Google.

U.S. Patent No. 7,479,949 to Steve Jobs et al. addresses the "need for touch-screen-display electronic devices with more transparent and intuitive user interfaces for translating imprecise user gestures into precise, intended commands that are easy to use, configure, and/or adapt ... in mobile computing devices."

Not only are all claims confirmed as patentable, the ex parte reexamination certificate states "no amendments have been made to the patent." Thus, an infringer cannot argue they obtained intervening rights. Of course, this allows damages up to six years before filing the patent infringement action. Further, this patent does not appear to be a standard essential patent (SEP) in any sense of the word and de facto SEPs has not caught on. So Apple may not only get damages, it may seek injunctions. Sure people are getting smarter about designing around, but tinkering with the UI risks annoying users into switching to an iPhone. I guess losing every aspect of an ex parte reexamination although rare has some not so fun implications. It may not bar validity challenges in court, but it may convince some courts that a validity challenge on similar literature should fail.

Copyright © 2013 Robert Moll. All rights reserved.

Samsung Agrees To Not Seek Injunctions In Enforcing Standard Essential Patents (SEPs) In Mobile Communications for Five Years in Europe

ZDNet reports that Samsung waves white flag on patent wars. Perhaps a bit of hyperbole, but still a significant change in Samsung's strategy in enforcing standard essential patents (SEPs) in the mobile computing patent wars in Europe. Thanks to Suzie Lipton-Moll for passing on this article today.

Copyright © 2013 Robert Moll. All rights reserved.

Samsung Can't Import Some Smartphones and Tablets - President Obama Won't Veto ITC Ban

On October 8, Bloomberg reports Samsung Loses Bid for Obama Veto of Apple-Won Import Ban. The administration vetoed Samsung's ITC ban, and now the reverse? Is the Obama's administration siding with an American company over a Korean one? It is not completely unreasonable to wonder after reading this article, because it is not that clear.

Even if the Obama administration was right to veto Samsung's ITC ban but not Apple's, it should explain how the different facts drove the different results.

Mr. Edward Black, president of the Computer & Communications Industry Association, which counts Samsung and Google as members, claims the veto of the Apple import ban was based on political pressure and favoritism, which sounds plausible, but was not supported by evidence discussed in the article.

For more details Apple's patent infringement case against Samsung is "In the Matter of Electronic Digital Media Devices, 337-796, and Samsung’s case is In the Matter of Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, 337-794, both US ITC.

Copyright © 2013 Robert Moll. All rights reserved.

ITC Excludes Samsung Products Infringing Apple Patents on August 9, 2013

On August 9, 2013, the ITC issued an order to exclude and a cease and desist order on the further importation, sale, and distribution of certain Samsung products because they infringe U.S. Patent No. 7,912,501, entitled, Audio I/O headset plug and plug detection circuitry, U.S. Patent No. 7,479,949 B2, entitled, Touch screen device, method, and graphical user interface for determining commands by applying heuristics.

It was not a complete sweep for Apple given the ITC found no infringement of Design Patent No. D618678 that relates to the appearance of the iPhone, Design Patent No. D558757 that relates to the appearance of the iPod Touch and iPad, and US Reissue Patent No. RE41922, entitled, Method and apparatus for providing translucent images on a computer display. The ITC also found U.S. Patent No. 7,789,697, entitled, Plug detection mechanisms invalid as anticipated by the prior art.

The order is stayed for 60 days pending President Obama's review. That review is likely to be politically charged in view of the Obama Administration's veto of Samsung exclusion order last week. Perhaps the prior Administrations were wise to not interfere with ITC over the last three decades. Now that the Obama Administration has taken on the rarified role of "second guessing" the ITC, others may be justified in guessing whether or not this has anything to do with Samsung's status as a foreign company.

Copyright © 2013 Robert Moll. All rights reserved.

Obama Administration Vetoes ITC's Ban of Older Apple iPhones and iPads

Today, the Obama Administration vetoed the International Trade Commission's (ITC) ban of Apple's infringement of Samsung's standard essential patent.

As background in June 2013, the ITC ordered a ban of AT& T's model of Apple's iPhone 3, iPhone 3GS, iPhone 4, the iPad 3G, and iPad 2 based on infringement of Samsung's U.S. Patent No. 7,706,348. Apple was faced with the ITC ban, an appeal to the Federal Circuit, or a request for the President to veto the ban. The last time a President vetoed an ITC order was in the 1980's so it seemed an appeal to the Federal Circuit was the likely next step.

However, U.S. Trade Representative Michael Froman decided to veto the ITC ban expressing the "concern that a ban on Apple's products would abuse Samsung's right to the essential patent, which involves encoding and decoding information on a CDMA cell phone network." Mr. Froman warned the ITC should carefully examine if a ban based on a standard essential patent serves the public interest before granting it. This is an unexpected setback for Samsung which now must seek a remedy in federal court.

For further details see Mr. Froman's letter explaining the decision and Older iPhones won't be banned as Obama Administration vetoes ITC decision.

Updated August 5: Obama administration may have overturned the ITC ban due to reasons presented in ITC commissioner Dean Pinkert's dissent. See CNN Money How the ITC forced a veto in the Samsung-Apple patent case. Also see FOSS Patents One ITC chief found Samsung to fail to offer Apple FRAND licensing terms to its UMTS patents.

Copyright © 2013 Robert Moll. All rights reserved.

Samsung v. Apple - ITC Bans Importing and Selling AT&T iPhones 3, 3GS, and 4, and AT&T 3G Compatible iPads and iPads 2

Today, the ITC ruled Apple cannot import or sell AT&T compatible iPhones 3, 3GS, and 4, and AT&T 3G-compatible iPads and iPads 2 due to infringement of Samsung Electronics' U.S. Patent No. 7,706,348,which relates to encoding/decoding a transport format combination indicator in CDMA communications. Not sure if Apple sells these older products, but Apple plans to appeal to the Federal Circuit. Thanks to Alan Cooper for this news.

For details see CNN Money Apple banned from selling some iPhones and iPads after Samsung patent win

Also see FOSS Patents Here's the ITC letter instructing U.S. customs to start seizing older iPhones, iPads in 60 days

Copyright © 2013 Robert Moll. All rights reserved.

U.S. Design Patents - Protecting Product Appearance

Patent attorneys tend to focus on utility patents rather than design patents. Utility patents issue for "any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof." Design patents issue for "any new, original and ornamental design for an article of manufacture." In short, a utility patent protects a product's function while a design patent protects a product's looks.

Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.

Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!

But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."

They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.

On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.

Copyright © 2013 Robert Moll. All rights reserved.